Exhibit 10.7


 


***Text Omitted and Filed Separately


Confidential Treatment Requested


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


And 240.24b-2


 


LICENSE AND COLLABORATION AGREEMENT


 


THIS LICENSE AND COLLABORATION
AGREEMENT (the “Agreement”) is entered into as of November 19,
2003 (the “Effective Date”)
by and among MAXIM PHARMACEUTICALS, INC., a Delaware corporation (“Maxim Pharmaceuticals”),
having an address of 8899 University Center Lane, Suite 400, San
Diego, California 92122, and CYTOVIA, INC., a Delaware corporation and
wholly-owned subsidiary of Maxim Pharmaceuticals (“Cytovia”), having an address of
8899 University Center Lane, Suite 400, San Diego, California 92122
(Maxim Pharmaceuticals and Cytovia are hereinafter collectively referred to as “Maxim”), and MYRIAD GENETICS,
INC., a Delaware corporation, having an address of 320 Wakara
Way, Salt Lake City, Utah 84108 (“Myriad”).


 


RECITALS


 


WHEREAS, Maxim has
developed expertise and proprietary rights related to its MX90745 series of
compounds, including but not limited to MX128495, as more fully described
below;


 


WHEREAS, Myriad is
engaged in the research, development and commercialization of pharmaceutical
products; and


 


WHEREAS, Myriad and
Maxim desire to enter into a collaborative relationship to identify and develop
Products (as defined below) for clinical development and commercialization by
Myriad, subject to the terms and conditions set forth herein.


 


AGREEMENT


 


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


 


1.                                      DEFINITIONS


 


1.1                               “Affiliate”
shall mean any company or entity controlled by, controlling, or under
common control with a party hereto and shall include any company more than 50%
of whose voting stock or participating profit interest is owned or controlled,
directly or indirectly, by a party, and any company which owns or controls,
directly or indirectly, more than 50% of the voting stock of a party.


 


1.2                               “Calendar
Quarter” shall mean each respective period of three (3) consecutive months
ending on March 31, June 30, September 30 and December 31.


 


1.3                               “Confidential
Information” shall have the meaning provided in Section 10.1.


 


1.4                               “Control”
shall mean, with respect to any Information, Patents or other intellectual
property rights, possession by a party of the right, power and authority
(whether by ownership, license or otherwise) to grant access to, to grant use
of, or to grant a license or a


 


1

















 


sublicense to such Information, Patents or intellectual property rights
without violating the terms of any agreement or other arrangement with any
Third Party.


 


1.5                               “FDA”
shall mean the United States Food and Drug Administration, or any successor
agency thereto having the administrative authority to regulate the marketing of
human pharmaceutical products or biological therapeutic products, delivery
systems and devices in the United States of America.


 


1.6                               “Field”
shall mean the treatment and/or prevention of any disease or disorder.


 


1.7                               “First
Commercial Sale” shall mean, with respect to any Product, the first sale
for end use or consumption of such Product in a country after the governing
health regulatory authority of such country has granted Regulatory
Approval.  Sale to an Affiliate or
Sublicensee shall not constitute a First Commercial Sale unless the Affiliate
or Sublicensee is the end user of the Product.


 


1.8                               “FTE”
shall mean the equivalent of a full-time scientist’s work time over a
12-month period (including normal vacations, sick days and holidays).  The portion of an FTE year devoted by a
scientist to the Research Program shall be determined by dividing the number of
full working days during any 12-month period devoted by such scientist to the
Research Program by the total number of working days in such 12-month
period.  Each party understands and
agrees that the other party retains complete discretion to change the identity
of any individual employee or consultant devoted to the Research Program and/or
the frequency and the time during which such individual employee’s or
consultant’s efforts are devoted to the Research Program, provided that in any
event each such employee or consultant devoted to the Research Program shall
satisfy the criteria for general experience and qualifications set forth in the
Research Plan.


 


1.9                               “IND”
shall mean an Investigational New Drug Application filed with the FDA, or
the equivalent application or filing filed with any equivalent agency or
governmental authority outside the United States of America (including any
supra-national agency such as in the European Union) necessary to commence
human clinical trials in such jurisdiction.


 


1.10                        “Information”
shall mean all tangible and intangible (a) techniques, technology,
practices, trade secrets, 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 quality control data, results or descriptions, software and algorithms and
(b) compositions of matter, cells, cell lines, assays, animal models and
physical, biological or chemical material.


 


1.11                        “Inventions”
shall have the meaning provided in Section 8.1.


 


1.12                        “Joint
Inventions” shall have the meaning provided in Section 8.1.


 


1.13                        “Joint
Patents” shall mean all Patents that claim or disclose a Joint Invention.


 


1.14                        “Joint
Development Committee” or “JDC” shall mean the committee formed
pursuant to Section 2.1.


 


2

















 


1.15                        “Major Market” shall mean [***].


 


1.16                        “Maxim
Inventions” shall have the meaning provided in Section 8.1.


 


1.17                        “Maxim
Know-How” shall mean, to the extent useful for purposes of the Research
Program or necessary to develop, make, have made, use, distribute for sale,
promote, market, offer for sale, sell, have sold, import or export any Product,
Information not included in the Maxim Patents or Joint Patents that Maxim or
any of its Affiliates Controls on the Effective Date or during the Term,
including, without limitation, all such Information that is conceived or
developed by Maxim or any of its Affiliates in the course and as part of the
Research Program, and, in each case, any replication or any part of such
Information.


 


1.18                        “Maxim
Patents” shall mean, to the extent useful or necessary to develop, make,
have made, use, distribute for sale, promote, market, offer for sale, sell,
have sold, import or export any Product, all Patents that Maxim or any of its
Affiliates Controls as of the Effective Date or during the Term, but excluding
the Joint Patents.


 


1.19                        “Maxim
Technology” shall mean the Maxim Patents and Maxim Know-How.


 


1.20                        “MX90745 Series” shall mean the
series of compounds described in [***].


 


1.21                        “Myriad
Inventions” shall have the meaning provided in Section 8.1.


 


1.22                        “Myriad
Know-How” shall mean, to the extent useful for purposes of the Research
Program or necessary to develop, make, have made, use, distribute for sale,
promote, market, offer for sale, sell, have sold, import or export any Product,
Information not included in the Myriad Patents or Joint Patents that Myriad or
any of its Affiliates Controls on the Effective Date or during the Term,
including, without limitation, all such Information that is conceived or
developed by Myriad or any of its Affiliates in the course and as part of the
Research Program, and, in each case, any replication or any part of such
Information.


 


1.23                        “Myriad
Patents” shall mean, to the extent useful for purposes of the Research
Program or necessary to develop, make, have made, use, distribute for sale,
promote, market, offer for sale, sell, have sold, import or export any Product,
all Patents that Myriad or any of its Affiliates Controls as of the Effective
Date or during the Term, but excluding the Joint Patents.


 


1.24                        “Myriad
Technology” shall mean the Myriad Patents and Myriad Know-How.


 


1.25                        “NDA” shall
mean a New Drug Application (as more fully defined in 21 C.F.R. 314.5 et seq.) and all amendments and
supplements thereto filed with the FDA, or the equivalent application filed
with any equivalent agency or governmental authority outside the United States
of America (including any supra-national agency such as in the European Union),
including all documents, data, and other information concerning a
pharmaceutical product which are necessary for gaining Regulatory Approval to
market and sell such pharmaceutical product.


 


1.26                        “Net
Sales” shall mean the gross amounts invoiced by Myriad, its Affiliates and [***] its Sublicensees for sales of
Products to Third Parties that are not Affiliates or Sublicensees of the
selling party (unless such Affiliate or Sublicensee is the end user of such
Product, in which


 












***Confidential Treatment Requested


 


3

















 


case the amount billed therefor shall be deemed to be the amount that
would be billed to a Third Party end user in an arm’s-length transaction), less
the following items, as allocable to such Product (if not previously deducted
from the amount invoiced): (i) trade discounts, credits or allowances;
(ii) credits or allowances additionally granted upon returns, rejections
or recalls (except where any such recall arises out of Myriad’s, its
Affiliate’s or Sublicensee’s gross negligence, willful misconduct or fraud);
(iii) freight, shipping and insurance charges; (iv) taxes, duties or
other governmental tariffs (other than income taxes); (v) government
mandated rebates; and (vi) all such invoiced amounts that are written off as
bad debt by Myriad, its Affiliates or U.S. Sublicensees (with such bad debt
adjustment to be reduced by invoiced amounts that collected in the current
period that were written off in prior periods).


 


1.27                        “Patents” shall
mean (a) United States patents, re-examinations, reissues, renewals,
extensions and term restorations, and foreign counterparts thereof, and
(b) pending applications for United States patents, including, without
limitation, provisional applications, continuations, continuations-in-part,
divisional and substitute applications, including, without limitation,
inventors’ certificates, and foreign counterparts thereof.


 


1.28                        “Percentage-Based
Payments” shall have the meaning provided in Section 6.6.


 


1.29                        “Phase 1
Clinical Trial” shall mean a human clinical trial that would satisfy the
requirements for a Phase 1 study as defined in 21 C.F.R. 312.21(a) (or its
successor regulation).


 


1.30                        “Phase 2
Clinical Trial” shall mean a human clinical trial that would satisfy the
requirements for a Phase 2 study as defined in 21 C.F.R. 312.21(b) (or its
successor regulation).


 


1.31                        “Phase 3
Clinical Trials” shall mean a human clinical trial that would satisfy the
requirements for a Phase 3 study as defined in 21 C.F.R. 312.21(c) (or its
successor regulation).


 


1.32                        “Product”
shall mean a product that contains any composition of matter in the MX90745
Series, or any analog, homolog, derivative or isomer of any composition of
matter in the MX90745 Series, including, in each case, all formulations, line
extensions and modes of administration thereof.  Product shall also mean any product developed in the Research
Program.


 


1.33                        “Regulatory
Approval” shall mean any and all approvals (including price and reimbursement
approvals, if required), licenses, registrations, or authorizations of any
country, federal, supranational, state or local regulatory agency, department,
bureau or other government entity that are necessary for the manufacture, use,
storage, import, transport and/or sale of a Product in such jurisdiction.


 


1.34                        “Research
Plan” shall mean the plan for conducting the Research Program, as amended
from time to time by the JDC.  The
initial Research Plan has been agreed upon by the parties in writing as of the
Effective Date and is attached hereto as Exhibit A.


 


1.35                        “Research
Program” shall mean a research program carried out by Maxim during the
Research Term pursuant to Articles 2 and 3 hereof, as more fully described
in the Research Plan.


 












***Confidential Treatment Requested


 


4

















 


1.36                        “Research
Term” shall mean the period beginning on the Effective Date and ending on
the first (1st) anniversary of the Effective Date, subject to
extension for one (1) additional year in accordance with Section 3.4 and
to termination in accordance with Article 11.


 


1.37                        “Royalty
Term” shall mean, in the case of any Product, in any country, the period of
time commencing on the First Commercial Sale in such country and ending upon the
later of (a) ten (10) years after the date of First Commercial Sale in
such country, and (b) the expiration of the last to expire of the Maxim
Patents or Joint Patents containing a Valid Claim claiming the manufacture, use
or sale of such Product in such country.


 


1.38                        “Sublicensee” shall mean a Third
Party to whom Myriad or any of its Affiliates has granted a license or
sublicense of the right to develop, make, have made, use, distribute for sale,
promote, market, offer for sale, sell, have sold, import or export Products,
beyond the mere right to purchase Product from Myriad or its Affiliates.


 


1.39                        “Sublicensing Revenues” shall mean
the amount actually received by Myriad or an Affiliate of Myriad from any and
all Sublicensees arising from the license or sublicense of the right to
develop, make, have made, use, distribute for sale, promote, market, offer for
sale, sell, have sold, import or export Products [***].  Sublicensing
Revenues shall include up-front or license fees, milestone payments, royalties
paid to Myriad or any of its Affiliates by a Sublicensee based on such
Sublicensee’s sale of Products, premiums above the fair market value on sales
of securities, annual maintenance fees and any other payments in respect of the
grant to such Sublicensee of a license or sublicense of the right to develop,
make, have made, use, distribute for sale, promote, market, offer for sale,
sell, have sold, import or export Products [***]
(with any of the foregoing consideration received by Myriad or its Affiliate other
than in the form of cash to be valued at its fair market value as of the date
of receipt); provided, however,
that Sublicensing Revenues shall not include any payments tied directly to the
provision of goods and services by Myriad or its Affiliate to such Sublicensee
(including research and development and manufacturing) to compensate Myriad or
its Affiliate for the fair market value of the provision of such goods and
services, reimbursement to Myriad by Maxim or a Third Party for costs or
expenses incurred by Myriad in the performance of its obligations under this
Agreement (including reimbursement for patent and trademark costs but excluding
costs or expenses associated with the development and pursuit of Regulatory
Approval for any Product), or payments for securities (other than premiums
above the fair market value of such securities).


 


1.40                        “Term” shall
have the meaning provided in Section 11.1.


 


1.41                        “Third
Party” shall mean any entity other than Maxim or Myriad or an Affiliate of
Maxim or Myriad.


 


1.42                        “Valid
Claim” shall mean (a) an unexpired claim of an issued patent within
the Maxim Patents or Joint Patents which has not been found to be unpatentable,
invalid or unenforceable by a court or other authority in the subject country,
from which decision no appeal is taken or can be taken; or (b) a claim of
a pending application within the Maxim Patents or Joint Patents, which
application claims a first priority no more than five (5) years prior to the
date upon which pendency is determined.


 












***Confidential Treatment Requested


 


5

















 


2.                                      RESEARCH
PROGRAM GOVERNANCE


 


2.1                               Joint
Development Committee.  Promptly
after the Effective Date, the parties will form a Joint Development Committee
(the “JDC”) comprised of
three (3) representatives of each of Myriad and Maxim.  One (1) member of the JDC shall be selected
to act as the chairperson of the JDC, with each chairperson acting for a term
of twelve (12) months.  The chairperson
shall be selected alternately by Maxim and Myriad, and Myriad shall designate
the first chairperson.  The JDC shall
meet at least four (4) times per year during the Research Term or at such
greater frequency as the JDC agrees. 
Such meetings may be conducted by videoconference, teleconference or in
person, as agreed by the parties, and the parties shall agree upon the time of
meetings.  Within 30 days after
each meeting, the JDC chairperson will provide the parties with a written
report describing, in reasonable detail, the status of the Research Program, a
summary of the results and progress to date, the issues requiring resolution,
and the agreed resolution of previously reported issues.  A reasonable number of additional
representatives of a party may attend meetings of the JDC in a non-voting
capacity.


 


2.2                               Joint
Development Committee Functions and Powers. 
The responsibilities of the JDC shall be as follows:


 


(a)                                  encouraging
and facilitating communication between the parties with respect to the Research
Program;


 


(b)                                  establishing,
updating, reviewing and approving the Research Plan and other plans for
accomplishing the goals of the Research Program;


 


(c)                                  overseeing
development and regulatory strategies for Products;


 


(d)                                  monitoring
progress of the Research Program and Maxim’s diligence in carrying out its
responsibilities thereunder; and


 


(e)                                  carrying
out the other duties and responsibilities described for it in this Agreement.


 


2.3                               JDC Decision-Making.  Decisions of the JDC shall be made by
unanimous vote, with each party having one (1) vote.  No vote of the JDC may be taken unless at least two (2) of each
party’s representatives on the JDC vote. 
If the JDC is unable to reach a unanimous vote on any matter, then the
matter shall be referred to the Chief Executive Officer of Maxim and the Chief
Executive Officer of Myriad for further discussion and resolution.  These individuals shall as soon as
practicable attempt in good faith to resolve the matter and thereby make the
decision on behalf of the JDC.  These
individuals may obtain the advice of other employees or consultants as they
deem necessary or advisable in order to make the decision.  In the event that these individuals are
unable to resolve the matter within 30 days of commencing such discussions,
the [***]; provided, however, that [***] be construed to permit [***] to, and neither [***] shall have the right to: (a) [***]; (b) [***]; (c) [***].


 












***Confidential Treatment Requested


 


6

















 


3.                                      CONDUCT
OF THE RESEARCH PROGRAM


 


3.1                               Objectives;
Responsibilities.  The parties
hereby agree to establish the Research Program, to be conducted by Maxim during
the Research Term in accordance with the Research Plan and with the terms of
this Agreement, with the goal of discovering and developing one or more
Products for development and commercialization by Myriad.  Any amendments or revisions to the Research
Plan shall be in writing and shall require unanimous approval of the JDC.  Myriad shall be responsible for development
and Regulatory Approval of Products, as more fully described in Article 4,
and Maxim shall assist Myriad in Myriad’s development efforts through Maxim’s
performance of its obligations under the Research Plan.  In addition, at Myriad’s request, Maxim will
contribute high-level support in the areas of clinical development and
regulatory strategy to support Myriad’s development of Products.


 


3.2                               Technology
Transfer.  Commencing promptly after
the Effective Date and from time to time thereafter during the Research Term,
Maxim shall disclose to Myriad the Maxim Technology to the extent necessary to
enable Myriad to exercise fully the licenses granted to Myriad under
Article 5 hereof.  Commencing
promptly after the Effective Date and from time to time thereafter during the
Research Term, Myriad will disclose to Maxim such Myriad Technology as is
reasonably necessary to enable Maxim to perform its Research Program activities
hereunder in accordance with the Research Plan and otherwise to exercise fully
the licenses granted to Maxim under Article 5 hereof.  During the Research Term, Maxim will provide
Myriad with reasonable technical assistance relating to the use of the Maxim
Technology by Myriad solely to the extent permitted under the license granted
to Myriad under Article 5.  During
the Research Term, Myriad will provide Maxim with reasonable technical
assistance relating to the use of the Myriad Technology by Maxim solely to the
extent permitted under the license granted to Maxim under Article 5.


 


3.3                               Performance
Standards.  Maxim shall conduct its
activities under the Research Program in good scientific manner, and in
compliance in all material respects with the requirements of applicable laws
and regulations and with applicable good laboratory practices, to attempt to
achieve its objectives efficiently and expeditiously.  Maxim shall maintain laboratories, offices and all other
facilities reasonably necessary to carry out the activities to be performed
pursuant to the Research Plan.  In
conformity with standard pharmaceutical and biotechnology industry practices
and the terms and conditions of this Agreement, Maxim shall prepare and
maintain, or shall cause to be prepared and maintained, complete and accurate
written records, accounts, notes, reports and data with respect to activities
conducted pursuant to the Research Plan and, upon Myriad’s written request,
shall send legible copies of the aforesaid to Myriad.  Upon reasonable advance notice, Maxim agrees to make its
employees and non-employee consultants reasonably available at their respective
places of employment to consult with Myriad on issues arising during the Term
and in connection with any request from any regulatory agency, including,
without limitation, regulatory, scientific, technical and clinical testing
issues.


 


3.4                               Research
Commitment; Research Term Extension.  During
the Research Term, Maxim shall use its commercially reasonable efforts to
conduct the Research Program in accordance with the Research Plan, as revised
from time to time by the JDC.  Without
limiting the generality of the foregoing, and subject to Myriad’s compliance
with its funding obligations


 


7

















 


under Section 6.2 hereof, Maxim shall devote to the Research
Program [***] FTEs during the one
(1) year period following the Effective Date. 
At Myriad’s option, exercisable by written notice to Maxim given no less
than 60 days prior to the first (1st) anniversary of the
Effective Date, Myriad may extend the Research Term until the second (2nd)
anniversary of the Effective Date.  In
the event of such extension, Maxim shall devote to the Research Program up to [***] FTEs during such additional year of
the Research Term, subject to Myriad’s compliance with its funding obligations
under Section 6.2 hereof.


 


3.5                               Research
Reports.  Maxim shall keep Myriad
fully informed as to all discoveries and technical developments (including,
without limitation, any Inventions) made in the course of performing activities
under the Research Program.  In particular,
Maxim shall prepare, and distribute to all members of the JDC no later than
five days prior to the next JDC meeting, a reasonably detailed written
summary report, in such form and format and setting forth such information
regarding the results and progress of performance of the Research Program as
determined from time to time by the JDC.


 


3.6                               Subcontracts.  Maxim may perform some of its
obligations under the Research Plan through one (1) or more subcontractors,
provided that (a) none of the rights of either party hereunder are diminished
or otherwise adversely affected as a result of such subcontracting, and
(b) the subcontractor undertakes in writing obligations of confidentiality
and non-use regarding Confidential Information which are substantially the same
as those undertaken by the parties pursuant to Article 10 hereof.  In the event Maxim performs any of its
obligations under the Research Plan through a subcontractor, then Maxim will at
all times be responsible for the performance and payment of such
subcontractor.  Additionally, all such
subcontractors shall be obligated to enter into a written agreement to assign
all of Subcontractor’s intellectual property rights for any work performed
under the Research Program to Maxim.


 


3.7                               Materials
Transfer.  In order to facilitate
the Research Program, either party may provide to the other party certain
biological materials or chemical compounds Controlled by the supplying party,
including, but not limited to, compounds from the MX90745 Series or analogs,
homologs, derivatives or isomers thereof (collectively, “Materials”) for use by the other party in
furtherance of the Research Program. 
Except as otherwise provided under this Agreement, all such Materials
delivered to the other party will remain the sole property of the supplying
party, will be used only in furtherance of the Research Program in accordance
with this Agreement, and will be used in compliance with all applicable laws,
rules and regulations.  The Materials
supplied under this Agreement must be used with prudence and appropriate
caution in any experimental work because not all of their characteristics may
be known.  Except as expressly set forth
herein, THE MATERIALS ARE PROVIDED “AS IS” AND WITHOUT ANY REPRESENTATION OR
WARRANTY, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION ANY IMPLIED WARRANTY
OF MERCHANTABILITY OR OF FITNESS FOR ANY PARTICULAR PURPOSE OR ANY WARRANTY
THAT THE USE OF THE MATERIALS WILL NOT INFRINGE OR VIOLATE ANY PATENT OR OTHER
PROPRIETARY RIGHTS OF ANY THIRD PARTY.


 












*** Confidential Treatment
Requested


 


8

















 


4.                                      DEVELOPMENT
AND COMMERCIALIZATION OF PRODUCTS


 


4.1                               Development and Commercialization of
Products.  Subject to the
terms and conditions of this Agreement (including, without limitation,
Section 5.2), Myriad shall control the worldwide development and
commercialization of Products, including, but not limited to, the worldwide
supply of Products for use in development and commercialization activities.


 


4.2                               Disclosure Regarding Myriad Efforts.  Myriad will keep Maxim appropriately
informed about Myriad’s research, development, clinical trial progress and
commercialization efforts with respect to Products.  Without limiting the generality of the foregoing, Myriad shall
provide Maxim with written notice of the following:


 


(a)                                  identification
or generation of any Product by or on behalf of Myriad or any of its Affiliates
outside of the Research Program or after the Research Term for which
IND-enabling non-clinical studies are commenced;


 


(b)                                  filing
of an IND or NDA with respect to any Product in any jurisdiction;


 


(c)                                  initiation
of Phase I Clinical Trials, Phase II Clinical Trials and
Phase III Clinical Trials, and Regulatory Approval, with respect to any
Product in any jurisdiction; and


 


(d)                                  clinical
trial progress and commercialization plans, activities and results with respect
to Products in any jurisdiction.


 


With respect to clause (a) of this Section 4.2, Myriad shall
disclose to Maxim any such Products generated by or on behalf of Myriad or any
of its Affiliates during any Calendar Quarter within 30 days of the end of
such Calendar Quarter.  With respect to
clauses (b) and (c) of this Section 4.2, Myriad will provide such
notice promptly (and in any event within 10 days) following the occurrence
of the applicable event.  With respect
to clause (d) of this Section 4.2, such notice shall be provided to
Maxim as regularly as appropriate to keep Maxim reasonably informed, and, in
any event, Myriad shall provide Maxim with annual written reports summarizing
in reasonable detail any such events that have occurred during the applicable
twelve (12) month period.  The
provisions of this Section 4.2 shall survive expiration or termination of
the Research Term for so long as Myriad has a license hereunder pursuant to Section 11.3.


 


5.                                      LICENSES


 


5.1                               License
Grants.


 


(a)                                  By
Maxim.


 


(i)                                    Research
License.  Subject to the terms and conditions of this Agreement, Maxim
hereby grants to Myriad and its Affiliates, during the Term, a non-exclusive,
worldwide, royalty-free license, without the right to sublicense, under the
Maxim Technology solely to perform Myriad’s obligations under the Research
Plan.


 


9

















 


(ii)                                Development
and Commercialization License.  Subject
to the terms and conditions of this Agreement, Maxim hereby grants to Myriad,
during the Term, an exclusive (even as to Maxim), worldwide, royalty-bearing
license, with the right to sublicense, under the Maxim Technology and Maxim’s
interest in the Joint Patents, to develop, make, have made, use, sell,
distribute for sale, offer for sale, have sold and import or export Products in
the Field.  Myriad will at all times be
responsible for the performance of its Sublicensees and Third Party contractors
under this Agreement.


 


(b)                                  By
Myriad.  Subject to the terms and conditions of this Agreement, Myriad
hereby grants to Maxim and its Affiliates, during the Research Term, a
non-exclusive, worldwide, royalty-free license, without the right to
sublicense, under the Myriad Technology solely to perform Maxim’s obligations
under the Research Plan.


 


5.2                               Diligence
Obligations.  Myriad agrees to use
commercially reasonable efforts to develop and commercialize one or more
Products in the Major Markets.


 


(a)                                  In
the event that Myriad or a Sublicensee is not conducting development or
commercialization of at least one Product in a particular Major Market, then
Myriad shall provide Maxim with prompt written notice thereof.


 


(b)                                  In
addition, if Maxim in good faith believes that Myriad is not using its
commercially reasonable efforts to develop or commercialize at least one
Product in a particular Major Market, Maxim may provide Myriad with written
notice thereof, in which event Myriad will have 60 days from the date of
such notice in which to show commercially reasonable efforts.  If the parties can not agree as to what are
commercially reasonable efforts, then such matter shall be resolved pursuant to
the resolution procedures set forth in Section 11.3.  If the arbitrators decide that the efforts
undertaken by Myriad have not been commercially reasonable, Myriad shall have
60 days to have commenced and thereafter reasonably proceed forward with the
completion of such efforts as determined by the arbitration panel to be
commercially reasonable.  If Myriad
fails to implement the commercially reasonable efforts designated by the
arbitration panel, then Maxim’s claim under this Section 5.2(b) shall be
deemed to have been resolved against Myriad.


 


5.3                               Maxim [***] Rights.  If Myriad provides Maxim with notice under
Section 5.2(a) above, or if Maxim provides Myriad with notice under
Section 5.2(b) above (provided, in the event of a dispute, that the matter
under Section 5.2(b) is ultimately resolved against Myriad), then:


 


(a)                                  the
license granted to Myriad under Section 5.1(a)(ii) [***];


 


(b)                                  Myriad
shall [***]; and


 


(c)                                  Maxim
shall have [***].  Maxim shall have [***], to notify Myriad in writing either that (i) [***] or (ii) [***]. 
If Maxim notifies Myriad within [***],
the parties shall [***].  If Maxim [***],
then Myriad shall [***]; provided,
however, that for a period of [***].  For purposes of clarification, [***]. 
For purposes of this subsection (c), [***] shall include [***].  Upon [***]
under this subsection (c), Myriad will [***].


 












***Confidential Treatment Requested


 


10

















 


6.                                      FEES
AND PAYMENTS


 


6.1                               Upfront Fee.  Myriad shall pay to Maxim a non-refundable,
non-creditable upfront fee of [***] within 20 days of the Effective
Date.


 


6.2                               Research Funding.  During the Research Term, Myriad shall make
research funding payments to Maxim for [***]
FTEs per year, quarterly in advance, at the rate of [***] per FTE per year. 
The first payment under this Section 6.2 shall be made within
20 days of the Effective Date and each subsequent payment shall be made on
the first day of each Calendar Quarter during the Research Term.  The first and final quarterly payments shall
be prorated to reflect the number of days in the calendar quarter that the
Research Program is in effect.  Any
commitment by Maxim of more than [***]
FTEs to the Research Program during the Research Term, and/or any extension of
the Research Term beyond the second (2nd) anniversary of the
Effective Date, would be subject to negotiation by the parties and require the
mutual written agreement of the parties.


 


6.3                               Milestone
Payments.  Within 30 days
following the first occurrence of each of the events set forth below with
respect to a Product, Myriad shall pay to Maxim the milestone payment set forth
below (whether such milestone is achieved by Myriad, its Affiliate or any of
their respective Sublicensees): 


 




	
  Milestone Event

  	
   

  	
  Milestone Payment

  	
   

  
	
  [***]

  	
   

  	
  [***]

  	
   

  
	
  [***]

  	
   

  	
  [***]

  	
   

  
	
  [***]

  	
   

  	
  [***]

  	
   

  
	
  [***]

  	
   

  	
  [***]

  	
   

  
	
  [***]

  	
   

  	
  [***]

  	
   

  






 


Each of the milestone payments described in this Section 6.3 shall
be payable one (1) time for each Product containing a particular active
ingredient, regardless of the number of indications for which such Product is
developed or commercialized; provided,
however, that if (a) a Product is abandoned during development
after one (1) or more of the milestone payments under this Section 6.3 has
been made (a “Dropped
Product”) and (b) another Product containing a different
active ingredient is developed for substantially the same indication as a
replacement for such Dropped Product, then only those milestone payments under
this Section 6.3 that were not previously made with respect to such
Dropped Product shall be payable with respect to the replacement Product.  All payments made to Maxim pursuant to this
Section 6.3 are non-refundable and, except as set forth in the preceding
sentence, may not be credited against any other payments payable by Myriad to
Maxim under this Agreement.


 


6.4                               Royalties.  Myriad shall pay to Maxim royalties on
Net Sales of Products by Myriad and its Affiliates (but not their respective
Sublicensees) at the following rates:


 


(a)                                  [***] of that portion of total
annual Net Sales of Products that is less than or equal to [***];


 












***Confidential Treatment Requested


 


11

















 


(b)                                  [***] of that portion of total
annual Net Sales of Products that is greater than [***] and less than or equal to [***];


 


(c)                                  [***] of that portion of total
annual Net Sales of Products that is greater than [***] and less than or equal to [***]; and


 


(d)                                  [***] of that portion of total
annual Net Sales of Products that is greater than [***].


 


6.5                               Sublicensing Revenues.


 


(a)                                  [***]
Sublicense.  Myriad shall pay to
Maxim [***] of all Sublicensing
Revenues received by Myriad or any of its Affiliates with respect to
sublicenses of the right to develop, make, have made, use, distribute for sale,
promote, market, offer for sale, sell, have sold, import or export Products [***].


 


(b)                                  [***] Sublicense.  If Myriad
grants to a Sublicensee the right to develop, make, have made, use, distribute
for sale, promote, market, offer for sale, sell, have sold, import or export
Products [***], Myriad shall pay
to Maxim milestone payments based on the achievement of any milestone set forth
in Section 6.3 above by any such Sublicensee.  Myriad shall also pay to Maxim royalties on the Net Sales of
Products by all such Sublicensees [***]
based on the royalty rate set forth in Section 6.4 above.


 


6.6                               Royalty Term.  The payments specified in Sections 6.4
and 6.5 (collectively, “Percentage-Based
Payments”) shall be payable on a Product-by-Product and
country-by-country basis for a period equal to the Royalty Term for such
Product in such country.


 


6.7                               Acknowledgment of Maxim Contribution.  The parties hereby acknowledge that the
value contributed by Maxim to any Product developed and/or commercialized by or
on behalf of Myriad, its Affiliates and Sublicensees is the access to the Maxim
Technology and that the milestone, royalty and Sublicensing Revenue payments
described above in this Article 6 will be payable by Myriad regardless of
whether or not a Product is covered by a Maxim Patent and/or Joint Patent.


 


7.                                      PAYMENT;
RECORDS; AUDITS


 


7.1                               Payment;
Reports.  Percentage-Based Payments shall be calculated and reported for
each Calendar Quarter.  All payments due
to Maxim under this Agreement shall be paid within 45 days of the end of each
Calendar Quarter, unless otherwise specifically provided herein.  Each payment shall be accompanied by a report
of Net Sales of Products by Myriad and its Affiliates and Sublicensing Revenues
received by Myriad and its Affiliates, each in sufficient detail to permit
confirmation of the accuracy of the payment made, including, without limitation
and on a country-by-country basis, the number of Products sold, the gross sales
and Net Sales of such Products, the amount of each type of Sublicensing
Revenues received, the Percentage-Based Payments payable, the method used to
calculate the Percentage-Based Payments, and the exchange rates used.  Myriad shall keep, and shall cause its
Affiliates and Sublicensees to keep, complete and accurate records pertaining
to the sale or other disposition of Products in sufficient detail to permit
Maxim to confirm the accuracy of all payments due hereunder.


 












***Confidential Treatment Requested


 


12

















 


7.2                               Exchange
Rate; Manner and Place of Payment.  All
payments hereunder shall be payable in U.S. dollars. When conversion of
payments from any foreign currency is required, such conversion shall be at an
exchange rate equal to the weighted average of the rates of exchange for the
currency of the country from which the Percentage-Based Payments are payable as
published by The Wall Street Journal,
Eastern U.S. Edition, during the Calendar Quarter for which a payment is
due.  All payments owed under this
Agreement shall be made by wire transfer in immediately available funds to a
bank and account designated in writing by Maxim, unless otherwise specified in
writing by Maxim.


 


7.3                               Income
Tax Withholding.  Maxim will pay any
and all taxes levied on account of any payments made to it under this
Agreement.  If any taxes are required to
be withheld by Myriad, Myriad will (a) deduct such taxes from the payment
made to Maxim, (b) timely pay the taxes to the proper taxing authority,
and (c) send proof of payment to Maxim and certify its receipt by the
taxing authority within 30 days following such payment.


 


7.4                               Audits.  During the Term and for a period of [***] thereafter, Myriad shall keep (and
shall cause its Affiliates and Sublicensees to keep) complete and accurate
records pertaining to the sale or other disposition of Products and the receipt
of Sublicensing Revenues in sufficient detail to permit Maxim to confirm the
accuracy of all Percentage-Based Payments due hereunder.  Maxim shall have the right to cause an
independent, certified public accountant reasonably acceptable to Myriad to
audit such records to confirm Net Sales, Sublicensing Revenues, Percentage-Based
Payments and other payments for a period covering not more than the preceding [***]. 
Such audits may be exercised during normal business hours upon a minimum
of 60 days prior written notice to Myriad, but no more than frequently than [***].  Prompt adjustments shall be made by the parties to reflect the
results of such audit.  Maxim shall bear
the full cost of such audit unless such audit discloses an underpayment by
Myriad of more than [***] of the
amount of Percentage-Based Payments or other payments due under this Agreement,
in which case, Myriad shall bear the full cost of such audit and shall promptly
remit to Maxim the amount of any underpayment.


 


7.5                               Late Payments.  In the event that any payment due under this
Agreement is not made when due, the payment shall accrue interest from the date
due at the rate of [***]; provided,
however, that in no event shall such rate exceed the maximum legal
annual interest rate.  The payment of
such interest shall not limit Maxim from exercising any other rights it may
have as a consequence of the lateness of any payment.


 


8.                                      INTELLECTUAL
PROPERTY


 


8.1                               Ownership
of Inventions.  Inventorship of
inventions conceived of and reduced to practice as part of the Research Program
(“Inventions”) shall
be determined in accordance with the rules of inventorship under United States
patent laws.  Maxim shall own all
Inventions conceived of and reduced to practice as part of the Research Program
solely by its employees and contractors (“Maxim Inventions”), and all Maxim Patents.  Myriad shall own all Inventions conceived of
and reduced to practice as part of the Research Program solely by its employees
and contractors (“Myriad Inventions”),
and all Myriad Patents.  All Inventions
conceived of and reduced to practice as part of the Research Program jointly by
employees or contractors of


 












***Confidential Treatment Requested


 


13

















 


Myriad and employees or contractors of Maxim (“Joint Inventions”), and all Joint Patents,
shall be owned jointly by Myriad and Maxim.


 


8.2                               Patent
Prosecution and Maintenance.


 


(a)                                  Maxim Patents.  Myriad shall be responsible for the
preparation, filing, prosecution and maintenance of the Maxim Patents.  The cost of such preparation, filing,
prosecution and maintenance of the Maxim Patents shall be [***]. 
Myriad shall invoice Maxim for such costs on a monthly basis (with
appropriate supporting documentation), and Maxim shall pay each such invoice
within 30 days of receipt.  Myriad
shall consider in good faith the requests and suggestions of Maxim with respect
to strategies for filing and prosecuting such Patents.  Myriad shall keep Maxim informed of progress
with regard to the preparation, filing, prosecution and maintenance of Patents
claiming a Product.  In the event that
Myriad desires to abandon any Maxim Patent claiming the manufacture, use or
sale of a Product being developed or commercialized by or on behalf of Myriad
pursuant to a license granted under Section 5.1(a)(ii), Myriad shall
provide reasonable prior written notice to Maxim of such intention to abandon
(which notice shall, in any event, be given no later than 60 days prior to
the next deadline for any action that may be taken with respect to such Maxim
Patent with the U.S. Patent & Trademark Office or any foreign patent
office)  in which case Myriad shall
have no further rights or obligations with respect to such Maxim Patent and
Maxim shall have the right, at its expense, to prepare, file, prosecute, and
maintain such Maxim Patent.


 


(b)                                  Myriad Patents.  Myriad shall be responsible for the
preparation, filing, prosecution and maintenance of the Myriad Patents at
Myriad’s sole expense.  In the event
that Myriad desires to abandon any Myriad Patent claiming the manufacture, use
or sale of a Product being developed or commercialized by or on behalf of
Myriad pursuant to a license granted under Section 5.1(a)(ii), Myriad
shall provide reasonable prior written notice to Maxim of such intention to
abandon (which notice shall, in any event, be given no later than 60 days
prior to the next deadline for any action that may be taken with respect to
such Myriad Patent with the U.S. Patent & Trademark Office or any foreign
patent office)  and provide Maxim
an opportunity to discuss with Myriad the possibility of assuming
responsibility for such Myriad Patent, provided that any such assumption of
responsibility by Maxim shall be subject to the prior written consent of
Myriad, which shall not be unreasonably withheld or delayed.


 


(c)                                  Joint Patents.  Myriad shall be responsible for the
preparation, filing, prosecution and maintenance of Joint Patents.  The cost of such preparation, filing,
prosecution and maintenance of the Maxim Patents shall be [***].  Myriad
shall consult with Maxim as to the preparation, filing, prosecution and
maintenance of such Joint Patents reasonably prior to any deadline or action
with the U.S. Patent & Trademark Office or any foreign patent office, and
shall furnish to Maxim copies of all relevant documents reasonably in advance of
such consultation.  In the event that
Myriad desires to abandon any Joint Patent, or if Myriad later declines
responsibility for any Joint Patent, Myriad shall provide reasonable prior
written notice to Maxim of such intention to abandon or decline responsibility
(which notice shall, in any event, be given no later than 60 days prior to
the next deadline for any action that may be taken with respect to such Joint
Patent with the U.S. Patent & Trademark Office or any foreign patent
office), and Maxim shall have the right, at its expense, to prepare, file,
prosecute, and maintain such Joint Patent.


 












***Confidential Treatment Requested


 


14

















 


8.3                               Cooperation
of the Parties.  Each party agrees
to cooperate fully in the preparation, filing, prosecution and maintenance of
any Patents under this Agreement and in the obtaining and maintenance of any
patent extensions, supplementary protection certificates and the like with
respect to any Patent claiming a Product being developed or commercialized by
Myriad in accordance with this Agreement. 
Such cooperation includes, but is not limited to:


 


(a)                                  executing
all papers and instruments, or requiring its employees or contractors, to
execute such papers and instruments, so as to effectuate the ownership of
Inventions set forth in Section 8.1, and Patents claiming or disclosing
such Inventions, and to enable the other party to apply for and to prosecute
patent applications in any country;


 


(b)                                  promptly
informing the other party of any matters coming to such party’s attention that
may affect the preparation, filing, prosecution or maintenance of any such
patent applications; and


 


(c)                              deciding whether to file a Joint Patent
on a Joint Invention or to maintain such Joint Invention as a trade
secret.  In the event that the parties
mutually agree to maintain a Joint Invention as a trade secret, such Joint
Invention shall be treated as if covered by a Joint Patent for the purposes of
this Agreement.


 


8.4                               Infringement
by Third Parties.  Maxim and Myriad
shall promptly notify the other in writing of any alleged or threatened
infringement of any Maxim Patent, Myriad Patent or Joint Patent of which they
become aware.  Both parties shall use
their commercially reasonable efforts in cooperating with each other to
terminate such infringement without litigation.


 


(a)                                  Maxim Patents.  Myriad shall have the first right to bring
and control any action or proceeding with respect to infringement of any Maxim
Patent for which Myriad is controlling the prosecution at its own expense and
by counsel of its own choice.  With
respect to infringement of any Maxim Patent that is controlled by Myriad, Maxim
shall have the right, at its own expense, to be represented in any such action
by counsel of its own choice. If Myriad fails to bring an action or proceeding
within (a) 60 days following the notice of alleged infringement or
(b) 10 days before the time limit, if any, set forth in the
appropriate laws and regulations for the filing of such actions, whichever comes
first, Maxim shall have the right to bring and control any such action at its
own expense and by counsel of its own choice, and Myriad shall have the right,
at its own expense, to be represented in any such action by counsel of its own
choice.


 


(b)                                  Myriad Patents.  Myriad shall have the first right to bring
and control any action or proceeding with respect to infringement of any Myriad
Patent at its own expense and by counsel of its own choice.  With respect to infringement of any Myriad
Patent that is likely to have a material adverse effect on any Product being
developed or commercialized by Myriad, its Affiliates or its Sublicensees
pursuant to a license granted under Section 5.1(a)(ii), Maxim shall have
the right, at its own expense, to be represented in any such action by counsel
of its own choice, and if Myriad fails to bring an action or proceeding within
(a) 60 days following the notice of alleged infringement or
(b) 10 days before the time limit, if any, set forth in the appropriate
laws and regulations for the filing of such actions, whichever comes first,
Maxim shall have the right to bring and control any such action at its own
expense and by counsel of its own choice, and Myriad


 


15

















 


shall have the right, at its own expense, to be represented in any such
action by counsel of its own choice.


 


(c)                                  Joint Patents.  Myriad shall have the first right to bring
and control any action or proceeding with respect to infringement of any Joint
Patent at its own expense and by counsel of its own choice, and Maxim shall
have the right, at its own expense, to be represented in any such action by
counsel of its own choice.  If Myriad fails to bring an
action or proceeding within (a) 60 days following the notice of alleged
infringement or (b) 10 days before the time limit, if any, set forth in
the appropriate laws and regulations for the filing of such actions, whichever
comes first, Maxim shall have the right to bring and control any such action at
its own expense and by counsel of its own choice, and Myriad shall have the
right, at its own expense, to be represented in any such action by counsel of
its own choice.


 


In the event a party brings an infringement action in accordance with
this Section 8.4, the other party shall cooperate fully, including, if
required to bring such action, the furnishing of a power of attorney or being
named as a party.  Neither party shall
have the right to settle any patent infringement litigation under this
Section 8.4 relating to any Patent claiming the manufacture, use or sale
of a Product being developed or commercialized by or on behalf of Myriad
pursuant to a license granted under Section 5.1(a)(ii) without the prior
written consent of such other party, which shall not be unreasonably
withheld.  Except as otherwise agreed to
by the parties as part of a cost-sharing arrangement, any recovery realized as
a result of such litigation, after reimbursement of any litigation expenses of
Maxim and Myriad, shall be treated as Net Sales for purposes of this Agreement.


 


8.5                               Infringement
of Third Party Rights.  Each party
shall promptly notify the other in writing of any allegation by a Third Party
that the activity of either of the parties pursuant to this Agreement infringes
or may infringe the intellectual property rights of such Third Party.  Maxim shall have the sole right to control
any defense of any such claim involving alleged infringement of Third Party
rights by Maxim’s activities at its own expense and by counsel of its own
choice, and Myriad shall have the right, at its own expense, to be represented
in any such action by counsel of its own choice.  Myriad shall have the sole right to control any defense of any
such claim involving alleged infringement of Third Party rights by Myriad’s activities
at its own expense and by counsel of its own choice, and Maxim shall have the
right, at its own expense, to be represented in any such action by counsel of
its own choice.  Neither party shall
have the right to settle any patent infringement litigation under this
Section 8.5 in a manner that diminishes the rights or interests of the
other party without the written consent of such other party (which shall not be
unreasonably withheld).


 


8.6                               License
of Third Party Rights.  Should
Myriad, its Affiliates or its U.S. Sublicensees [***], to obtain a license from a Third Party in order to
practice the Maxim Technology in the manufacture, use or sale of a Product in a
particular country, Myriad shall notify Maxim of [***] to obtain such license. 
Maxim shall have 10 days to [***].   The royalty rate due Maxim with respect to
Net Sales of such Product in such country shall be reduced by an amount equal
to [***].  However, in no event will a reduction under
this Section 8.6 reduce the amount that would otherwise be payable to
Maxim under Section 6.4 with respect to sales of such Product in such
country [***].  In the event [***] is required, then the periodic royalty amount otherwise
due hereunder shall be reduced by an amount equal to [***].  However, in no


 












***Confidential Treatment Requested


 


16

















 


event will a reduction under this Section 8.6 reduce the amount
that would otherwise be payable to Maxim under Section 6.4 with respect to
sales of such Product in such country [***].


 


8.7                               Combined Products.  In the event
that a Product licensed hereunder contains another royalty-bearing active
ingredient, or product containing an active ingredient[***] such that a single, combined product
is being sold (“Combined Product”), then the royalties due hereunder on the Net
Sale of such Combined Product shall be calculated by multiplying
Net Sales by the fraction [***]
where A is [***] and B is [***].


 


9.                                      REPRESENTATIONS
AND WARRANTIES


 


9.1                               Mutual
Representations and Warranties.  Each
party represents and warrants to the other that: (a) it is duly organized
and validly existing under the laws of its jurisdiction of incorporation or
formation, and has full corporate or other power and authority to enter into
this Agreement and to carry out the provisions hereof; (b) it is duly
authorized to execute and deliver this Agreement and to perform its obligations
hereunder, and the person or persons executing this Agreement on its behalf has
been duly authorized to do so by all requisite corporate or partnership action;
and (c) this Agreement is legally binding upon it, enforceable in
accordance with its terms, and does not conflict with any agreement, instrument
or understanding, oral or written, to which it is a party or by which it may be
bound, nor violate any material law or regulation of any court, governmental
body or administrative or other agency having jurisdiction over it.


 


9.2                               Maxim
Representations and Warranties. 
Maxim represents and warrants to Myriad that, as of the Effective Date:


 


(a)                                  Maxim
has the right, power and authority to grant the licenses contemplated under
this Agreement.


 


(b)                                  Maxim
has received no notice of infringement or misappropriation of any alleged
rights asserted by any Third Party in relation to the Maxim Technology.


 


(c)                                  Maxim
is not aware of any threat or claim of infringement or misappropriation of any
alleged rights asserted by any third party in relation to the Maxim Technology.


 


(d)                                  To
its knowledge, the Maxim Technology is not part of the public knowledge or
literature, nor has it been used, divulged or appropriated for the benefit of
any past or present employees or other persons, nor has it been developed
through derivation or misappropriation from any third parties.


 


(e)                                  Maxim
is the sole owner of each Maxim Patent.


 


(f)                                    To
its knowledge, the Maxim Technology is free and clear of any liens, charges or
encumbrances.


 


(g)                                 Maxim
has taken reasonable measures to protect the secrecy, confidentiality and value
of the Maxim Technology.


 












***Confidential Treatment Requested


 


17

















 


(h)                                 Maxim
has corroborating records evidencing the conception and reduction to practice
of the inventions in Maxim Patents, and will safeguard and preserve the records
until the expiration of the term (including any extended term) of the last to
expire Maxim Patent.


 


(i)                                    To
its knowledge, no item of the Maxim Technology has been put into the public
domain except as part of the patent application process in the United States
and corresponding foreign applications.


 


(j)                                    Maxim
does not have knowledge of, and has not received notice that, any past or
present employee or other person claims any right to the Maxim Technology.


 


(k)                                Maxim has agreements with any actual or
potential inventors of any Maxim Patents requiring such inventors to assign
their entire interest in the Maxim Patents to Maxim and providing obligations
of such inventors to keep information in Maxim Patents confidential before
Maxim Patents are published or issued.


 


9.3                               Performance
by Affiliates.  The parties
recognize that each may perform some or all of its obligations under this
Agreement through Affiliates, provided,
however, that each party shall remain responsible and be guarantor
of the performance by its Affiliates and shall cause its Affiliates to comply
with the provisions of this Agreement in connection with such performance.  In particular, if any Affiliate of a party
participates in research under this Agreement or with respect to Products,
(a) the restrictions of this Agreement which apply to the activities of a
party with respect to Products shall apply equally to the activities of such
Affiliate, and (b) the party affiliated with such Affiliate shall assure,
and hereby guarantees, that any intellectual property developed by such
Affiliate shall be governed by the provisions of this Agreement (and subject to
the licenses set forth in Article 5) as if such intellectual property had
been developed by the party.


 


9.4                               Disclaimer.  Except
as expressly set forth herein, THE TECHNOLOGY AND INTELLECTUAL PROPERTY
RIGHTS PROVIDED BY EACH PARTY HEREUNDER ARE PROVIDED “AS IS” AND EACH PARTY
EXPRESSLY DISCLAIMS ANY AND ALL WARRANTIES OF ANY KIND, EXPRESS OR IMPLIED,
INCLUDING WITHOUT LIMITATION THE WARRANTIES OF DESIGN, MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE, NONINFRINGEMENT OF THE INTELLECTUAL PROPERTY RIGHTS
OF THIRD PARTIES, OR ARISING FROM A COURSE OF DEALING, USAGE OR TRADE
PRACTICES, IN ALL CASES WITH RESPECT THERETO. 
Without limiting the generality of the foregoing, each party expressly
does not warrant (a) the success of any study or test commenced under the
Research Program or (b) the safety or usefulness for any purpose of the
technology it provides hereunder.


 


9.5                               Limitation
of Liability.  EXCEPT FOR PAYMENTS
UNDER ARTICLE 6 OR LIABILITY FOR BREACH OF ARTICLE 10, NEITHER PARTY
SHALL BE ENTITLED TO RECOVER FROM THE OTHER PARTY ANY SPECIAL, INCIDENTAL,
CONSEQUENTIAL OR PUNITIVE DAMAGES IN CONNECTION WITH THIS AGREEMENT OR ANY
LICENSE GRANTED HEREUNDER; provided,
however, that this Section 9.5 shall not be construed to limit
either party’s indemnification obligations under Article 12.


 


18

















 


10.                               CONFIDENTIALITY


 


10.1                        Confidential
Information.  Except to the extent
expressly authorized by this Agreement or otherwise agreed in writing by the
parties, the parties agree that, during the Term and for five (5) years
thereafter, the receiving party shall keep confidential and shall not publish
or otherwise disclose and shall not use for any purpose other than as expressly
provided for in this Agreement any Information furnished to it by the other
party pursuant to this Agreement or any Information developed as part of the
Research Program hereunder (collectively, “Confidential Information”).  Each party may use such Confidential Information only to the
extent required to accomplish the purposes of this Agreement.  Each party will use at least the same
standard of care as it uses to protect proprietary or confidential information
of its own to ensure that its employees, agents, consultants and other
representatives do not disclose or make any unauthorized use of the
Confidential Information.  Each party
will promptly notify the other upon discovery of any unauthorized use or
disclosure of the Confidential Information. 
Confidential Information shall also include any information related to
the MX90745 Series.


 


10.2                        Exceptions.  Confidential Information shall not
include any information which the receiving party can prove by competent
written evidence: (a) is now, or hereafter becomes, through no act or
failure to act on the part of the receiving party, generally known or
available; (b) is known by the receiving party at the time of receiving
such information, as evidenced by its records; (c) is hereafter furnished
to the receiving party by a Third Party, as a matter of right and without
restriction on disclosure; (d) is independently discovered or developed by
the receiving party without the use of Confidential Information belonging to
the disclosing party; or (e) is the subject of a written permission to
disclose provided by the disclosing party.


 


10.3                        Authorized
Disclosure.  Each party may disclose
Confidential Information belonging to the other party to the extent such disclosure
is reasonably necessary in the following instances:


 


(a)                                  filing
or prosecuting Patents as permitted by this Agreement;


 


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


 


(c)                                  prosecuting
or defending litigation as permitted by this Agreement;


 


(d)                                  complying
with applicable court orders or governmental regulations;


 


(e)                                  in
the case of Myriad, conducting development and/or commercialization activities
in accordance with a license granted under Section 5.1(a)(ii); and


 


(f)                                    disclosure
to Affiliates, Sublicensees, employees, consultants, agents or other Third
Parties in connection with due diligence or similar investigations by such
Third Parties, and disclosure to potential Third Party investors in
confidential financing documents, provided, in each case, that any such
Affiliate, Sublicensee, employee, consultant, agent or Third Party agrees to be
bound by similar terms of confidentiality and non-use at least equivalent in
scope to those set forth in this Article 10.


 


19

















 


Notwithstanding the foregoing, in the event a party is required to make
a disclosure of the other party’s Confidential Information pursuant to
Section 10.3(c) or (d), it will, except where impracticable, give
reasonable advance notice to the other party of such disclosure and use efforts
to secure confidential treatment of such information at least as diligent as
such party would use to protect its own confidential information, but in no
event less than reasonable efforts.  In
any event, the parties agree to take all reasonable action to avoid disclosure
of Confidential Information hereunder. 
The parties will consult with each other on the provisions of this
Agreement to be redacted in any filings made by the parties with the Securities
and Exchange Commission or as otherwise required by law.


 


10.4                        Publications.  Each party to this Agreement recognizes
that the publication of papers regarding results of and other information
regarding the Research Program, including oral presentations and abstracts, may
be beneficial to both parties provided such publications are subject to
reasonable controls to protect Confidential Information.  Accordingly, a party shall have the right to
review and comment on any material proposed for disclosure or publication by
the other party, such as by oral presentation, manuscript or abstract, which
utilizes data generated from the Research Program and/or includes Confidential
Information of the other party.  Before
any such material is submitted for publication, the party proposing publication
shall deliver a complete copy to the other party at least 45 days prior to
submitting the material to a publisher or initiating any other disclosure.  Such other party shall review any such
material and give its comments to the party proposing publication within
30 days of the delivery of such material to such other party.  With respect to oral presentation materials
and abstracts, such other party shall make reasonable efforts to expedite review
of such materials and abstracts, and shall return such items as soon as
practicable to the party proposing publication with appropriate comments, if
any, but in no event later than 30 days from the date of delivery to the
non-publishing party.  The publishing
party shall comply with the other party’s request to delete references to the
Confidential Information in any such material and agrees to delay any
submission for publication or other public disclosure for a period of up to an
additional 90 days for the purpose of preparing and filing appropriate
patent applications.


 


10.5                        Publicity.  It is understood that the parties intend
to coordinate the issuance of press releases announcing the execution of this
Agreement and agree that each party may desire or be required to issue
subsequent press releases relating to the Agreement or activities
thereunder.  The parties agree to
consult with each other reasonably and in good faith with respect to the text
and timing of such press releases prior to the issuance thereof, provided that
a party may not unreasonably withhold consent to such releases and shall
provide comments on such releases within five days of receipt, and that either
party may issue such press releases as it determines, based on advice of counsel,
are reasonably necessary to comply with laws or regulations or for appropriate
market disclosure.  In addition,
following the initial press releases announcing this Agreement, either party
shall be free to disclose, without the other party’s prior written consent, the
existence of this Agreement, the identity of the other party and those terms of
the Agreement which have already been publicly disclosed in accordance
herewith.


 


11.                               TERM
AND TERMINATION


 


11.1                        Term.  The term of the Research Program shall commence
on the Effective Date and continue until expiration of the Research Term,
unless this Agreement is earlier terminated


 


20

















 


pursuant to Section 11.2. 
The term of this Agreement (the “Term”) shall commence on the Effective Date and
continue until the expiration of the last Royalty Term for any Product with
respect to which Myriad has a license under Section 5.1(a)(ii), unless
earlier terminated pursuant to Section 11.2.


 


11.2                        Termination
for Cause.  Each party shall have
the right to terminate the Research Program and/or this Agreement upon
60 days’ prior written notice to the other upon the occurrence of any of
the following:


 


(a)                                  Upon
or after the bankruptcy, insolvency, dissolution or winding up of the other
party (other than a dissolution or winding up for the purpose of reconstruction
or amalgamation); or


 


(b)                                  Upon
or after the breach of any material provision of this Agreement by the other
party if the breaching party has not cured such breach within the 60-day period
following written notice of termination by the non-breaching party.


 


However, if a party receives a written notice of termination notifying
that it is in breach of a material provision of this Agreement, and, within
30 days after receipt of such notice of breach, such party disputes such
allegation of breach, such dispute shall be resolved under the Dispute
Resolution procedures set forth in Section 11.3 below.  If the final decision resulting from the
Dispute Resolution procedures set forth in Section 11.3 below is that a
breach of a material provision of the Agreement has occurred, then the
breaching party shall have 60 days to cure such breach.  If such breach is not cured within the 60 day
period, the non-breaching party shall have the right to terminate the Research
Program or this Agreement, as applicable, immediately.


 


11.3                        Dispute
Resolution.   In the event of any controversy or
claim arising out of, relating to or in connection with any provision of this
Agreement, the parties shall try to settle their differences amicably between
themselves first, by referring the disputed matter to the Chief Executive
Officer of Myriad and the Chief Executive Officer of Maxim.  Either party may initiate such informal
dispute resolution by sending written notice of the dispute to the other party,
and, within 20 days after such notice, such representatives of the parties
shall meet for attempted resolution by good faith negotiations.  If the representative of the parties have
not been able to resolve the dispute within fifteen (15) business days after
such mediation hearing, then any and all claims, disputes or controversies
arising under, out of, or in connection with this Agreement, shall be resolved
by final and binding compulsory arbitration in a neutral location agreed to by
the parties pursuant to and in accordance with the then-current Commercial
Arbitration Rules of the American Arbitration Association.  The arbitration shall be conducted by a
panel of three persons experienced in the pharmaceutical industry, none of whom
shall be a current or former employee or director, or a then-current
stockholder, of either party, their respective Affiliates or any
Sublicensee.  Within 30 days after
receipt of the original notice of binding arbitration, each party shall select
one person to act as arbitrator and the two party-selected arbitrators shall
select a third arbitrator within 10 business days of their
appointment.  Either party may apply to
the arbitrators for interim injunctive relief until the arbitrators have
rendered their decision or the controversy is otherwise resolved.  Either party may also, without waiving any
remedy under this Agreement, seek from any court having jurisdiction any
injunctive or provisional relief necessary to protect the rights or property of
that party pending


 


21

















 


the arbitrators’ decision.  The
arbitrators shall have no power to add to, subtract from or modify any of the
terms or conditions of this Agreement, nor to award punitive damages.  Any award rendered in such arbitration may
be enforced by either party in the state or federal courts located in either
the State of Utah or the State of California. 
Each party shall bear its own costs and expenses and attorneys’ fees and
an equal share of the arbitrators’ fees and any administrative fees of
arbitration, provided that the arbitrators shall be authorized to determine
whether a party is the prevailing party, and if so, to award to that prevailing
party reimbursement for its reasonable costs and expenses, including reasonable
attorneys’ fees, in connection with arbitration of such controversy or
claim.  By agreeing to this binding arbitration provision, the parties understand
that they are waiving certain rights and protections which may otherwise be
available if a dispute between the parties were determined by litigation in
court, including, without limitation, the right to seek or obtain certain types
of damages precluded by this provision, the right to a jury trial and certain
rights of appeal.


 


11.4                        Effect of
Termination; Surviving Obligations.


 


(a)                                  Upon
termination of this Agreement by Myriad pursuant to Section 11.2:


 


(i)                                    all
rights under the licenses granted under Sections 5.1(a)(i) and 5.1(b), if
then in effect, shall [***]; and


 


(ii)                                all
rights under the license granted by Maxim to Myriad under
Section 5.1(a)(ii) shall [***].


 


(b)                                  Upon
termination of this Agreement by Maxim pursuant to Section 11.2:


 


(i)                                    all
rights under the licenses granted under Sections 5.1(a)(i) and 5.1(b), if
then in effect, shall [***];


 


(ii)                                all
rights under the license granted by Maxim to Myriad under
Section 5.1(a)(ii) shall [***];


 


(iii)                            any
permitted sublicenses granted under Section 5.1(a)(ii) by Myriad shall [***];


 


(iv)                               [***] shall [***]


 


(v)                                   [***] shall [***] for a period of [***] from the effective date of
termination.


 


(c)                                  Expiration
or termination of this Agreement shall not relieve the parties of any
obligation accruing prior to such expiration or termination.  The obligations and rights of the parties
under the following provisions of this Agreement shall survive expiration or
termination of this Agreement:


 


Section 3.7 – Materials Transfer (last sentence
only)


Section 5.3(c) – Maxim [***] Rights


Section 7.4 – Audits


 












***Confidential Treatment Requested


 


22

















 


Section 7.5 – Late Payments


Section 8.1 – Ownership of Inventions


Section 8.2 – Patent Prosecution and Maintenance [***]


Section 8.3 – Cooperation of the Parties [***]


Section 8.4 – Infringement by Third Parties [***]


Section 8.5 – Infringement of Third Party Rights [***]


Section 9.3 – Performance by Affiliates [***]


Section 9.4 – Disclaimer


Section 9.5 – Limitation of Liability


Section 10.1 – Confidentiality


Section 10.2 – Exceptions


Section 10.3 – Authorized Disclosure


Section 10.4 – Publications


Section 11.3 – Dispute Resolution


Section 11.4 – Effect of Termination; Surviving
Obligations


Section 11.5 – Exercise of Right to Terminate


Section 11.6 – Damages; Relief


Section 11.7 – Rights in Bankruptcy [***]


Article 12 – Indemnification


Article 13 – General Provisions


 


(d)                                  Within
thirty (30) days following the expiration or termination of this Agreement,
except to the extent and for so long as a party retains license rights under
Sections 11.3(a) or (b), each party shall deliver to the other party any
and all Confidential Information of the other party in its possession.


 


11.5                        Exercise
of Right to Terminate.  The use by
either party hereto of a termination right provided for under this Agreement
shall not give rise to the payment of damages or any other form of compensation
or relief to the other party with respect thereto.


 


11.6                        Damages;
Relief.  Subject to
Section 11.4 above, termination of this Agreement shall not preclude
either party from claiming any other damages, compensation or relief that it
may be entitled to upon such termination.


 


11.7                        Rights in
Bankruptcy.  All rights and licenses
granted under or pursuant to this Agreement by Myriad or Maxim are, and will
otherwise be deemed to be, for purposes of Section 365(n) of the U.S.
Bankruptcy Code, licenses of right to “intellectual property” as defined under
Section 101 of the U.S. Bankruptcy Code. 
The parties agree that the parties, as licensees of such rights under
this Agreement, will retain and may fully exercise all of their rights and
elections under the U.S. Bankruptcy Code. 
The parties further agree that, in the event of the commencement of a
bankruptcy proceeding-by or against either party under the U.S. Bankruptcy Code,
the party hereto that is not a party to such proceeding will be entitled to a
complete duplicate of (or complete access to, as appropriate) any such
intellectual property and all embodiments of such intellectual property, and
same, if not already in their possession, will be promptly delivered to them
(i) upon any such commencement of a bankruptcy proceeding upon their
written request therefor, unless the party subject to such proceeding elects to
continue to perform all of its obligations under this Agreement, or
(ii) if not delivered under (i) above,


 












***Confidential Treatment Requested


 


23

















 


following the rejection of this Agreement by or on behalf of the party
subject to such proceeding upon written request therefor by the non-subject
party.


 


12.                               INDEMNIFICATION


 


12.1                        Indemnification by Maxim.  Maxim hereby agrees to save, defend and hold
Myriad and its Affiliates and their respective directors, officers, employees
and agents (each, a “Myriad
Indemnitee”) harmless from and against any and all claims,
suits, actions, demands, liabilities, expenses and/or loss, including
reasonable legal expense and attorneys’ fees (collectively, “Losses”), to which
any Myriad Indemnitee may become subject as a result of any claim, demand,
action or other proceeding by any Third Party to the extent such Losses arise
directly or indirectly out of: (i) the practice by Maxim of any license
granted hereunder, (ii) the manufacture, use, handling, storage, sale or
other disposition of any Product by Maxim, its Affiliates or sublicensees
(other than Myriad, its Affiliates and their respective Sublicensees), or
(iii) the breach by Maxim of any warranty, representation, covenant or
agreement made by Maxim in this Agreement; except, in each case, to the extent
such Losses result from the gross negligence or willful misconduct of any
Myriad Indemnitee or the breach by Myriad of any warranty, representation,
covenant or agreement made by Myriad in this Agreement.


 


12.2                        Indemnification by Myriad.  Myriad hereby agrees to save, defend and
hold Maxim and its Affiliates and their respective directors, officers,
employees and agents (each, a “Maxim Indemnitee”) harmless from and against any and
all Losses to which any Maxim Indemnitee may become subject as a result of any
claim, demand, action or other proceeding by any Third Party to the extent such
Losses arise directly or indirectly out of: (i) the practice by Myriad of
any license granted hereunder, (ii) the manufacture, use, handling, storage,
sale or other disposition of any Product by Myriad, its Affiliates or any of
their respective Sublicensees, or (iii) the breach by Myriad of any
warranty, representation, covenant or agreement made by Myriad in this
Agreement; except, in each case, to the extent such Losses result from the
gross negligence or willful misconduct of any Maxim Indemnitee or the breach by
Maxim of any warranty, representation, covenant or agreement made by Maxim in
this Agreement.


 


12.3                        Control of
Defense.  Any entity entitled to
indemnification under this Article 12 shall give notice to the
indemnifying party of any Losses that may be subject to indemnification,
promptly after learning of such Losses, and the indemnifying party shall assume
the defense of such Losses with counsel reasonably satisfactory to the
indemnified party.  If such defense is
assumed by the indemnifying party with counsel so selected, the indemnifying
party will not be subject to any liability for any settlement of such Losses
made by the indemnified party without its consent (but such consent will not be
unreasonably withheld or delayed), and will not be obligated to pay the fees
and expenses of any separate counsel retained by the indemnified party with
respect to such Losses.


 


12.4                        Insurance.  Myriad,
at its own expense, shall maintain product liability insurance (or self-insure)
in an amount consistent with industry standards during the Term of the
Agreement and shall name Maxim as an additional insured with respect to such
insurance.  Myriad shall provide a
certificate of insurance (or evidence of self-insurance) evidencing such
coverage to Maxim upon request.


 


24

















 


13.                               GENERAL
PROVISIONS


 


13.1                        Governing
Law.  This Agreement shall be
governed by, and construed and enforced in accordance with, the laws of the
State of Delaware, excluding its conflicts of laws principles.


 


13.2                        Entire
Agreement; Modification.  This
Agreement is both a final expression of the parties’ agreement and a complete
and exclusive statement with respect to all of its terms.  This Agreement supersedes all prior and
contemporaneous agreements and communications, whether oral, written or
otherwise, concerning any and all matters contained herein, excluding the
letter agreement between the parties dated the Effective Date approving the
initial Research Plan.  No rights or
licenses with respect to any intellectual property of either party are granted
or deemed granted hereunder or in connection herewith, other than those rights
expressly granted in this Agreement. 
This Agreement may only be modified or supplemented in a writing
expressly stated for such purpose and signed by the parties to this Agreement.


 


13.3                        Relationship
Between the Parties.  The parties’
relationship, as established by this Agreement, is solely that of independent
contractors.  This Agreement does not
create any partnership, joint venture or similar business relationship between
the parties.  Neither party is a legal
representative of the other party, and neither party can assume or create any
obligation, representation, warranty or guarantee, express or implied, on
behalf of the other party for any purpose whatsoever.


 


13.4                        Non-Waiver.  The failure of a party to insist upon
strict performance of any provision of this Agreement or to exercise any right
arising out of this Agreement shall neither impair that provision or right nor
constitute a waiver of that provision or right, in whole or in part, in that
instance or in any other instance.  Any
waiver by a party of a particular provision 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 such party.


 


13.5                        Assignment.  Except as expressly provided hereunder,
neither this Agreement nor any rights or obligations hereunder may be assigned
or otherwise transferred by either party without the prior written consent of
the other party (which consent shall not be unreasonably withheld); provided,
however, that either party may assign this Agreement and its rights
and obligations hereunder without the other party’s consent:


 


(a)                                  in
connection with the transfer or sale of all or substantially all of the
business of such party to which this Agreement relates to a Third Party,
whether by merger, sale of stock, sale of assets or otherwise, provided that in
the event of a transaction (whether this Agreement is actually assigned or is
assumed by the acquiring Party by operation of law (e.g., in the context of a reverse triangular merger)),
intellectual property rights of the acquiring party to such transaction (if
other than one of the parties to this Agreement) shall not be included in the
technology licensed hereunder; or


 


(b)                                  to
an Affiliate, provided that the assigning party shall remain liable and responsible
to the non-assigning party hereto for the performance and observance of all
such duties and obligations by such Affiliate.


 


25

















 


The rights and obligations of the parties under this Agreement shall be
binding upon and inure to the benefit of the successors and permitted assigns
of the parties.  Any assignment not in
accordance with this Agreement shall be void.


 


13.6                        No Third
Party Beneficiaries.  This Agreement
is neither expressly nor impliedly made for the benefit of any party other than
those executing it.


 


13.7                        Severability.  If, for any reason, any part of this
Agreement is adjudicated invalid, unenforceable or illegal by a court of
competent jurisdiction, such adjudication shall not affect or impair, in whole
or in part, the validity, enforceability or legality of any remaining portions
of this Agreement.  All remaining
portions shall remain in full force and effect as if the original Agreement had
been executed without the invalidated, unenforceable or illegal part.


 


13.8                        Notices.  Any notice to be given under this
Agreement must be in writing and delivered either in person, by any method of
mail (postage prepaid) requiring return receipt, or by overnight courier or
facsimile confirmed thereafter by any of the foregoing, to the party to be
notified at its address(es) given below, or at any address such party has
previously designated by prior written notice to the other.  Notice shall be deemed sufficiently given
for all purposes upon the earliest of: 
(a) the date of actual receipt; (b) if mailed, three days
after the date of postmark; or (c) if delivered by overnight courier, the
next business day the overnight courier regularly makes deliveries.


 


If to Myriad, notices must be addressed to:


 


Myriad Genetics, Inc.


320 Wakara Way


Salt Lake City, UT  84108


Attention: General Counsel


Telephone:  (801) 584-3600


Facsimile:  (801) 584-3640


 


If to Maxim,
notices must be addressed to:


 


Maxim Pharmaceuticals, Inc.


8899 University Center Lane, Suite 400


San Diego, CA  92122


Attention: Finance Department


Telephone:  (858) 453-4040


Facsimile:  (858) 453-5005


 


13.9                        Force
Majeure.  Except for the obligation
to make payment when due (which shall be fairly adjusted as a result of the
effect of the applicable Force Majeure), each party shall be excused from
liability for the failure or delay in performance of any obligation under this
Agreement by reason of any event beyond such party’s reasonable control
including but not limited to Acts of God, fire, flood, explosion, earthquake,
or other natural forces, war, civil unrest, accident, destruction or other
casualty, any lack or failure of transportation facilities, any lack or failure
of supply of raw materials, any strike or labor disturbance, or any other event
similar to those enumerated above.  Such
excuse from liability shall be effective only to the


 


26

















 


extent and duration of the event(s) causing the failure or delay in
performance and provided that the party has not caused such event(s) to
occur.  Notice of a party’s failure or
delay in performance due to force majeure must be given to the other party
within ten (10) days after its occurrence. 
All delivery dates under this Agreement that have been affected by force
majeure shall be tolled for the duration of such force majeure.  In no event shall any party be required to
prevent or settle any labor disturbance or dispute.  Notwithstanding the foregoing, should the event(s) of force
majeure suffered by a party extend beyond a three (3) month period, the other
party may then terminate this Agreement by written notice to the non-performing
party, with the consequences of such termination as set forth in
Sections 11.3, 11.4 and 11.5.


 


13.10                 Interpretation.


 


(a)                                  Captions
& Headings.  The captions and
headings of clauses contained in this Agreement preceding the text of the
articles, sections, subsections and paragraphs hereof are inserted solely for
convenience and ease of reference only and shall not constitute any part of
this Agreement, or have any effect on its interpretation or construction.


 


(b)                                  Singular
& Plural.  All references in
this Agreement to the singular shall include the plural where applicable, and
all references to gender shall include both genders and the neuter.


 


(c)                                  Articles,
Sections & Subsections.  Unless
otherwise specified, references in this Agreement to any article shall
include all sections, subsections, and paragraphs in such article; references
in this Agreement to any section shall include all subsections and
paragraphs in such sections; and references in this Agreement to any
subsection shall include all paragraphs in such subsection.


 


(d)                                  Days.  All references to days in this Agreement
shall mean calendar days, unless otherwise specified.


 


(e)                                  Ambiguities.  Ambiguities and uncertainties in this
Agreement, if any, shall not be interpreted against either party, irrespective
of which party may be deemed to have caused the ambiguity or uncertainty to
exist.


 


(f)                                    English Language.  This Agreement has been prepared in the
English language and the English language shall control its
interpretation.  In addition, all
notices required or permitted to be given hereunder, and all written,
electronic, oral or other communications between the parties regarding this
Agreement shall be in the English language.


 


13.11                 Counterparts.  This Agreement may be executed in two or
more counterparts, each of which shall be deemed an original document, and all
of which, together with this writing, shall be deemed one instrument.


 


[Remainder
of this page intentionally left blank.]


 


27

















 


IN WITNESS WHEREOF,
the parties hereto have duly executed this LICENSE AND COLLABORATION AGREEMENT as of
the Effective Date.


 


	
  MAXIM
  PHARMACEUTICALS, INC.

  	
  MYRIAD
  GENETICS, INC.

  
	
   

  	
   

  
	
   

  	
   

  
	
  By:

  	
  /s/ Larry G. Stambaugh

  	
   

  	
  By:

  	
  /s/ Peter D. Meldrum

  	
   

  
	
  Name: Larry G. Stambaugh

  	
  Name: Peter D. Meldrum

  
	
  Title: Chariman, President, & CEO

  	
  Title: President & CEO

  
	
   

  	
   

  
	
   

  	
   

  
	
  CYTOVIA,
  INC.

  	
   

  
	
   

  	
   

  
	
   

  	
   

  
	
  By:

  	
  /s/ Larry G. Stambaugh

  	
   

  	
   

  
	
  Name: Larry G. Stambaugh

  	
   

  
	
  Title: Chief Executive Officer

  	
   

  
								



 


28

















 


Exhibit
A


 


Research
Plan for MX128495


 


Overview of Year 1 Research


 


The primary
objective of the research to be conducted by Maxim during the one-year period
following the Effective Date will include:


 


•                  [***].


 


Background


 


1.                                           [***].


 


Maxim Staffing for
Research Plan


 


Maxim’s work related to the Research Plan will be conducted by [***] FTE [***],
and [***] FTE [***].


 


Overview of Year 2
Research if Option Exercised by Myriad


 


[***].


 












***Confidential Treatment Requested


 


29