EXHIBIT 10.14


 


[ * ] = CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS
DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION 
PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


LICENSE AND RESEARCH AGREEMENT


 


(Amended and Restated)


 


THIS LICENSE AND RESEARCH AGREEMENT
(the “Agreement”) is made and entered into as of September 2, 1999, (the “Effective
Date”), as amended and restated on March 26, 2001 (the “Restatement Date”),
by and between Rigel Pharmaceuticals, Inc., a corporation organized under
the laws of Delaware and having a principal place of business at 240 East Grand
Avenue, South San Francisco, CA 94080 (“Rigel”) and Cell Genesys, Inc., a
corporation organized under the laws of Delaware and having a principal place
of business at 342 Lakeside Drive, Foster City, CA 94404 (“CG”).  Rigel and CG may be referred to collectively
as the “Parties,” or individually as a “Party.”


 


RECITALS


 


WHEREAS, CG controls rights to
certain patents relating to [ * ] cell
lines [ * ] and [ * ]
cell lines (Rockefeller), and related technology;


 


WHEREAS, Rigel has a license to
the [ * ] cell lines, associated vectors
and vector libraries under intellectual property rights owned by Stanford University;


 


WHEREAS, CG and Rigel desire to
enter into an agreement granting each other licenses under such patents and
other intellectual property rights as provided herein;


 


WHEREAS, Rigel is in the
business of, among other things, providing services for identifying molecules
which bind together in intracellular signaling pathways, and CG desires that
Rigel perform such services for CG to identify peptides, proteins and/or
Genetic Material (as defined below) that modulate angiogenesis in endothelial
tissues;


 


WHEREAS, Rigel wishes to perform
additional research in the Field of Research (as defined below) for CG and
Novartis Pharma AG (“Novartis”) funded by Novartis, as a combined program of
research expanding upon the research that Rigel has already as of the
Restatement Date conducted, such that Rigel will be able to continue its
research effort in the Field of Research and the overall resources that Rigel
will be able to devote to identifying peptides, proteins and/or Screened
Genetic Material (as defined below) that modulate angiogenesis in endothelial
tissues will be increased; and


 


WHEREAS, The Parties wish to
confirm CG rights to all Therapeutic Candidates (as defined below) that Rigel
identifies in the combined research program, but Rigel needs, in order to make
such arrangement acceptable to Novartis, the unambiguous right pursuant to this
Agreement to grant Novartis certain rights with respect to all Targets (as
defined below) for Novartis’s use as targets in Novartis’s drug discovery
efforts, and CG is willing to waive certain of its rights and to amend and
restate this Agreement to assure Rigel such unambiguous right;


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


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NOW THEREFORE, in consideration
of the foregoing premises and the covenants and promises contained in this
Agreement, the Parties agree as follows:


 


ARTICLE 1



DEFINITIONS


 


1.1                               “Affiliate”
shall mean, with respect to a Party to this Agreement, any other entity,
whether de jure or de facto, which directly or indirectly controls, is
controlled by, or is under common control with, such Party.  A business entity or Party shall be regarded
as in control of another business entity if it owns, or directly or indirectly
controls, at least fifty percent (50%) (or such lesser percentage which is the
maximum allowed to be owned by a foreign entity in a particular jurisdiction)
of the voting stock or other ownership interest of the other entity, or if it
directly or indirectly possesses the power to direct or cause the direction of
the management and policies of the other entity by any lawful means whatsoever.


 


1.2                               “CG
Collaboration Partners” means those third parties which enter into a
research or development agreement with CG under which CG conducts substantial
research or development activities in collaboration with such third party and
grants a license to such third party under patents and/or know-how owned or
controlled by CG in addition to a sublicense under the Rigel Biological
Materials or Rigel Know-How, which licenses and sublicense are for the further development
and commercialization of the results of such collaborative research or
development.


 


1.3                               “CG
[ * ] Field” means human Gene Therapy and animal Gene Therapy.


 


1.4                               “CG
Know-How” means all Information Controlled by CG as of the Effective Date
that is necessary or useful for practicing the CG Patents.


 


1.5                               “CG
License” means the license agreement between CG and Rockefeller University
as in effect as of the Effective Date and attached hereto as Appendix A.


 


1.6                               “CG
Patents” means the Patents and applications listed on Appendix B, to the
extent the same are Controlled by CG.


 


1.7                               “CG
Program Field” means the research, development or commercialization of
human or animal therapeutic products and services, which products and/or
services are comprised of peptides, proteins or Gene Therapy.


 


1.8                               “Control”
or “Controlled” means ownership of, or a license to, a particular item,
material or intellectual property right with the ability to grant to the other
Party access to and/or a license or sublicense as provided for herein without
violating the terms of any agreement with a Third Party under which such rights
were acquired from such Third Party.


 


1.9                               “Field
of Research” means identification of peptides, proteins and/or Genetic
Material that modulate angiogenesis in endothelial tissues.


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


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1.10                        “FTE”
means a full-time employee or consultant of Rigel or the equivalent thereof.


 


1.11                        “FTE Year”
means the amount of time one FTE would spend working during one (1) calendar
year.


 


1.12                        “Gene
Therapy” means a product or service for the treatment or prevention of a
disease that utilizes ex vivo or in vivo delivery (via viral or nonviral gene transfer
methods or systems) of Genetic Material, including any cell incorporating
Genetic Material.


 


1.13                        “Genetic
Material” means a nucleotide sequence, including DNA, RNA and complementary
and reverse complementary nucleotide sequences thereto, whether coding or
noncoding and whether intact or a fragment.


 


1.14                        “Information”
means any and all information, including without limitation techniques,
inventions, practices, methods, knowledge, know-how, skill, experience, test
data, analytical and quality control data, compositions and assays, and any
business, marketing, personnel or financial information or matters.


 


1.15                        “Novartis
Angiogenesis Collaboration” means Rigel’s Collaboration Agreement with
Novartis dated May 29, 1999, as amended, but solely to the extent covering
a program of research directed to the field of target identification and validation
as they relate to the role of endothelial cell differentiation in angiogenesis,
together with such research program and results obtained therein, but
specifically excluding Novartis’s research and research results using Targets
identified by Rigel (or jointly by Rigel and Novartis) pursuant to such
research program.


 


1.16                        “Patent” means
an issued, valid, unexpired patent, including any extension, registration,
confirmation, reissue, re-examination or renewal thereof, or a pending
application for a patent, in any country, region or jurisdiction.


 


1.17                        “Program
Know-How” shall mean any Information developed in the Research relating to
the development of Therapeutic Candidates, excluding Information relating to
Targets that are not Therapeutic Candidates.


 


1.18                        “Program
Patent” shall mean a Patent claiming inventions or discoveries in the
Program Know-How.


 


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


 


1.20                        “Research”
shall have the meaning provided in Section 3.1(a).  For purposes of this Agreement, Rigel’s
activities in the Field of Research under the Novartis Angiogenesis
Collaboration shall be included within “Research.”


 


1.21                        “Research
Plan” shall have the meaning provided in Section 3.1(a).


 










[ * ] = CERTAIN CONFIDENTIAL INFORMATION
CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


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1.22                        “Rigel
Biological Materials” means the [ * ] cell
lines, associated vectors and vector libraries set forth in Appendix C.


 


1.23                        “Rigel
Collaboration Partners” means those third parties which enter into a
research or development agreement with Rigel under which Rigel conducts
substantial research or development activities in collaboration with such third
party and grants a license to such third party under patents and/or know-how
owned or controlled by Rigel in addition to a sublicense under CG Patents
and/or CG Know-How, which licenses and sublicense are for the further
development and commercialization of the results of such collaborative research
or development.


 


1.24                        “Rigel
Field” means the creation and use of virally produced peptide and protein
libraries for the screening of transdominant effector peptides and RNA
molecules as claimed in the patent applications set forth on Appendix D as well
as any processes, techniques and applications disclosed in the foregoing patent
applications; it is understood that the foregoing technology is to be used for (a) the
discovery, validation and development of targets for human or animal
therapeutics, including without limitation Targets, and (b) the discovery,
testing, development and commercialization of therapeutic, diagnostic and drug
delivery products other than Therapeutic Candidates.  For the purposes of this Section 1.23, “disclosed
in” shall mean disclosed in the specifications of such patent applications as
necessary to practice the invention claimed and not solely as part of the
description of the prior art.


 


1.25                        “Rigel
Know-How” means all Information Controlled by Rigel as of the Effective
Date necessary or useful for the use or modification of the Rigel Biological
Materials.


 


1.26                        “Rigel
License” means the license agreements between Rigel and Stanford University
as in effect as of the Effective Date and attached hereto as Appendix E.


 


1.27                        “RMC” shall
have the meaning provided in Section 3.2.


 


1.28                        “Screened
Genetic Material” shall mean Genetic Material identified via screening
against a Target, but which Genetic Material is not a Therapeutic Candidate.


 


1.29                        “Success
Criteria” shall have the meaning provided in Section 3.1(b).


 


1.30                        “Tail End
Period” shall mean the period of six (6) months after the end of the
Research Period, the purpose of which is to permit the RMC to identify
Therapeutic Candidates; provided, however, that if this Agreement is terminated
prior to or during the Tail End Period, the Tail End Period shall be deemed to
end upon such termination date.


 


1.31                        “Target” shall
mean a molecule occurring naturally in the body that is shown in the Research
(whether pursuant to this Agreement or the Novartis Angiogenesis
Collaboration), to directly or indirectly cause or impede angiogenesis in
endothelial tissue, to the extent such molecule (or its binding to another
molecule) is agonized or antagonized by a Therapeutic Candidate.  It is understood that a particular protein,
peptide or Genetic Material could be both a Therapeutic Candidate and a Target,
and in such case such molecule shall be treated as a “Target” hereunder to the
extent that such molecule is used as a drug discovery target, and shall


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


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at the same time be
treated as a “Therapeutic Candidate” hereunder to the extent such molecule is
used as a drug or therapy.  The rights of
the Parties with respect to Targets that are also Therapeutic Candidates are as
set forth in Section 2.4.


 


1.32                        “Therapeutic
Candidate” shall mean a peptide, protein or Genetic Material discovered,
identified, produced or tested during the Research Period pursuant to the
Research (whether pursuant to this Agreement or pursuant to the Novartis
Angiogenesis Collaboration), or identified during the Tail End Period, by  either Party, which meets the Success
Criteria, and any homologues or derivatives thereof.  For such purposes, it is understood that if a
protein or peptide meets the Success Criteria, Genetic Material that codes for
such protein or peptide (or homologues or derivatives of such Genetic Material)
shall be within the definition of Therapeutic Candidate (and vice-versa). The
rights of the Parties with respect to Therapeutic Candidates that are also
Targets are as set forth in Section 2.4.


 


1.33                        “[ * ]
Patents” means the patents listed in Appendix F.


 


ARTICLE 2



LICENSES


 


2.1                               CG
License Grants.


 


(a)                                  Subject
to the terms of the CG License, CG hereby grants to Rigel a royalty-free,
non-exclusive, worldwide license, with the right to sublicense to Rigel
Collaboration Partners, under and to CG’s right, title and interest in the CG
Patents and CG Know-How, and under and to CG’s right, title and interest in any
Program Technology owned solely by CG, all for purposes solely within the Rigel
Field; and hereby waives any claims against Rigel for the practice and use of
the CG Patents and CG Know-How within the Rigel Field prior to the Effective
Date.  Any sublicense granted hereunder
to Rigel Collaboration Partners shall be limited to the purposes of such
collaboration (as such purposes are described in Section 1.22 above).


 


(b)                                  Subject
to Section 2.4 below, CG hereby grants to Rigel:


 


(i)                                    a
royalty-free, exclusive, worldwide license, with the right to grant and
authorize sublicenses, under CG’s right, title and interest in the Program
Technology that is owned jointly by the Parties under Section 4.1(d) below,
and Targets that are similarly owned jointly with Rigel, all to make and use
the Targets for purposes outside the CG Program Field; and


 


(ii)                                a
royalty-free, exclusive, worldwide license, under CG’s right, title and
interest in the Program Technology that is owned jointly by the Parties under Section 4.1(d) below,
and Targets that are similarly owned jointly with Rigel, all to make and use
the Targets as targets for the purposes of elucidating protein pathways  and identifying, researching, developing
and/or commercializing proteins, peptides, antibodies, Screened Genetic
Material, other biological agents and synthetic organic molecules that are not
themselves Therapeutic Candidates but that modulate angiogenesis in endothelial
tissues solely in connection with the Novartis


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


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Angiogenesis
Collaboration.  Such license does not
extend to the making or use of Targets for the purposes of development and/or
commercialization of Therapeutic Candidates in the CG Program Field.


 


It is understood and
agreed that the licenses granted above in this Section 2.1(b) shall
specifically exclude the right to make or use any Target or Therapeutic Candidate
as a therapeutic agent or for purposes relating to delivery of a Target or
Therapeutic Candidate via Gene Therapy. 
The license set forth in Section 2.1(b)(ii) above shall
include the right to grant a sublicense solely to Novartis under the Novartis
Angiogenesis Collaboration and to authorize further sublicenses by Novartis
solely in connection with Novartis’s research and development programs; provided that any sublicense from Rigel to Novartis under
the rights licensed to Rigel pursuant to Section 2.1(b)(ii) (and any
further sublicense by Novartis under such rights) shall not exceed the scope of
the license granted Rigel pursuant to Section 2.1(b)(ii).  Rigel shall retain the right to grant to CG
the licenses set forth in Section 2.2 of this Agreement.  If Rigel fails to retain such right under the
Novartis Angiogenesis Collaboration, the license granted Rigel under Section 2.1(b)(ii) shall
terminate.


 


(c)                                  CG
has entered into a license agreement with the [ * ]
concerning the [ * ] Patents which includes the
right to sublicense (the “[ * ] Agreement”);
as of the Effective Date, however, the terms under which CG may grant
sublicenses under the [ * ] Agreement
make impractical a sublicense to Rigel under the [ * ]
Patents for purposes of the Rigel Field. 
In the event that CG successfully renegotiates the terms of the [ * ] Agreement such that such sublicense would be
practical, CG agrees to discuss in good faith the grant of a sublicense to
Rigel under the [ * ] Patents.  The Parties understand and agree, however,
that CG is not and shall not be obligated to enter into any agreement with
Rigel concerning the [ * ] Patents,
that failure to reach such an agreement for any reason shall not be deemed a
breach of this Agreement and that this Section 2.1(c) shall not be
deemed to preclude CG from entering into an agreement with a third party of any
type or at any time concerning the [ * ] Patents.


 


2.2                               Rigel
License Grants.


 


(a)                                  Subject
to the terms and prior to the termination or expiration of the Rigel License,
the Parties agree that Rigel shall grant to CG, at CG’s sole option and upon CG’s
request, a royalty-free, non-exclusive, worldwide license, without the right to
sublicense, under Rigel’s right, title and interest in the Rigel Know-How and
Rigel Biological Materials, to make, have made, use, sell, offer for sale and
import products in the CG [ * ]
Field.  It is understood that in no event
will CG have any obligation to obtain such license from Rigel.  Rigel will give CG thirty (30) days prior
written notice of the termination of the Rigel License by Rigel.


 


(b)                                  Rigel
hereby grants to CG:


 


(i)                                    subject
to Section 2.1(b) above, (y) a royalty-free, exclusive, worldwide
license, with the right to grant and authorize sublicenses, under Rigel’s
right, title and interest in the Program Technology (including without
limitation the Therapeutic Candidates) owned solely by Rigel or jointly with
CG, to make, have made, use, sell, offer for sale and import products, and
otherwise exploit the Program Technology, in each case for purposes solely
within


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


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the CG Program Field, and
(z) a royalty-free, exclusive, worldwide license, with the right to grant and
authorize sublicenses, under any Information and intellectual property created
by Rigel (solely or jointly with Novartis) under the Novartis Angiogenesis
Collaboration, to make, have made, use, sell, offer for sale and import
Therapeutic Candidates within the CG Program Field; and


 


(ii)                                subject
to rights previously granted to third parties, a royalty-free, non-exclusive,
worldwide license, with the right to grant sublicenses, under Rigel’s right,
title and interest in and to all Patents with priority dates prior to the
Effective Date that claim Therapeutic Candidates, or the manufacture or use
thereof, to make, have made, use and sell products in Gene Therapy
incorporating such Therapeutic Candidates.


 


(c)                                  In
addition, Rigel hereby grants to CG (i) a royalty-free, non-exclusive
license, with the right to sublicense to CG Collaboration Partners, under Rigel’s
right, title and interest in the Targets to make and use the Targets solely for
the research and development of the Therapeutic Candidates in the Field of
Research, and (ii) a royalty-free, non-exclusive license, with the right
to sublicense to CG Collaboration Partners, under any Information and
intellectual property created by Rigel (solely or jointly with Novartis) under
the Novartis Angiogenesis Collaboration, to make and use the Targets solely for
the research and development of the Therapeutic Candidates in the Field of
Research.  For clarity, it is understood
and agreed that the licenses granted to CG under this Section 2.2
specifically exclude the performance by CG of research on or with a Target
which is outside the Field of Research. Any sublicense granted hereunder to CG
Collaboration Partners shall be limited to the purposes of such collaboration.


 


2.3                               Rigel
Covenant.  Rigel hereby covenants
that neither Rigel nor its Affiliates will make any claims against CG, its
permitted sublicensees, distributors and customers in the chain of title with
CG or its permitted sublicensees for Patent infringement as a result of
activities which are explicitly permitted under the terms of this Agreement,
nor shall Rigel or its Affiliates authorize a third party to make such a claim,
and Rigel agrees to cooperate with CG in the defense against any such claim by
licensees of Rigel.


 


2.4                               Molecules
That Are Both Targets and Therapeutic Candidates.  With respect to each particular protein,
peptide or Genetic Material that is both a Target and a Therapeutic Candidate
(each a “Dual Molecule”), the parties agree that (i):  CG shall have (y) the exclusive right to
research, develop, make, have made, use, sell, offer for sale and import such
Dual Molecule (including homologues and derivatives of such Genetic Material)
as a therapeutic agent or such Dual Molecule (including homologues and
derivatives of such Genetic Material) for Gene Therapy, and (z) to make and use
such Dual Molecule in accordance with Sections 2.2(b) and (c); and (ii) Rigel
shall have the exclusive right to research, develop, make, have made and use
such Dual Molecule for the purposes set forth in Section 2.1(b)(i); and (iii) Rigel
shall have the exclusive right to research, develop, make, have made and use
such Dual Molecule for the purposes set forth in Section 2.1(b)(ii).  For the sake of clarity, CG’s exclusive
rights as described in this Section 2.4 shall not be construed to exclude
Rigel or its permitted licensees from making and using such molecule as a
target in research to elucidate protein pathways in which such Dual Molecule is
involved, or to discover, generate, develop and commercialize proteins,
peptides, antibodies, Screened Genetic Material, other biological agents and
synthetic


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


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organic molecules that
may or may not modulate the activity of such Target or pathways but are not
themselves Therapeutic Candidates.  All
activities of Rigel with respect to the use of Targets shall remain subject to
the provisions of Section 3.5.


 


2.5                               No
Other License.  No right or license
is granted by either Party to the other under any other intellectual property
other than those items expressly included in the licenses granted in this Article 2.
Accordingly, no license shall be deemed granted by implication, estoppel or
otherwise, if such license is not expressly and specifically granted in this Article 2.


 


ARTICLE 3



RESEARCH


 


3.1                               Research.


 


(a)                                  Rigel
agrees to (i) use diligent efforts to conduct research within the Field of
Research (the “Research”), in accordance with the research plan (the “Research
Plan”) incorporated hereby in, and appended to, this Agreement as Appendix G,
as amended from time to time by written agreement of the Parties; and (ii) use
diligent efforts to meet the goals of the Research Plan according to the
timetables set forth therein.  Without
limiting the foregoing, the Research shall commence on the Effective Date and
terminate upon the earlier of three (3) years after the Effective Date or
the termination of the Agreement (the “Research Period”).  Rigel will commit [ * ]
during each year of the Research Period, or such other allocation as the RMC
may decide, provided that in the event the RMC decides to reallocate FTEs
between years, Rigel shall have no obligation to commit more than [ * ] in total over the entire Research Period.  It is understood and agreed that the scope of
CG’s licenses under Section 2.2 shall not be limited by (x) the number of
FTEs performing the Research, (y) whether such FTEs are performing research in
accordance with the Research Plan or under the Novartis Angiogenesis
Collaboration, or (z) whether such FTEs are funded by Rigel, Novartis, or some
other entity.  The individual FTEs who
will initially conduct the Research are listed in Appendix H and may be
replaced by Rigel, as reasonably agreed by the Parties, with other FTEs of
comparable skill and expertise.  Rigel
agrees to test against the Success Criteria during the Research Period any
proteins, peptides and Genetic Material produced or evaluated in connection
with the Research as contemplated in the Research Plan.


 


(b)                                  The
Parties shall reasonably establish criteria for determining whether a
particular peptide, protein or Genetic Material modulates angiogenesis in
endothelial tissue in assays performed at Rigel, as such criteria are
contemplated in the Research Plan (the “Success Criteria”).


 


3.2                               Research
Management Committee.  The Parties
shall form a research management committee (the “RMC”) comprised of four (4) individuals,
two (2) being Rigel employees appointed and replaced by Rigel at its
discretion, and two (2) being CG employees appointed and replaced by CG at
its discretion.  The size and composition
of the RMC may be modified by mutual agreement of the Parties.  The RMC shall evaluate the results of the
Research set forth in the research reports pursuant to Section 3.4(a) to
assess whether a peptide,


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


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protein or Genetic
Material is a Therapeutic Candidate, and perform such other duties as
specifically delegated to the RMC by mutual written agreement of the Parties.


 


3.3                               RMC
Meetings and Actions.  RMC meetings
shall take place at such times and places as shall be determined by the RMC in
order for the RMC to fulfill its obligations under Section 3.2.  It is expected that the meetings will
alternate between appropriate offices of each Party, or at such other
convenient locations as agreed.  If
agreed by its members, the RMC may conduct meetings by telephone or video
conference or other acceptable electronic means, provided that any decisions
made during such meeting are recorded in writing and confirmed by signature of
at least one (1) of the RMC members from each of the Parties.  All decisions of or actions taken by the RMC
shall be by unanimous approval of all the members of the RMC, and voting on any
matters shall be reflected in the minutes of the meeting at which the vote was
taken. If the RMC is unable to reach unanimous decision on any particular
matter or issue, such matter or issue shall be referred to the chief executive
officer of each Party or their designees for resolution.  It is understood that, for purposes of
determining the Parties’ rights and obligations under this Agreement, the
authority of the RMC shall be limited to deciding those specific issues
specifically delegated to the RMC in other Articles of this Agreement (i.e.,
other than the general matters described in this Article 3).


 


3.4                               Reports;
Disclosure.


 


(a)                                  Rigel
shall keep CG fully informed of the progress and results of the Research
(including the discovery of Targets and/or Therapeutic Candidates under the
Novartis Angiogenesis Collaboration) and shall provide written reports at or
before each RMC meeting describing its activities, the level of effort applied
to, and the results of, the Research, specifically including Rigel’s
determination as to which peptides, proteins or Genetic Material as of the date
of such report meet the Success Criteria. 
Such RMC reports shall be in such form and contain such detail as the
RMC shall determine.  Rigel agrees to
fully disclose to CG the Program Technology and the Targets, and to provide CG
with reasonable quantities of Targets and Therapeutic Candidates generated or
utilized in connection with the Research.


 


(b)                                  Rigel
agrees to maintain records of its activities in performing the Research, in
good scientific manner, and to permit CG to have access to such records upon
ten (10) days written notice to Rigel and during regular business hours,
to the extent reasonably necessary to verify that Rigel has met its obligations
under this Section 3.4.


 


3.5                               Exclusivity
of Efforts.  Except as explicitly set
forth in this Section 3.5, Rigel agrees that neither Rigel nor any of its
Affiliates shall directly or indirectly conduct or sponsor any research,
develop or otherwise commercialize any products or technologies within the
Field of Research, other than pursuant to the Research Plan, during the
Research Period and for a period of one (1) year following the Research
Period.  Without limiting the foregoing,
Rigel shall not appoint or license any third party to develop, market, sell or
otherwise distribute such products until after the expiration of one (1) year
following the Research Period. 
Notwithstanding the foregoing in this Section 3.5 and subject to Section 2.1(b), Rigel shall be
entitled to enter into the Novartis Angiogenesis Collaboration.


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


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ARTICLE 4



INTELLECTUAL PROPERTY MATTERS


 


4.1                               Ownership
and Prosecution.  Subject to the
terms of this Agreement, as between the Parties hereto:


 


(a)                                  It
is understood that CG retains its entire right, title and interest in the CG
Patents and CG Know-How, subject only to the rights expressly granted to Rigel
hereunder, and shall have the right, but not the obligation, to file, prosecute
and maintain any Patents related thereto at its expense.


 


(b)                                  It
is understood that Rigel retains its entire right, title and interest in the
Rigel Biological Materials and Rigel Know-How, subject only to the rights
expressly granted to CG hereunder, and shall have the right, but not the
obligation, to file, prosecute and maintain any Patents related thereto at its
expense.


 


(c)                                  It
is understood that, subject only to the rights expressly granted to the other
Party hereunder, each Party retains its entire right, title and interest in and
to any inventions, discoveries, know-how, trade secrets, and other information
made or developed solely by such Party and/or its consultants in the course of
the performance of this Agreement (“Sole Inventions”), and, subject to subsection (e) below,
shall have the right, but not the obligation, to file, prosecute and maintain
any Patents claiming its Sole Inventions (“Sole Patents”) in all countries of
the world.


 


(d)                                  Both
Parties shall jointly own any inventions, discoveries, know-how, trade secrets,
and other information, that are made jointly by the Parties in the course of
the performance of this Agreement (“Joint Inventions”).  Subject to subsection (e) below,
the RMC shall designate the Party which shall be responsible for filing,
prosecuting and maintaining Patents claiming Joint Inventions (“Joint Patents”).  All costs and expenses of filing, prosecuting
and maintaining such Joint Patents will be borne equally by the Parties.  The Party designated by the RMC to perform
patenting activities shall seek the comments of the other Party and shall keep
the other informed of the progress of such prosecution by providing quarterly
status reports and copies of all correspondence between their patent counsel
and the patent offices of the countries where such applications were
filed.  Such other Party shall reasonably
assist the Party designated by the RMC in the prosecution of Joint Patents,
including, without limitation, by executing any necessary powers of
attorney.  Subject to the rights and
licenses granted to the other Party in Section 2.1(b) and 2.2(b), it
is understood that neither Party shall have any obligation to account to the
other, or obtain the consent of the owner, with respect to the
commercialization, licensing or enforcement of any Joint Inventions or Joint
Patents, and hereby waives any right it may have under the laws of any country
to require such accounting or consent.


 


(e)                                  CG
shall have the right but not the obligation (either itself or through its
designee) to file, prosecute and maintain Patents claiming Therapeutic
Candidates (“Candidate Patents”); provided, however, that for any molecule that
is a Therapeutic Candidate and a Target: (i) CG shall have the right but
not the obligation (either itself or through its designee) to file,


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


10





















 


prosecute and maintain
Patents claiming uses of such molecule in the CG Program Field and such Patents
also shall be Candidate Patents; and (ii) Rigel shall have the right, but
not the obligation, to file, prosecute and maintain any Patents claiming the
composition of matter of such molecule or claiming any use of the molecule
outside the CG Program Field or in the Rigel Field.  All costs and expenses of filing, prosecuting
and maintaining Candidate Patents will be borne by the Party that undertakes
such prosecution.  The Party undertaking
such prosecution shall seek the comments of the other Party and shall keep the
other Party informed of the progress of such prosecution by providing quarterly
status reports and copies of all correspondence between their patent counsel
and the patent offices of the countries where such applications were
filed.  Each Party shall reasonably
assist the other Party in the prosecution of Candidate Patents, including,
without limitation, by executing any necessary powers of attorney and other
documents necessary for such prosecution.


 


(f)                                    Each
Party agrees to keep the other Party fully informed as to prosecution and
maintenance (including without limitation any interference, opposition or other
prosecution or other proceedings) with respect to patents claiming and
disclosing subject matter within the Program Technology.  In the event that a Party elects not to prosecute
or maintain any patent rights in a Sole Invention comprising Program
Technology, it shall promptly notify the other Party and authorize the other
Party to seek or continue such prosecution and maintenance at such other Party’s
expense.  In such case the owner of such
Sole Invention shall cooperate fully with the other Party to facilitate such
prosecution and maintenance.


 


4.2                               Infringement
and Similar Actions.  As between the
Parties hereto:


 


(a)                                  CG
shall have the sole and exclusive right, at its expense, to prosecute any and
all infringement or wrongful use of the CG Patents and CG Know-How, and
(subject to paragraph (c) below) Sole Patents owned by CG and/or to enter
settlements, judgments or other arrangements respecting such infringement or
wrongful use.  CG may retain all damages
and other amounts recovered as a result of any such action, settlement,
judgment or other arrangement.


 


(b)                                  Rigel
shall have the sole and exclusive right, at its expense, to prosecute any and
all infringement or wrongful use of the Rigel Know-How, the Rigel Biological
Materials, and (subject to paragraph (c) below) Sole Patents owned by
Rigel and/or to enter settlements, judgments or other arrangements respecting
such infringement or wrongful use.  Rigel
may retain all damages and other amounts recovered as a result of any such
action, settlement, judgment or other arrangement.


 


(c)                                  With
respect to infringement of any Program Patents in the CG Program Field, CG
shall have the right, but not the obligation, (directly or through designees)
to institute, prosecute and control at its own expense and for its own benefit,
any action or proceeding with respect to such infringement.  With respect to other infringement of any
Program Patents (i.e., outside the CG Program Field), Rigel shall have the
right, but not the obligation, (directly or through designees) to institute,
prosecute and control, at its own expense and for its own benefit, any action
or proceeding with respect to such infringement.  If a Party with the right to do so fails to
bring an action or proceeding against a suspected infringer within a reasonable
period after


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


11





















 


receiving a written
request by the other Party to do so, such other Party shall have the right to
bring and control an action against such infringer by counsel of its own choice
and retain for its own account any amounts recovered from third parties.  If one Party brings any such action or
proceeding, the other Party agrees to be joined as a Party plaintiff if necessary
to prosecute the action and to give the first Party reasonable assistance and
authority to file and prosecute the suit.


 


(d)                                  Each
Party shall promptly notify the other in writing of any alleged or threatened
infringement of Joint Patents of which it becomes aware and which may adversely
impact the rights of the Parties hereunder. 
Promptly upon such notification, the Parties shall meet to discuss the
strategy and appropriate steps to be taken to deal with such infringement. Any
recovery obtained by settlement or otherwise shall be disbursed as follows:
first, any reasonable expenses incurred in connection with such action
(including counsel fees) by both Parties are reimbursed; thereafter, the net
recovery shall be shared between the Parties according to the ratio of their
respective contributions to the litigation costs.  This paragraph shall not be deemed to limit
the Parties’ respective rights to enforce Joint Patents, or to limit the rights
granted under paragraph (c) above.


 


4.3                               Third
Party Claims.


 


(a)                                  Except
to the extent expressly warranted in Article 7, and subject to the
indemnification obligation in Article 5, CG shall have no liability to
Rigel with respect to any claim, suit or action alleging that the practice of
the license rights granted by CG under Section 2.1 infringes any
intellectual property or other right of a third party. Except to the extent
expressly warranted in Article 7, and subject to the indemnification
obligation in Article 5, Rigel shall have no liability to CG or its
Affiliates with respect to any claim, suit or action alleging that the practice
of the license rights granted under Section 2.2 infringes any intellectual
property or other rights of a third party.


 


(b)                                  Rigel
hereby agrees to provide reasonable assistance to CG, at its request, in
defending any action or claim initiated by a third party against CG arising
from any claim that the use or practice of the Rigel Know-How, Rigel Biological
Materials or the Target by CG or its Affiliates infringes that third party’s
proprietary rights.  CG hereby agrees to
provide Rigel reasonable assistance, at its request and expense, in defending
any action or claim initiated by a third party against Rigel or its Affiliates
arising from any claim that the use or practice of the CG Patents or CG
Know-How by Rigel or its Affiliates infringes that third party’s proprietary
rights.


 


(c)                                  If
a third party asserts against CG that a patent, trademark or other intangible
right owned by it is infringed by any product in the CG Program Field derived
or resulting from or incorporating Program Technology, CG will be solely
responsible for defending against any such assertions at its cost and
expense.  Each Party will give prompt
written notice to the other of any such claim. 
Rigel will assist in the defense of any such claim as reasonably
requested by CG, at CG’s expense, and may retain separate counsel at its own
expense at any time.


 


(d)                                  Neither
Party shall enter into any settlement of any claim which would admit the
invalidity of Patents within the Program Technology without the other Party’s
prior written consent, which consent shall not be unreasonably withheld or
delayed.


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


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4.4                               Pass-Through
Royalties.  In consideration for the
licenses granted herein:


 


(a)                                  Rigel
agrees to pay any amounts which CG is required to pay to Rockefeller University
under the CG License as a result of CG’s grant to Rigel of license rights to CG
Patents or CG Know-How to Rigel or the exercise of the license rights granted
by CG under the CG License.


 


(b)                                  Rigel
agrees to pay CG (i) [ * ] for the
license granted to Rigel hereunder to the CG Patents related to the [ * ] cell lines, and (ii) [ * ]
for each sublicense granted by Rigel under this Agreement.


 


(c)                                  CG
agrees that in the event CG exercises its option to obtain a license pursuant
to Section 2.2(a) above, CG will pay any amounts which Rigel is
required to pay to Stanford University under the Rigel License as a result of
Rigel’s grant to CG of license rights to Rigel Biological Materials or Rigel
Know-How to CG or the exercise of the license rights granted by Rigel under the
Rigel License.  It is understood that
unless and until CG obtains such license rights from Rigel, CG shall not be
obligated to pay to Rigel or to Stanford University any amounts that Rigel is
required to pay to Stanford University under the Rigel License.


 


ARTICLE 5



INDEMNIFICATION


 


5.1                               CG
Indemnity.  CG agrees to indemnify,
hold harmless and defend Rigel, its Affiliates, agents and employees from and
against any and all liabilities, losses, damages, costs, fees and expenses,
including reasonable legal expenses and attorneys’ fees (collectively, “Losses”)
arising out of suits, claims, actions, or demands,  brought or made by a third party (“Third
Party Claim”) against Rigel, its Affiliates, agents and employees, based on (i) CG’s
use and practice of the Rigel Know-How, Rigel Biological Materials, the Program
Technology or the Targets, or (ii) breach of CG’s warranties under Article 7
below, or (iii) the manufacture, use, handling, storage, sale or other
disposition of Rigel Biological Materials, Program Technology, the Targets or
any products resulting or derived from the Rigel Biological Materials or the
Program Technology by CG, its Affiliates, agents, employees or sublicensees,
all except to the extent such Losses or Third Party Claims result from the
negligence or willful misconduct of Rigel or a breach of Rigel’s warranties
under Article 7 below.


 


5.2                               Rigel
Indemnity.  Rigel agrees to
indemnify, hold harmless and defend CG, its Affiliates, agents and employees
from and against any and all Losses arising out of any Third Party Claims
against CG, its Affiliates, agents and employees based on (i) Rigel’s use
or practice of the CG Patents the CG Know-How or the Program Technology, (ii) breach
of Rigel’s warranties under Article 7 below, or (iii) the
manufacture, use, handling, storage, sale or other disposition of Program
Technology, the Targets or any products resulting or derived from the Program
Technology by Rigel, its Affiliates, agents, employees or sublicensees, all
except to the extent such Losses or Third Party Claims result from the
negligence or willful misconduct of CG, or a breach of CG’s warranties under Article 7
below.


 










[ * ] = CERTAIN CONFIDENTIAL INFORMATION
CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


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5.3                               In
the event that a Party is seeking indemnification under this Article 5, it
shall inform the other Party of a claim or suit as soon as reasonably
practicable after it receives notice of the claim or suit, shall permit the
indemnifying Party to assume direction and control of the defense of the claim
or suit (including the right to settle the claim or suit solely for monetary
consideration), and shall cooperate as reasonably requested (at the expense of
the indemnifying Party) in the defense of the claim or suit.  Neither Party will enter into any settlement
or claim pursuant to this Section 5.3 which is materially adverse to the
rights of the other Party herein, without the other Party’s prior written
consent, which will not be unreasonably withheld or delayed.


 


ARTICLE 6



CONFIDENTIALITY


 


6.1                               Confidentiality.  Except to the extent expressly authorized by
this Agreement or otherwise agreed in writing, the Parties agree that, for the
term of this Agreement and for five (5) years thereafter, the Party
receiving any Information or materials furnished to it by the other Party
pursuant to this Agreement (collectively, “Confidential Information”) shall
keep confidential and shall not publish or otherwise disclose or use such
Confidential Information for any purpose other than as provided for in this
Agreement.


 


6.2                               Exceptions.  The obligations in Section 6.1 shall not
apply to any Information or materials to the extent that the receiving Party
can establish by competent proof that such Information or materials:


 


(a)                                  was
already known to the receiving Party, other than under an obligation of
confidentiality, at the time of disclosure by the other Party;


 


(b)                                  was
generally available to the public or otherwise part of the public domain at the
time of its disclosure to the receiving Party;


 


(c)                                  became
generally available to the public or otherwise part of the public domain after
its disclosure and other than through any act or omission of the receiving
Party in breach of this Agreement; or


 


(d)                                  was
disclosed to the receiving Party, other than under an obligation of
confidentiality, by a Third Party who had no obligation to the disclosing Party
not to disclose such information to others.


 


6.3                               Authorized
Disclosure.  Each Party may disclose
the other’s Confidential Information to the extent such disclosure is
reasonably necessary (i) to exercise the rights granted to such Party
hereunder (including the right to grant sublicenses as permitted by this
Agreement provided that prior to any disclosure to a sublicensee, such
sublicensee has executed a confidentiality agreement with terms corresponding
to this Article 6); and (ii) to file or prosecute patent
applications, to prosecute or defend litigation, to comply with applicable
governmental regulations or to conduct preclinical or clinical trials; provided
that if a Party is required by law or regulation to make any such disclosure of
the other Party’s Confidential Information it will,


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


14





















 


except where
impracticable for necessary disclosures, for example in the event of medical
emergency, give reasonable advance notice to the other Party of such disclosure
requirement and, except to the extent inappropriate in the case of patent
applications, will use its best efforts to secure confidential treatment of
such Confidential Information required to be disclosed.


 


6.4                               Survival.  This Article 6 shall survive the
termination or expiration of this Agreement for a period of five (5) years.


 


ARTICLE 7



WARRANTY MATTERS


 


7.1                               Limited
Warranties.  CG hereby represents and
warrants to Rigel that CG has the full right and power to grant the licenses
granted to Rigel under Section 2.1(a). 
Rigel hereby represents and warrants to CG that Rigel has the full right
and power to grant the licenses granted to CG under Section 2.2.


 


7.2                               General
Warranties.  Each of the Parties
hereby represents and warrants to the other that (i) it is a corporation
duly organized and validly existing in good standing under the laws of its
state of incorporation, (ii) it is duly qualified and authorized to enter
into and perform its obligations under this Agreement, (iii) it has full
power, authority and legal right to enter into and perform this Agreement, and (iv) the
execution, delivery, and performance of this Agreement has been duly authorized
by all necessary corporate action on the part of each Party and does not
contravene any law binding on it, its Articles of Incorporation or Bylaws, any
indenture, mortgage, contract or other agreement to which it is a Party or by which
it is bound or any laws, governmental rule, regulation or order.


 


7.3                               Intellectual
Property Warranties.


 


(a)                                  Each
of the Parties hereby represents and warrants to the other that (i) it
does not Control any Patents that would dominate the Patents licensed to the
other Party hereunder, (ii) it is not aware of any claims of a third party
which would call into question the rights of such Party in the licensed subject
matter or its right to grant the licenses granted to the other Party hereunder,
(iii) it has provided the other Party with all information concerning
royalty obligations pertinent to the licenses granted to the other Party
hereunder; and (iv) it will use commercially reasonable efforts to keep in
force any license agreement from which the license or sublicense granted to the
other Party under this Agreement is derived to the extent that such license
agreement does not provide for a survival of any sublicenses granted by such
Party.


 


(b)                                  Rigel
further warrants to CG that as of the Effective Date (i) to the best of
its knowledge, Rigel’s conduct of the Research, and the manufacture, sale and
use of Therapeutic Candidates will not infringe any third party intellectual
property rights, and without limiting the foregoing, Rigel warrants that Rigel’s
conduct of the Research will not infringe any of the patents listed in Appendix
I hereto; (ii) Rigel does not know of any third party other than Stanford
University having a claim in the Rigel Biological Materials; and (iii) Rigel
has the right to grant to CG a license under the Rigel Biological Materials and
the Rigel Know-How to make, use and sell products in the CG [ * ] Field.


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


15





















 


(c)                                  CG
further warrants to Rigel that CG has the right to grant to Rigel a license
under the CG Patents and CG Know-How to make, use and sell products within the
Rigel Field.


 


(d)                                  Rigel
warrants that it has not as of the Effective Date entered into an agreement
with any third party licensing or granting rights to Rigel technology in the
Field of Research.


 


7.4                               Limitation
on Warranties.  EXCEPT AS PROVIDED IN
SECTIONS 7.1, 7.2, AND 7.3 ABOVE, NEITHER PARTY MAKES ANY WARRANTIES TO THE
OTHER PARTY, WHETHER EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION ANY
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE AS TO ANY
PRODUCT OR PROCESS, OR AS TO THE VALIDITY OR SCOPE OF ANY PATENTS, OR THAT ANY
LICENSED BIOLOGICAL MATERIALS, PATENTS OR KNOW-HOW WILL BE FREE FROM
INFRINGEMENT OF PATENTS OF ANY THIRD PARTY, OR THAT NO THIRD PARTIES ARE
INFRINGING SAME.


 


ARTICLE 8



TERM AND TERMINATION


 


8.1                               Term
of Agreement.  Unless earlier
terminated as otherwise provided in this Article 8, this Agreement shall
remain in effect until the expiration of the last to expire of the CG Patents
or Program Patents.


 


8.2                               Termination
for Breach.  A Party may terminate
this Agreement prior to the expiration of the Agreement in the event that the
other Party is in breach of or default under a material term of the Agreement,
and the breaching Party does not cure such breach or default within thirty (30)
days of written notice thereof from the non-breaching Party.  Subject to Section 8.3 below, upon any
such termination, all the licenses granted by and between the Parties herein
shall terminate; provided that any sublicense granted by a Party hereunder to a
third party prior to such termination shall survive such termination, so long
as the sublicensee agrees to be bound by the applicable terms of this
Agreement.


 


8.3                               Survival.  Upon expiration or termination of this Agreement,
the rights and obligations under Articles 5 and 6 and Sections 7.4, 8.3, 9.2,
9.3, 9.7 and 9.10 shall continue.  In
addition, upon expiration or termination of this Agreement after the end of the
Research Period, the licenses granted under Article 2 above and the rights
and obligations under Article 4 shall survive.  Further, subject to Sections 2.1(b) and
2.2(b) if they survive the termination or expiration of this Agreement as
provided above, neither Party shall have any obligation to account to the
other, or obtain the consent of the owner, with respect to the
commercialization, licensing or enforcement of any Joint Patents, and hereby
waives any right it may have under the laws of any country to require such
accounting or consent.


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


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ARTICLE 9



MISCELLANEOUS


 


9.1                               Relationship
of the Parties.  This Agreement
creates only licensor-licensee and sublicensor-sublicensee relationships
between Rigel and CG.  No partnership or
other legal relationship is created hereunder. 
Neither Party is, or will be deemed to be, an agent or legal
representative of the other Party for any purpose.  Neither Party will be entitled to enter into
any contracts in the name of or on behalf of the other Party, and neither Party
will be entitled to pledge the credit of the other Party in any way or hold
itself out as having authority to do so.


 


9.2                               Assignment.  This Agreement may not be assigned by either
Party without the prior written consent of the other Party, which consent shall
not be unreasonably withheld; provided, however, that a Party may assign this
Agreement without such consent to any Affiliate or to a successor in interest
by way of merger, acquisition, sale or transfer of substantially all of its
business or assets pertaining to the subject matter of this Agreement.  The Agreement will be binding upon and inure
to the benefit of all permitted successors and assignees of the Parties
hereunder, and the name of each Party appearing herein will be deemed to
include the names of such Party’s successors and assignees.


 


9.3                               Use
of Names.  No Party hereto may use
the name of the other Party in public announcements without the prior consent
of the other Party as required by law or regulation.


 


9.4                               Amendment.  No amendment, modification or supplement of
any provision of the Agreement will be valid or effective unless made in
writing and signed by a duly authorized officer of each Party.


 


9.5                               Waiver.  No provision of the Agreement will be waived
by any act, omission or knowledge of a Party or its agents or employees except
by an instrument in writing expressly waiving such provision and signed by a
duly authorized officer of the waiving Party.


 


9.6                               Headings.  The headings for each article and section in
this Agreement have been inserted for the convenience of reference only and are
not intended to limit or expand on the meaning of the language contained in the
particular article or section.


 


9.7                               Notices.  Any notice or other communication required or
permitted to be given to either Party hereto shall be in writing unless
otherwise specified and shall be deemed to have been properly given and to be
effective on the date of delivery if delivered in person or by facsimile or
three (3) days after mailing by registered or certified mail, postage
paid, to the other Party at the following address:


 


If to Rigel:                                         Rigel, Inc.


240 East Grant
Avenue


South San
Francisco, CA  94080


Attn:  Secretary


Fax:  650.624.1101


 


Copy to:                                                  Cooley
Godward, LLP


Five Palo Alto
Square, 4th Floor


3000 El Camino
Real


Palo Alto, CA  94306


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


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Attn: Robert L.
Jones, Esq.


Fax: 650.849.7400


 


If to CG:    Cell Genesys, Inc.


342 Lakeside Drive


Foster City, CA
94404


Attn:  Chief Executive Officer


Fax:  650.358.0803


 


9.8                               Severability.  Whenever possible, each provision of the
Agreement will be interpreted in such manner as to be effective and valid under
applicable law, but if any provision of the Agreement is held to be prohibited
by or invalid under applicable law, such provision will be ineffective only to
the extent of such prohibition or invalidity, without invalidating the
remainder of the Agreement.


 


9.9                               Entire
Agreement of the Parties.  The
Agreement will constitute and contain the complete, final and exclusive
understanding and agreement of the Parties with respect to the subject matter
hereof and cancels and supersedes any and all prior negotiations,
correspondence, understandings and agreements, whether oral or written, between
the Parties respecting the subject matter. 
Each Party hereto was represented by counsel in drafting and negotiating
this Agreement, and all Parties are deemed to have contributed to the drafting
hereof.


 


9.10                        Governing
Law.  This Agreement shall be
governed by and construed in accordance with the laws of the State of
California excluding only laws and rules relating to “choice of law”.  All Parties to this Agreement hereby consent
to the jurisdiction of the courts of the State of California and the Federal
District Court for the Northern District of California for resolution of any
disputes that arise hereunder.


 


9.11                        Counterparts.  This Agreement may be executed in any number
of counterparts, each of which shall be an original, but all of which together
shall constitute one instrument.


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


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IN WITNESS WHEREOF, the Parties
hereto have amended and restated this Agreement as of March 26, 2001.


 


	
  CELL GENESYS, INC.

  	
   

  	
  RIGEL PHARMACEUTICALS, INC.

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
  By:

  	
       /s/ Robert Tidwell

  	
   

  	
  By:

  	
       /s/ Raul R. Rodriguez

  
	
  Name:

  	
            Robert
  Tidwell

  	
   

  	
  Name:

  	
            Raul
  R. Rodriguez

  
	
  Title:

  	
       VP Corporate Dev.

  	
   

  	
  Title:

  	
       VP Business Dev.

  
												



 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


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APPENDIX A

EXCLUSIVE LICENSE AGREEMENT


 


EXCLUSIVE LICENSE AGREEMENT made
as of January 31, 1996 (the “Effective Date”), by and between Cell Genesys, Inc.
(“Company”), a corporation organized and existing under the laws of the State
of Delaware, having an office at 322 Lakeside Drive, Foster City, California
94404, and THE ROCKEFELLER UNIVERSITY (“Rockefeller”),
a nonprofit education corporation organized and existing under the laws of the
State of New York, having an office at 1230 York Avenue, New York, New York
10021-6395.


 


WITNESSETH:


 


WHEREAS, Rockefeller is the
owner by assignment from Warren S. Pear, Martin L. Scott, Garry M. Nolan and
David Baltimore (“Inventors”) of the entire right, title and interest in United
States Patent Application Serial No. 08/023,909, filed February 22,
1993, entitled Production of High Titer Helper-Free Retroviruses by Transient
Transfection, and in the inventions described and claimed therein (“Licensed
Patent Rights”), and in the Biological Materials and related Know-How, as
defined below;


 


WHEREAS, Rockefeller and the
Company entered into a license agreement effective as of October 25, 1994
(the “Prior Agreement”), pursuant to which Rockefeller granted to the Company a
non-exclusive license to use the Licensed Patent Rights, Know-How and
Biological Materials for research and commercial purposes;


 


WHEREAS, the parties have agreed
to expand the scope of the license and rights granted to the Company and
therefore have agreed to terminate the Prior Agreement as of the Effective
Date, and enter into this Agreement;


 


WHEREAS, Rockefeller wishes to
offer and grant the Company an exclusive license with regard to the Licensed
Patent Rights, Know-How and the Biological Materials for research and
commercial purposes, and seeks to be compensated for the transfer and use of
such rights; and


 


WHEREAS, the Company wishes to
license from Rockefeller the Licensed Patent Rights, Biological Materials and
Know-How for commercial development and application as herein defined.


 


NOW, THEREFORE, in consideration
of the mutual benefits to be derived hereunder, the parties hereto agrees as
follows:


 


1.                                      DEFINITIONS.


 


The following terms will have the meanings assigned to
them below when used in this Agreement.


 


1.1                               “Affiliate” shall mean:


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


1





















 


(a)                                  any
entity owning or controlling, directly or indirectly, at least forty-nine percent
(49%) of the stock normally entitled to vote for election of directors of a
party; or


 


(b)                                  any
entity at least forty-nine percent (49%) of whose stock normally entitled to
vote for election of directors is owned or controlled, directly or indirectly,
by a party.


 


1.2                               “Biological Materials” shall mean (i) the ecotropic
producer cell line named [ * ] which
producer cell line was deposited with the American Type Culture Collection as
of [ * ] and has been assigned Accession No. [ * ], and any viruses produced thereby; (ii) {Not disclosed by Cell Genesys} Biological Materials shall
also include any direct progeny, mutant, or derivatives of the [ * ]  {Not disclosed by Cell
Genesys} cell lines and the viruses produced thereby.


 


1.3                               “Improvement Technology” means all patent and other
intellectual property rights, and materials relating to inventions, discoveries
or improvements to the Licensed Technology licensed to Rockefeller by any
academic institution, governmental and other not-for-profit entity to which
Rockefeller grants a non-exclusive research license with regard to the Licensed
Technology pursuant to Section 6.3 herein.


 


1.4                               “Know-How” shall mean information and data not generally
known which are owned and in the possession of or available to Rockefeller and
which it is free to divulge as of the Effective Date regarding the preparation
and use of Biological Materials, and pharmacological, biological and clinical
properties of Biological Materials. It is understood that Know-How shall not
include any information or data known by the Company prior to receipt of such
information or data from Rockefeller, as shown by reasonable evidence.


 


1.5                               “Licensed Patent Rights” shall mean:


 


(a)                                  the
patent application(s) concerning the subject matter of this Agreement which are
listed on Exhibit A attached hereto;


 


(b)                                  all
patent applications which are divisions, substitutions, continuations,
continuations-in-part, renewals, or additions of the patent applications
described in (a) hereof,


 


(c)                                  all
foreign counterparts of the applications listed in (a) and (b) hereof;
and


 


(d)                                  all
patents, including reissues, re-examinations and extensions, which may issue on
any of the preceding.


 


1.6                               “Licensed Products” shall mean any and all products the
manufacture, use or sale of which but for the license granted herein would
infringe a Valid Claim or are within the scope of a Pending Claim in the
country in which such products are made or sold.


 


1.7                               “Licensed Technology” shall mean the Licensed Patent
Rights, Biological Materials and Know-How.


 


1.8                               “Net Sales” shall mean [ * ],
where [ * ] shall mean the amount invoiced by
the Company or its sublicensees to customers for Licensed Products less: (i) all
trade, cash and


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


2





















 


quantity
credits, discounts, refunds or government rebates, (ii) amounts for
claims, allowances or credits for returns; retroactive price reductions;
chargebacks or the like; (iii) packaging, handling fees and prepaid
freight, sales taxes, duties and other governmental charges (including value
added tax), but excluding what is commonly known as income taxes; and (iv) provisions
for uncollectible accounts determined in accordance with reasonable accounting
practices, consistently applied to all products of the selling party. [ * ] shall not include sales by the Company to its
Affiliates for resale, provided that if the Company sells a Licensed Product to
an Affiliate for resale, [ * ] shall
include the amounts invoiced by such Affiliate to third parties on the resale
of such Licensed Product. Notwithstanding the foregoing.  [ * ] shall
include charges for the separation, transduction and/or expansion of cells
comprising Licensed Products, but notwithstanding any of the foregoing, shall
not include charges for apheresis, reinfusion, surgical procedures, hospital
stays or other charges not directly attributed to the Licensed Product or to
the ex vivo preparation of the Licensed Product.


 


1.9                               “Party” shall mean the Company or Rockefeller, and “Parties”
shall mean both the Company and Rockefeller.


 


1.10                        “Pending Claim” shall mean a claim of a pending patent
application within the Licensed Patent Rights.


 


1.11                        “Territory” shall mean the entire world.


 


1.12                        “Valid Claim” shall mean a claim of an issued and
unexpired patent included within the Licensed Patent Rights, which has not been
held unenforceable or invalid by a court or other governmental agency of
competent jurisdiction, and which has not been admitted to be invalid or
unenforceable through reissue, disclaimer or otherwise.


 


2.                                      LICENSED
RIGHTS


 


2.1                               Subject
to Section 2.2 below, Rockefeller grants to the Company and its Affiliates
the following licenses:


 


(a)                                  an
exclusive, worldwide, royalty-bearing license under the Licensed Technology,
with the right to grant and authorize sublicenses, to make, have made, import,
have imported, use, sell, offer for sale and otherwise exploit the Licensed
Products in any country of the Territory; and


 


(b)                                  a
non-exclusive, worldwide, royalty-free, irrevocable license under the
Improvement Technology, with the right to grant and authorize sublicenses, to
make, have made, import, have imported, use, sell, offer for sale and otherwise
commercialize products and services in any country of the Territory.


 


2.2                               The
licenses granted by Rockefeller in Section 2.1 (a) above are subject
to any limitations on Rockefeller’s rights arising under the provisions of the
following:


 


(a)                                  35
United States, Section 201 et seq., and regulations and rules promulgated
thereunder and any agreements implementing the provisions thereof, or


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


3





















 


(b)                                  other
applicable laws or regulations to which Rockefeller may be subject; or


 


(c)                                  Rockefeller’s
Institutional Patent Agreement with the United States Department of Health and
Human Services, dated June 15, 1973, as amended, which is its formal
agreement with the United States Government to implement the cited provisions
of the U.S. Code.


 


2.3                               Rockefeller
shall promptly notify the Company of any Improvement Technology of which it
acquires knowledge and provide the Company all available information relating
thereto.


 


2.4                               The
licenses herein granted shall continue for the lives of any issued patents
hereunder as the same or the effectiveness thereof may be extended by any
governmental authority, rule or regulation applicable thereto.


 


3.                                      TRANSFER
OF BIOLOGICAL MATERIALS AND KNOW-HOW


 


3.1                               The
parties acknowledge that pursuant to the Prior Agreement, Rockefeller
transferred to the Company a quantity of Biological Materials and such Know-How
to allow the Company to establish a viable cell culture of said Biological
Materials for the Company’s purposes. The Company is permitted to cultivate and
use said Biological Materials, subject to the terms and conditions of this
Agreement. On the Effective Date, Rockefeller shall notify the American Type
Culture Collection (“ATCC”) that the Company is authorized to receive samples
of the Biological Materials deposited with the ATCC and to deliver such
materials to the Company at the Company’s request, and that the Company has the
right to authorize third parties to receive one or more samples of the
Biological Materials, on such terms as the Company may indicate to the ATCC.


 


3.2                               Should
the Company exhaust the quantity of Biological Materials within six (6) months
of the date of execution hereof, so that a viable cell culture of said
Biological Materials no longer exists, Rockefeller shall authorize the ATCC to
provide the Company with a quantity of Biological Materials sufficient to
reestablish the Company’s viable colony thereof.


 


3.3                               Within
sixty (60) days of the Effective Date, Rockefeller shall deliver to the Company
tangible copies of all existing Know-How which it did not previously provide to
the Company pursuant to the Prior Agreement.


 


4.                                      PAYMENTS


 


4.1                               In
consideration of the rights and licenses granted hereunder, the Company shall
pay or cause to be paid to Rockefeller amounts as follows:


 


(a)                                  {Not disclosed by Cell Genesys}


 


(b)                                  {Not disclosed by Cell Genesys}


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


4





















 


(c)                                  {Not disclosed by Cell Genesys}


 


(d)                                  a
royalty of [ * ] of Net Sales of Licensed
Products sold by the Company within the scope of a Valid Claim within the
Licensed Patent Rights in the country they are made or sold.


 


Notwithstanding
the above, the royalty due Rockefeller on Net Sales of Licensed Products, the
manufacture, use or sale of which would not infringe a Valid Claim in the
country for which they are sold but which are within the scope of a Pending
Claim in such country, shall be fifty percent (50%) of the royalty due under Section 4.
l(d).


 


4.2                               In
the event that a Licensed Product is sold in combination as a single product
with another product whose sale and use are not covered by the Licensed Patent
Rights in the country for which the combination product is sold, Net Sales from
such sales, for purposes of calculating the amounts due under Section 4.1
above, shall be calculated by multiplying the Net Sales of that combination by
the fraction A/(A + B), where A is the gross selling price of the Licensed
Product, as the case may be, sold separately, and B is the gross selling price
of the other product sold separately. In the event that no such separate sales
are made by the Company, Net Sales for royalty determination shall be as
reasonably allocated by the Company between such Licensed Product and such
other product, based upon their relative importance and proprietary protection.


 


4.3                               Licensed
Products sold, leased or otherwise distributed by the Company’s sublicensees
shall be considered to be sales, leases or disposals of Licensed Products by
the Company for purposes of royalty payments and reports under this Agreement.
The obligation to pay royalties pursuant to this Agreement is imposed only once
with respect to the sale of a particular Licensed Product regardless of the
number of claims or patents that cover such Licensed Product. The Company shall
have no obligation to pay royalties on Licensed Products used in research and
development, in clinical trials or other noncommercial purposes, or distributed
as samples.


 


4.4                               The
Company’s obligation to pay royalties hereunder shall continue on a
country-by-country basis until (i) the expiration of the last-to-expire
issued patent within the Licensed Patent Rights in such country, or (ii) [ * ] following the first commercial sale of a Licensed
Product in a country, if no patent covering such Licensed Product has been
issued in such country. Thereafter, the Company shall have a fully paid up
license under Licensed Patent Rights, Biological Materials and Know-How to make,
have made, use, sell, lease, import, have imported, offer for sale or otherwise
exploit the Licensed Product(s) for any use in that country.


 


4.5                               {Not disclosed by Cell Genesys}


 


4.6                               {Not disclosed by Cell Genesys}


 


4.7                               Unless
this Agreement is terminated earlier, within sixty (60) days following the
first achievement by the Company or a sublicensee of the following milestones
with respect to the first Licensed Product within the scope of a Valid Claim
within the Licensed Patent Rights, the Company shall pay to Rockefeller [ * ] milestone payments as follows:


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


5





















 




	
  Event

  	
   

  	
  Payment

  
	
   

  	
   

  	
   

  
	
  Enrollment of first
  patient in a Company-sponsored

  [ * ] clinical trial of a Licensed
  Product

  	
   

  	
  $

  	
  [ * ]

  
	
   

  	
   

  	
   

  
	
  Enrollment of first
  patient in a Company-sponsored

  [ * ] clinical trial of a Licensed
  Product

  	
   

  	
  $

  	
  [ * ]

  
	
   

  	
   

  	
   

  
	
  Approval
  of NDA in U.S. of a Licensed Product

  	
   

  	
  $

  	
  [ * ]

  






 


4.8                               Upon
commencement of commercial sales of any Licensed Products which generate a
royalty to Rockefeller pursuant to this Agreement, the Company shall within
ninety (90) days of the close of the fiscal semi-annual period, provide
semi-annual reports to Rockefeller showing the total Net Sales of Licensed
Products sold, leased or otherwise disposed of during such period and the
calculation of royalties thereon. Any royalty then due and payable shall be
included with such report.  All reports
provided hereunder by the Company shall be the Confidential Information of the
Company, subject to Section 7 herein. The Company’s records shall be open
to inspection by an independent certified public accountant designated by
Rockefeller for three (3) years from the submission of such reports and
payments, subject to execution of a confidentiality agreement reasonably
acceptable to the Company, once per calendar year at reasonable times, at
Rockefeller’s expense, for the sole purpose of verifying the accuracy of the
reports and royalty payments made by the Company. The accountant shall report
to Rockefeller only whether there has been an underpayment and, if so, the
amount thereof.


 


5.                                      TIMES
AND CURRENCIES OF PAYMENT


 


5.1                               Royalty
payments shall be made in United States dollars or if sales are made in the
currency of other countries, royalties shall be calculated in the currency of
such other country and be converted into United States dollars using the
applicable exchange rate for sale of U.S. dollars listed by the foreign
exchange desk of the Bank of America on the last day of the applicable
reporting period.


 


5.2                               If
at any time legal restrictions prevent the prompt remittance of part or all
royalties by the Company with respect to any country where a Licensed Product
is sold, the Company shall have the right and option to make such payment by
depositing the amount thereof in local currency to an account in the name of
Rockefeller in a bank or other depository in such country.


 


6.                                      SUBLICENSEES


 


6.1                               The
Company and its Affiliates shall have the right to grant and authorize
sublicenses under the Licensed Technology and Improvement Technology to commercial
entities for research purposes and for commercial purposes, including without
limitation, to make, have made, import, have imported, use, lease, offer for
sale and sell Licensed Products in the Territory.


 










[ * ] = CERTAIN CONFIDENTIAL
INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY BRACKETS, HAS BEEN OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF THE SECURITIES EXCHANGE
ACT OF 1934, AS AMENDED.


 


6





















 


6.2          The
Company shall have the sole discretion to determine the financial and other
terms on which any sublicenses shall be granted under the Licensed Technology,
subject to the provisions herein. Any sublicense(s) granted by the Company
under this Agreement shall be subject and subordinate to the terms and
conditions of this Agreement, except the financial terms of the sublicense(s)
may require greater payments than the financial terms in this Agreement.


 


6.3          Notwithstanding
Section 2.1 above, Rockefeller, on behalf of the Company, may continue to
grant limited, non-transferable, research sublicenses to academic institutions,
governmental and other not-for-profit entities using the form sublicense
agreement attached hereto as Exhibit B. Rockefeller shall not enter into
or agree to enter into any agreement with such an entity which deviates in any
way from the form agreement set forth in Exhibit B, without the prior
written consent of the Company. Rockefeller shall provide the Company with a
copy of each such research license entered by Rockefeller promptly following
the execution of such agreement.


 


6.4          In
the event of any termination of this Agreement, any sublicenses granted under
or this Agreement shall also terminate unless such sublicensees provide Rockefeller
written notice that they will abide by the applicable terms of this Agreement.


 


6.5          In
no event shall a default or breach of a sublicensee of a sublicense granted by
the Company pursuant to this Agreement constitute by a default or breach by the
Company of this Agreement or be deemed a valid basis for the termination of
this Agreement.


 


7.                                      CONFIDENTIAL
INFORMATION


 


7.1          Each
Party and its Affiliates and sublicensees shall treat as confidential all
Confidential Information received from the other Party hereto, shall not use
such Confidential Information except as expressly set forth herein or otherwise
authorized in writing, shall implement reasonable procedures to prohibit the
disclosure, unauthorized duplication, misuse or removal of such Confidential
Information and shall not disclose such Confidential Information to any third
party except as may be necessary and required in connection with the rights and
obligations of such party under this Agreement, and subject to confidentiality
obligations at least as protective as those set forth herein. Without limiting
the foregoing, each of the parties shall use at least the same procedures and
degree of care which it uses to prevent the disclosure of its own confidential
information to prevent the disclosure of Confidential Information of the other
Party. As used herein, the term “Confidential Information” shall mean any
information expressly designated as Confidential Information in this Agreement
and information disclosed by one Party to another pursuant to this Agreement
which is in written, graphic, machine readable or other tangible form and is
marked “Confidential” to indicate its confidential nature. Confidential
Information may also include oral information disclosed by one Party to another
pursuant to this Agreement, provided that such information is designated as
confidential at the time of disclosure and within thirty (30) days after its
oral disclosure is reduced to a written summary by the disclosing Party, which
summary is marked in a manner to indicate its confidential nature and delivered
to the receiving Party.


 


7.2          Notwithstanding
the above, neither Party has any obligation of confidence under this Agreement
with respect to any information which:


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


7





















 


(i)            may
be demonstrated to have been known to the receiving Party prior to the time of
disclosure thereof by the disclosing Party; or


 


(ii)           without
breach of this Agreement, has been published or is otherwise available to the
public at any time whether before or after the time of disclosure to such
Party; or


 


(iii)         is
at any time lawfully received by such Party from a third party who has no
obligation of confidence to a Party in respect hereof.


 


7.3          Each
Party hereto may disclose another’s Confidential Information to the extent such
disclosure is reasonably necessary in filing or prosecuting patent
applications, prosecuting or defending litigation, complying with applicable
governmental regulations or otherwise submitting information to tax or other
government authorities, making a permitted sublicense or other exercise of its
rights hereunder or conducting clinical trials, provided that if a Party is
required to make any such disclosure of another Party’s secret or Confidential
Information, other than pursuant to a confidentiality agreement, it will give
reasonable advance notice to the latter Party of such disclosure requirement
and, will use its best efforts to secure confidential treatment of such
information prior to its disclosure (whether through protective orders or
otherwise).


 


8.                                      REPRESENTATIONS
AND WARRANTIES


 


8.1          Rockefeller
represents and warrants that: (i) it is a nonprofit corporation duly
organized, validly existing and in good standing under the laws of New York; (ii) the
execution, delivery and performance of this Agreement have been duly authorized
by all necessary action on the part of Rockefeller; (iii) it is the sole
and exclusive owner of all right, title and interest in the Licensed Patent
Rights; (iv) the Licensed Patent Rights are free and clear of any lien,
security interest or restriction on transfer or license; (v) Rockefeller
has not previously granted, and will not grant during the term of this
Agreement, any right, license or interest in and to the Licensed Patent Rights,
Biological Materials and Know-How, or any portion thereof, in conflict with the
rights, exclusive license and interest granted to the Company herein; (vi) it
has complied fully with all requirements of 35 U.S.C. § 201 et seq. and
all implementing regulations with respect to perfecting its interest in the
Licensed Patent Rights; (vii) Exhibit A contains a complete and
accurate listing of all Licensed Patent Rights existing as of the Effective
Date; and (viii) there are no actions, suits, investigations, claims or
proceedings pending in any way relating to the Licensed Patent Rights,
Biological Materials or Know-How.


 


8.2          The
Company represents and warrants that: (i) it is a corporation duly
organized, validly existing and in good standing under the laws of the State of
Delaware; and (ii) the execution, delivery and performance of this
Agreement have been duly authorized by all necessary corporate action on the
part of the Company.


 


8.3          ROCKEFELLER
EXPRESSLY DISCLAIMS ANY AND ALL IMPLIED OR EXPRESS WARRANTIES AND MAKES NO EXPRESS
OR IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR ANY PARTICULAR PURPOSE
OF BIOLOGICAL MATERIALS, LICENSED PROCESSES OR LICENSED PRODUCTS CONTEMPLATED
BY THIS AGREEMENT. FURTHER, ROCKFELLER HAS MADE NO FORMAL


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


8





















 


INVESTIGATION
AND THEREORE CAN MAKE NO REPRESENTATION THAT BIOLOGICAL MATERIALS SUPPLIED BY
IT OR THE METHODS USED IN MAKING OR USING SUCH MATERIALS ARE NOW OR WILL REMAIN
FREE FROM LIABILITY FOR PATENT INFRINGEMENT.


 


9.                                      {Not disclosed by Cell Genesys}


 


9.1          {Not disclosed by Cell Genesys}


 


9.2          {Not disclosed by Cell Genesys}


 


10.                               PUBLICITY


 


The
Company will not use either directly or by implication the name of Rockefeller,
or the name of any member of the faculty or staff thereof for any commercial or
promotional purposes without prior notification and written agreement of
Rockefeller. Except as expressly provided herein, the Parties agree not to
disclose the terms of this Agreement to any third party without the prior
written consent of the other Party to the fact and form of such disclosure,
except as required by securities or other applicable laws, to prospective
investors and to such party’s accountants, attorneys and other professional
advisors. Notwithstanding the above, the Company may disclose the existence of
this Agreement and issue a press release, reasonably acceptable to Rockefeller,
describing this Agreement and the rights granted the Company by Rockefeller
under this Agreement, and disclose to actual and potential sublicensees the
rights granted the Company by Rockefeller under this Agreement.


 


11.                               PATENTS


 


11.1        Except
as set forth in Section 11.4, the Company shall have the sole right to
control the preparation, filing, prosecution and maintenance of the Licensed
Patent Rights, and any interference or opposition proceeding relating thereto,
using patent counsel of its choice. The Company shall consult with Rockefeller
regarding the prosecution of any such patent applications, by providing
Rockefeller a reasonable opportunity to review and comment on all proposed
submissions to any patent office before submittal, and provided further that
the Company shall keep Rockefeller reasonably informed as to the status of such
patent applications by promptly providing Rockefeller copies of all communications
relating to such patent applications that are received from any patent office.
If the Company informs Rockefeller in writing that the Company no longer wishes
to conduct such activities with regard to any such patent applications or
patents in any country, then Rockefeller will be free, at its discretion and
expense to either abandon the subject patent applications or to continue such
activities, and the Company shall have no further rights with respect to the
applicable patent applications or patents in such countries.


 


11.2        During
the term of the Agreement, the Company shall be responsible for one hundred
percent (100%) of the expenses incurred in connection with the activities set
forth in Section 11.1. above. {Not disclosed by Cell
Genesys} With respect to patent-related costs incurred after the
Effective Date, the Company shall reimburse Rockefeller within thirty (30) days
following invoice for such costs, in a form reasonably acceptable to the
Company.


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


9





















 


11.3        If
either Party hereto becomes aware that any Licensed Patent Rights are being or
have been infringed by any third party, such Party shall promptly notify the
other Party hereto in writing describing the facts relating thereto in
reasonable detail. The Company shall have the initial right, but not the
obligation, to institute, prosecute and control any action, suit or proceeding
(an “Action”) with respect to such infringement, including any declaratory
judgment action, at its expense, using counsel of its choice; provided,
however, during the pendency of any such Action, the Company shall be entitled
to place any royalties otherwise due Rockefeller hereunder in a separate
account controlled by the Company. If the pertinent Licensed Patent Rights are
found invalid or unenforceable in such an Action, or any appeal thereof, the
Company may retain the amounts placed in such account without further
obligation to Rockefeller with regard thereto. If the Licensed Patent Rights
are not held invalid or unenforceable in such an Action, or any appeal thereof,
the Company shall promptly pay the amounts deposited in such account to
Rockefeller. Any amounts recovered from third parties in any such Action shall
be retained by the Company. In the event the Company fails to initiate or
defend any Action involving the Licensed Patent Rights within one (1) year
of receiving notice of any commercially significant infringement, Rockefeller
shall have the right, but not the obligation, to initiate and control such an
Action, and the Company shall cooperate reasonably with Rockefeller, at
Rockefeller’s request, in connection with any such Action. Any amounts
recovered in such Action shall be used first to reimburse the Company and
Rockefeller for the expenses incurred in connection with such Action, and any
remainder retained by Rockefeller.


 


11.4        In
the event the parties believe an interference may be declared or an
interference is declared between any patent application or patent within the
Licensed Patent Rights and any patent application or patent owned or controlled
by the Company relating to the production of high titer retroviruses, the
parties agree to amicably settle any such prospective or actual interference in
accordance with the procedure set forth on Exhibit C. The Company shall
have the exclusive right to initiate such settlement procedure after
consultation with Rockefeller. In the event of any such prospective or actual
interference and the settlement thereof, each Party shall pay its own costs
associated therewith and the parties shall equally share the costs of any
arbitration, including without limitation, administration and arbitrator fees.
It is understood and agreed that in the event an interference is declared,
neither Patty shall have an obligation to participate in such a proceeding, but
each hereby acknowledges that it understands that a failure to participate may
result in an adverse outcome which could have a material adverse impact on such
Party. It is further understood and agreed that any patent applications and
patents within the Licensed Patent Rights which are involved in any
interference shall remain subject to the license granted the Company herein.


 


12.                               LICENSED
PRODUCT LIABILITY


 


The
Company agrees to indemnify, defend and hold harmless Rockefeller and its
trustees, officers, agents, faculty, employees, and students (the “Indemnitees”),
from any and all liability arising from injury or damage to persons or property
resulting directly or indirectly from the Company’s acquisition, use,
manufacture, sublicense or sale of any Licensed Product covered by Licensed
Patent Rights or Know-How licensed hereunder. Notwithstanding the foregoing,
the Company expressly retains any and all claims it may have against
Indemnitees arising from Indemnitees’ negligence or willful misconduct. The
Company’s obligation to indemnify the


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


10





















 


Indemnitees
under this Section 11 shall not apply unless the indemnified Party
promptly notifies the Company of any claim or liability subject to this Section 12
and cooperates fully with the Company in the defense of any such claim or
proceeding.  The Company further agrees
to obtain, prior to the first commercial sale of a Licensed Product, and
maintain in force for at least fifteen (15) years following the last sale of a
Licensed Product, product liability insurance coverage of at least one million
($1,000,000) dollars or a lesser amount as appropriate to the risk as
determined by reference to reliable standards in the industry, such insurance
to specifically name Rockefeller as an additional insured.


 


13.                               NOTICES


 


Any
notice required to be given pursuant to this Agreement shall be in writing and
may be made by personal delivery or by registered or certified mail, return
receipt requested, by one Party to the other Party at the addresses noted
below:


 


In the case of the Company, notice should be sent to:


 


Cell Genesys, Inc.


322 Lakeside Drive


Foster City, California 94404


Attn: Senior Vice President, Corporate Development


 


In the case of Rockefeller, notice should be sent to:


 


The Rockefeller University


1230 York Avenue


New York, New York 10021


Attn: Office of the General Counsel


 


14.                               LAW
TO GOVERN


 


This
Agreement shall be interpreted and governed in accordance with the laws of the
State of New York.


 


15.                               ASSIGNMENT


 


This
Agreement may not be assigned by either Party without the prior written consent
of the other; provided, however, the Company
may assign this Agreement in connection with the transfer of all or
substantially all of its business relating to the subject matter of this
Agreement whether by sale, merger, operation of law or otherwise.


 


16.                               TERMINATION


 


16.1        The
Company shall have the right to terminate this Agreement at any time with
respect to any Licensed Patent Right or any country upon ninety (90) days prior
written notice to Rockefeller. Such termination shall automatically terminate
the license rights provided in Section 2 with respect to such Licensed
Patent Rights hereof in such country but shall not relieve the Company of the
obligation to pay royalties for any period prior to the effective date of
termination.


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


11





















 


16.2        Either
Party may terminate this Agreement in the event of a material breach by the
other Party which is not cured within a reasonable time, provided only that the
offending Party is given notice of the breach and not less than ninety (90)
days in which to cure such breach.


 


16.3        Sections
2.4, 6.4 and 24.3 and Articles 7, 8, 10, 12, 14, 17 and 25 shall survive
expiration or termination of this Agreement for any reason.


 


17.                               RESOLUTION
OF DISPUTES


 


The
Parties agree that in the event of it dispute between them arising from,
concerning, or in any way relating to this Agreement, the Parties shall
undertake good faith efforts to resolve the same amicably between themselves.


 


18.                               FORCE
MAJEURE


 


The
Parties shall not be liable in any manner for failure or delay in fulfillment
of all or part of this Agreement, directly or indirectly caused by acts of God,
governmental orders or restrictions, war, war-like conditions, revolution,
riot, looting, strike, lockout, fire, earthquake, flood or other similar or
dissimilar cause or circumstances beyond the nonperforming Party’s control. The
nonperforming Party shall promptly notify the other Party of the cause or
circumstance and shall recommence its performance of its obligations as soon as
practicable after the cause or circumstance ceases.


 


19.                               BINDING
UPON SUCCESSORS AND ASSIGNS


 


Subject
to the limitations on assignment herein, this Agreement shall be binding upon
and inure to the benefit of successors in interest or assigns of Rockefeller
and the Company. Any such successor or assignee of a Party’s interest shall
expressly assume in writing the performance of all the terms and conditions of
this Agreement to be performed by said Party.


 


20.                               INDEPENDENT
CONTRACTORS


 


The
relationship between Rockefeller and the Company is that of independent
contractors. Rockefeller and the Company are not joint venturers, partners,
principal and agent, master and servant, employer or employee, and have no
other relationship other than independent contracting parties. Rockefeller
shall have no power to bind or obligate the Company in any manner, other than
as is expressly set forth in this Agreement. Likewise, the Company shall have
no power to bind or obligate Rockefeller in any manner, other than as is
expressly set forth in this Agreement.


 


21.                               SEVERABILITY


 


If any
provision of this Agreement is ultimately held to be invalid, illegal or
unenforceable, the validity, legality and enforceability of the remaining
provisions shall not in any way be affected or impaired thereby.


 


22.                               NO
WAIVER


 


Any
delay in enforcing a Party’s rights under this Agreement or any waiver as to a
particular default or other matter shall not constitute a waiver of such Party’s
rights to the future


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


12





















 


enforcement
of its rights under this Agreement, excepting only as to an express written and
signed waiver as to a particular matter for a particular period of time.


 


23.                               NO
IMPLIED OBLIGATIONS


 


It is
understood and agreed that nothing in this Agreement shall be deemed to prevent
the Company from commercializing technology or products similar to or
competitive with the Licensed Technology or the Licensed Products. Nor shall
anything in this Agreement impair the right of the Company to independently
acquire, license, develop or have others develop for it technology performing
similar or equivalent functions as the Licensed Technology, or to develop,
market or distribute products based on such technology in addition to or in
lieu of the Licensed Products.


 


24.                               COMPLIANCE
WITH LAWS. REGULATIONS AND STANDARDS


 


24.1        The
Company recognizes that the use of Biological Materials carries with it certain
safety risks to both the environment and the population that are inherent in
such materials, and shall exercise prudent scientific laboratory procedures in
the use of said Biological Materials.


 


24.2        The
inventors and Rockefeller recognize and have advised that the Biological Materials
may be used to create infectious retroviruses with a broad host range, that the
supplied materials may be used to create retroviruses that can infect human
cells in both vitro and in vivo, that the Biological Materials and all
materials derived thereof should be handled and used with all due care in
accordance with generally acceptable scientific guidelines establishing
appropriate precautions and approved by the Institutional Biosafety Committee
or similar authority at the Company.


 


24.3        The
Company shall bear all risk to the Company and/or to any others resulting from
use, directly or indirectly, to which the Company puts the Biological Materials
or any progeny or cells or cell lines derived from it.


 


25.                               NO
CONSEQUENTIAL DAMAGES


 


IN NO
EVENT SHALL EITHER PARTY BE LIABLE FOR SPECIAL, INCIDENTAL OR CONSEQUENTIAL
DAMAGES ARISING OUT OF ANY BREACH OF THIS AGREEMENT.


 


26.                               ENTIRE
UNDERSTANDING


 


This
Agreement with its Exhibits represents the entire understanding between the
Parties with respect to the subject matter hereof and supersedes any other
agreement, expressed or implied, by the Parties with respect to the Licensed
Patent Rights, Biological Materials, Know-How and Improvement Technology, and
supersedes and merges all prior negotiations, discussions and agreements,
including without limitation, the Prior Agreement between the parties. This
Agreement may not be amended or modified except in a written document signed by
authorized representatives of the Parties.


 


IN
WITNESS WHEREOF, the Parties have caused this Agreement to be
duly executed as of the day and year first above written.


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


13





















 


	
   

  	
  CELL GENESYS, INC.

  
	
   

  	
   

  	
   

  
	
   

  	
  By:

  	
   

  	
  /s/ R. Scott Greer

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  Title:

  	
  Senior Vice President

  
	
   

  	
   

  	
  Corporate Development

  
	
   

  	
   

  	
   

  
	
   

  	
  Date:

  	
  February 2, 1996

  
	
   

  	
   

  	
   

  
	
   

  	
  THE ROCKEFELLER UNIVERSITY

  
	
   

  	
   

  	
   

  
	
   

  	
  By:

  	
   

  	
  /s/ William H. Griesar

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  Title:

  	
  Vice President and General Counsel

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  
	
   

  	
  Date:

  	
  January 31, 1996

  



 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


14





















 


EXHIBIT “A”


 


LICENSED PATENT RIGHTS


 


United States Serial No. 08/023,909


 


PCT Application No. PCT/US94/01983


 


[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


1





















 


AMENDMENT TO EXCLUSIVE LICENSE AGREEMENT


 


This
Amendment to Exclusive License Agreement (“Amendment”), effective as of November 3,
1998, by and between Cell Genesys, Inc.,(“Company”), a corporation
organized and existing under the laws of the State of Delaware, having an
office at 342 Lakeside Drive, Foster City, California 94404, and The
Rockefeller University (“Rockefeller”), a nonprofit education corporation organized
and existing under the laws of the State of New York, having an office at 1230
York Avenue, New York, New York 10021-6395 (Company and Rockefeller
collectively, the “Parties”).


 


BACKGROUND


 


The
Parties desire to amend that certain Exclusive License Agreement by and between
Company and Rockefeller effective as of January 31, 1996 (the “Agreement”)
as set forth herein below.


 


NOW, THEREFORE, the
Parties agree as follows:


 


1.                                      AMENDMENT.
This Amendment hereby amends the Agreement to incorporate the terms and
conditions set forth in this Amendment. The relationship of the Parties shall
continue to be governed by the terms and conditions of the Agreement, as
amended herein; and in the event that there is any conflict between the terms
and conditions of the Agreement and this Amendment, the terms and conditions of
this Amendment shall control. As used in this Amendment, all capitalized terms
shall have the meanings defined for such terms in this Amendment or, if not
defined in the Amendment, the meanings defined in the Agreement.


 


2.                                      MODIFICATION
TO THE AGREEMENT.


 


2.1          Section 4.6
of the Agreement is hereby amended to read in its entirety as follows:


 


“4.6        Commercial Sublicenses. It is
understood and agreed that Company shall have the right, at its sole discretion,
to grant Commercial Sublicenses to third parties {Not
disclosed by Cell Genesys}. 
As used herein, “Commercial Sublicense” shall mean Commercial Target
Sublicenses and any other sublicense right granted under the Licensed
Technology; provided, however, Commercial Sublicenses shall exclude rights
granted by Company to a third party pursuant to an agreement substantially in
the form of Exhibit D to this Agreement (i.e., research sublicenses).”


 


2.2          The
Agreement is hereby amended to add the following new Section 4.9:


 


“4.9        Commercial Target Sublicenses.
Subject to the terms and conditions set forth in this Section 4.9 below
and without limiting the provisions of Section 4.6 above or Article 6
below, Company shall have the right to grant and authorize Commercial Target
Sublicenses to third parties (each such third party, a “Commercial Target
Sublicensee”) on terms and conditions as Company deems appropriate in its sole
discretion.


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


1





















 


(a)           Milestone and Maintenance Fees. In
addition to amounts payable pursuant to Section 4.3 above and in
consideration of Company’s right to grant and authorize Commercial Target
Sublicenses pursuant to this Section 4.9 {Not
disclosed by Cell Genesys}. 
Payments due under this Section 4.9(a) shall be due and
payable within sixty (60) days after the calendar quarter in which the
Milestone Fee or Maintenance Fee, as applicable, is received by Company {Not disclosed by Cell Genesys}.


 


(b)           Terms.
For purposes of this Section 4.9 the following capitalized terms shall
have the following meanings. “Commercial Target Sublicense” shall mean a
sublicense under the Licensed Technology that includes the right to conduct
Target Validation using the Licensed Technology.  “Target Validation” shall mean the process by
which the function of nucleotide sequences are identified, determined and/or
confirmed; and/or the function of nucleotide sequences are identified,
determined and/or confirmed as being significant in a disease or other
biological pathway in which pharmacological or other intervention is sought to
affect the function of that pathway. {Not disclosed by Cell
Genesys}.


 


(c)           Survival.  Subject to Section 6.4 below, Commercial
Sublicenses, including Commercial Target Sublicenses, shall survive the
termination of this Agreement, provided that the Commercial Sublicensee or
Commercial Target Sublicensee, as the case may be, agrees to be bound by the
applicable terms and conditions of this Agreement.”


 


3.                                      ENTIRE
AGREEMENT. Together the Agreement (including the Exhibits thereto) and this
Amendment constitute the entire agreement between the Parties in connection
with the subject matter thereof and supersede all prior and contemporaneous
agreements, understandings, negotiations and discussions, whether oral or
written, of the Parties.


 


IN WITNESS WHEREOF,
the Parties have executed this Amendment.


 


 


	
  CELL GENESYS, INC.

  	
   

  	
  THE ROCKEFELLER UNIVERSITY

  
	
   

  	
   

  	
   

  
	
  By:

  	
  /s/ Bruce A. Hironaka

  	
   

  	
   

  	
  By:

  	
  /s/ William A. Griesar

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Title:

  	
  Vice President, Corp. Devel.

  	
   

  	
   

  	
  Title:

  	
  Vice President and General Counsel

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  Date:

  	
  November 16, 1998

  	
   

  	
   

  	
  Date:

  	
  11/3/98

  
								



 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


2





















 


APPENDIX B


 


BOSC 23 CELL LINE


 


	
  CGI Docket

  Number

  	
   

  	
  Application, Patent
 Number or 

  Publication

  Number

  	
   

  	
  Filing Data, Grant
 date, or 

  Publication Date

  	
   

  	
  Title/Inventors

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  The Rockefeller University

  	
   

  	
  PCTWO94/19478 (US application corresponding
  to the PCT)

  	
   

  	
   

  	
   

  	
  Production of High Titer Helper-Free
  Retroviruses by Transient Transfection

  Pear et al.

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  The Rockefeller University

  	
   

  	
  US 08/693,160

  	
   

  	
  6/12/96

  	
   

  	
  Production of High Titer, Helper-Free
  Retroviruses by Transient Transfection

  Pear, et al.

  



 


KATÔ


 


	
  CGI Docket

  Number

  	
   

  	
  Application, Patent
 Number or 

  Publication Number

  	
   

  	
  Filing Data, Grant
 date, or 

  Publication Date

  	
   

  	
  Title/Inventors

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  CELL 13.0

  	
   

  	
  US 5,834,256

  (Patent)

  	
   

  	
  November 10, 1998

  	
   

  	
  Method for Production of High Titer Virus & High Efficiency
  of Retroviral Mediated Transduction of Mammalian Cells

  Finer et al.

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  CELL 13.1

  	
   

  	
  US 5,686,279

  (Patent)

  	
   

  	
  November 11, 1997

  	
   

  	
  Method for Production of High Titer Virus & High Efficiency
  of Retroviral Mediated Transduction of Mammalian Cells

  Finer et al.

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  CELL 13.1 PCT

  	
   

  	
  WO 94/29438

  	
   

  	
  December 22, 1994

  	
   

  	
  Method for Production of High Titer Virus & High Efficiency
  of Retroviral Mediated Transduction of Mammalian Cells

  Finer et al.

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  CELL 13.2

  	
   

  	
  US 5,858,740

  (Patent)

  	
   

  	
  January 12, 1999

  	
   

  	
  Method of Production of High Titer Virus & High Efficiency
  of Retroviral Mediated Transduction of Mammalian Cells

  Finer et al.

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  CELL 13.3

  	
   

  	
  US 08/517,488

  	
   

  	
  August 21, 1995

  	
   

  	
  Method for Production of High Titer Virus & High Efficency
  of Retroviral Mediated Transduction of Mammalian Cells

  Finer et al.

  



 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


3





















 


	
  CGI Docket Number

  	
   

  	
  Application, Patent
 Number or 

  Publication Number

  	
   

  	
  Filing Data, Grant
 date, or 

  Publication Date

  	
   

  	
  Title/Inventors

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  CELL 13.3 PCT

  	
   

  	
  WO 97/07225

  	
   

  	
  February 21, 1997

  	
   

  	
  Method for Production of High Titer Virus & High Efficiency
  of Retroviral Mediated Transduction of Mammalian Cells

  Finer et al.

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  CELL 13.5

  (will be dropped if 13.3 is allowed)

  	
   

  	
  US 09/266,956

  	
   

  	
  March 11, 1999

  	
   

  	
  Method for Production of High
  Titer Virus & High Efficiency of Retroviral Mediated Transduction of
  Mammalian Cells

  Finer et al.

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
  US 08/914,893

  	
   

  	
  8/20/97

  	
   

  	
  Method of Production of High Titer Virus & High Efficiency
  of Retroviral Mediated Transduction of Mammalian Cells.

  Finer, et al.

  



 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


4





















 


APPENDIX C


 


RIGEL BIOLOGICAL MATERIALS


 


[ * ] Vectors:


 


[ * ]


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


5





















 


APPENDIX D


 


NOLAN AND NOLAN/ROTHENBERG PATENTS


 


U.S. Patent Application No. 08/589,109, entitled “Methods for
Screening for Transdominant Effector Peptides and RNA Molecules”  (the Nolan/Rothenberg Patent Application).


 


U.S. Patent Applications Nos. 08/789,333, 08/589,911 and 08/963,368,
entitled, “Methods for Screening for Transdominant Intracellular Effector
Peptides and RNA Molecules”  (the Nolan
Patent Application).


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


6





















 


APPENDIX E


 


LICENSE AGREEMENT


 


BY AND BETWEEN


 


THE BOARD OF TRUSTEES OF THE LELAND STANFORD
JUNIOR UNIVERSITY


 


AND


 


RIGEL PHARMACEUTICALS, INC.


 





















 


APPENDIX E




LICENSE AGREEMENT


 


Effective as of June 1, 1999 (the “Effective Date”),
THE BOARD OF TRUSTEES OF THE LELAND STANFORD JUNIOR
UNIVERSITY, a body having corporate powers under the laws of the
State of California (“STANFORD”) and RIGEL PHARMACEUTICALS, INC.,
a Delaware corporation having a principle place of business at 240 East
Grand Avenue, South San Francisco, CA 94080 (“RIGEL”), agree as follows:


 


RECITALS


 


A.            STANFORD
owns certain [ * ] cell lines and derivatives
thereof and biological components related thereto.


 


B.            RIGEL
desires to obtain a non-exclusive license to such materials for use in the
Field, with the right to grant one non-exclusive sublicense to Cell Genesys, Inc.


 


1.                                      DEFINITIONS.


 


1.1          “Cell
Genesys” means Cell Genesys, Inc., a Delaware
corporation, having a principal place of business at 342 Lakeside Drive, Foster
City, CA 94404.


 


1.2          “Field”
means any and all fields of use, including, without limitation, any research or
commercial field of use.


 


1.3          “Licensed
Biological Materials” means the materials listed on Exhibit A.


 


1.4          “Licensed
Know-How” means:


 


(a)           any
and all tangible or intangible know-how, trade secrets, inventions (whether or
not patentable), processes, data, and other information owned by STANFORD as of
the Effective Date that are necessary or useful for the use of the Licensed
Biological Materials; and


 


(b)           any
modifications or progeny of the information and materials in subsection (a) above
that STANFORD may elect to provide to RIGEL at STANFORD’s sole and exclusive
discretion.


 


1.5          “Patent”
shall mean all foreign and domestic patents (including, without limitation,
extensions, reexaminations, reissues, renewals and inventors certificates) and
patents issuing from patent applications (including substitutions,
provisionals, divisionals, continuations and continuations-in-part).


 


2.                                      GRANT;
TRANSFER OF LICENSED BIOLOGICAL MATERIALS.


 


2.1          STANFORD
hereby grants, and RIGEL hereby accepts, a worldwide, non-exclusive license
(without the right to sublicense except to Cell Genesys in the field of human 


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


1





















 


and/or animal gene therapy as provided in Article 8)
under STANFORD’s right, title and interest in the Licensed Biological Materials
to conduct research and development and to use the Licensed Biological
Materials to make, have made, use, import, offer for sale and sell products in
the Field.


 


2.2          STANFORD
hereby grants, and RIGEL hereby accepts, a worldwide, non-exclusive license
(without the right to sublicense except to Cell Genesys in the field of human
and/or animal gene therapy as provided in Article 8) under STANFORD’s
right, title and interest in the Licensed Know-How to use the Licensed Know-How
in the Field.


 


2.3          STANFORD
shall have the right to use the Licensed Know-How and the Licensed Biological
Materials for its own bona fide research, including sponsored research and
collaborations.  In addition, STANFORD
shall have the right to distribute the Licensed Biological Materials.


 


2.4          Promptly
after the Effective Date, STANFORD shall transfer to RIGEL such quantities of
the Licensed Biological Materials as RIGEL shall reasonably request.  Thereafter, STANFORD shall transfer to RIGEL
such additional quantities of Licensed Biological Materials as RIGEL shall
reasonably request in the event that RIGEL’s stock of the Licensed Biological
Materials is destroyed or contaminated.


 


3.                                      LICENSE
ROYALTIES.


 


3.1          In
partial consideration for the license granted by STANFORD to RIGEL under Section 2.1,
RIGEL agrees to pay to STANFORD the following:


 


(a)           An
initial, nonrefundable license issue royalty of [ * ],
which amount shall be paid within thirty (30) days after the Effective Date.


 


(b)           A
royalty payment equal to [ * ] on each
of the first three (3) anniversaries of the Effective Date.


 


After the third (3rd) anniversary of the
Effective Date, the sublicense shall be considered perpetual and fully paid-up.


 


3.2          If
RIGEL grants to Cell Genesys a sublicense under the Licensed Biological
Materials to use and sell products in the field of human and/or animal gene
therapy, RIGEL shall pay to STANFORD during the term of such sublicense a
sublicense fee as follows:


 


	
  Upon signing of the sublicense

  	
   

  	
  $

  	
  [ * ]

  
	
   

  	
   

  	
   

  	
   

  
	
  On each of the first three (3) anniversaries of
  the effective date of such sublicense

  	
   

  	
  $

  	
  [ * ]

  
	
   

  	
   

  	
   

  	
   

  
	
  On the 4th, 5th and 6th
  anniversaries of the effective date of such sublicense

  	
   

  	
  $

  	
  [ * ]

  



 


After
the sixth (6th) anniversary of the effective date of such
sublicense, the sublicense shall be considered perpetual and fully paid-up.


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


2





















 


4.                                      PATENTS;
NEW INVENTIONS.


 


Subject to the terms and conditions of this Agreement, any patentable
inventions or discoveries conceived or reduced to practice by the employees,
agents or consultants of one party during the course of the Agreement (“Sole
Inventions”) shall be the property of such party.  Any patentable inventions or discoveries
conceived or reduced to practice jointly by employees, agents or consultants of
STANFORD and RIGEL as determined in accordance with United States rules of
inventorship (“Joint Inventions”) during the course of and pursuant to this
Agreement shall be owned jointly by STANFORD and RIGEL, each to own an
undivided one-half (1/2) interest in such Joint Invention.  Each party shall cooperate with the other in
completing any patent applications relating to Joint Inventions, and in
executing and delivering any instrument required to assign, convey or transfer
to such other party its undivided one-half (1/2) interest.


 


5.                                      WARRANTIES.


 


5.1          STANFORD’s
Office of Technology Licensing represents and warrants that to the best of its
knowledge as of the Effective Date, STANFORD has not sought or obtained patent
protection of the Licensed Biological Materials or any use thereof in the
Field.


 


5.2          STANFORD’s
Office of Technology Licensing represents and warrants that as of the Effective
Date, it has no knowledge of claims by third parties that the use of the
Licensed Biological Materials infringes any patents, copyrights or other rights
of third parties.


 


5.3          STANFORD
represents and warrants that it has all right, power and authority necessary to
grant the licenses set forth in Article 2 to RIGEL.


 


5.4          RIGEL
agrees that nothing in this Agreement grants RIGEL any express or implied
license or right under or to:


 


(a)           U.S.
Patent 4,656,134, entitled “Amplification of Eucaryotic Genes” or any patent
application corresponding thereto; or


 


(b)           U.S.
Patent 5,070,012, entitled “Monitoring of Cells and Trans-Activating
Transcription Elements” or any patent application corresponding thereto; or


 


(c)           U.S.
Patent 5,804,387, entitled “FACS-Optimized Mutants of the Green Fluorescent
Protein (GFP) or any patent application corresponding thereto.


 


5.5          STANFORD
agrees that nothing in this Agreement grants STANFORD any express or implied
license or right under or to U.S. Patent Application Nos. 08/789,333,
08/589,911, or 08/963,368, entitled “Method for Screening for Transdominant
Intracellular Effector Peptides and RNA Molecules,” or any continuations,
divisionals or continuation-in-parts thereof or any patents which may issue
therefrom.


 


5.6          Except
as provided in Sections 5.1, 5.2 and 5.3 and as otherwise expressly set forth
in this Agreement, nothing in this Agreement will be construed as a warranty or



 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


3





















 


representation that anything made, used, sold, or
otherwise disposed of under any license granted in this Agreement is or will be
free from infringement of patents, copyrights, and trademarks of third parties;
conferring rights to use in advertising, publicity, or otherwise any trademark
or the name of “STANFORD”; or granting by implication, estoppel, or otherwise
any licenses or rights under patents of STANFORD.


 


5.7          EXCEPT
AS EXPRESSLY SET FORTH IN THE AGREEMENT, STANFORD MAKES NO REPRESENTATIONS AND
EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED.  THERE ARE NO EXPRESS OR IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, OR THAT THE USE OF THE
LICENSED BIOLOGICAL MATERIALS OR LICENSED KNOW-HOW WILL NOT INFRINGE ANY
PATENT, COPYRIGHT, TRADEMARK, OR OTHER RIGHTS, OR ANY OTHER EXPRESS OR IMPLIED
WARRANTIES.


 


6.                                      INDEMNITY.


 


6.1          RIGEL
agrees to indemnify, hold harmless, and defend STANFORD, UCSF-Stanford Health
Care and Stanford Health Services and their respective trustees, officers,
employees, students, and agents against any and all claims by third parties for
death, illness, personal injury, property damage, and improper business
practices arising out of the manufacture, use, sale, or other disposition of
the Licensed Biological Materials or any products arising or derived from
Licensed Biological Materials, by RIGEL or RIGEL’s sublicensee(s) or customers.


 


6.2          STANFORD
shall not be liable for any indirect, special, consequential or other damages
whatsoever, whether grounded in tort (including negligence), strict liability,
contract or otherwise. STANFORD shall not have any responsibilities or
liabilities whatsoever with respect to products arising or derived from
Licensed Biological Materials by RIGEL.


 


6.3          RIGEL
shall at all times comply, through insurance or self-insurance, with all
statutory workers’ compensation and employers’ liability requirements covering
any and all employees with respect to activities performed under this
Agreement.


 


6.4          In
addition to the foregoing, RIGEL shall maintain Comprehensive General Liability
Insurance, including Products Liability Insurance, with reputable and
financially secure insurance carrier(s) to cover the activities of RIGEL and
its sublicensee(s) in the amounts and during the periods specified herein.  Such insurance shall provide minimum limits
of liability of One Million Dollars ($1,000,000) as of the first anniversary of
the date upon which RIGEL first leases a facility in which it will conduct
research and development activities, and of Five Million Dollars ($5,000,000)
as of the commencement of human clinical trials.  Such insurance shall include STANFORD,
UCSF-Stanford Health Care and Stanford Health Services, their trustees,
directors, officers, employees, students, and agents as additional insureds.
Such insurance shall be written to cover claims incurred, discovered,
manifested or made during or after the expiration of this Agreement.  At STANFORD’s request, RIGEL shall furnish a
Certificate of Insurance evidencing primary coverage and requiring thirty (30)
days prior written notice of cancellation or material change to STANFORD. RIGEL
shall advise STANFORD, in writing, that it maintains excess liability coverage
(following form) over primary insurance for at least the minimum limits 


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


4





















 


set forth above. All such insurance of RIGEL shall be
primary coverage; insurance of STANFORD, UCSF-Stanford Health Care or Stanford
Health Services shall be excess and noncontributory.


 


7.                                      STANFORD
NAMES AND MARKS.


 


RIGEL agrees not
to identify STANFORD in any promotional advertising or other promotional
materials to be disseminated to the pubic or any portion thereof or to use the
name of any STANFORD faculty member, employee, or student or any trademark,
service mark, trade name, or symbol of STANFORD, UCSF-Stanford Health Care or
Stanford Health Services, or that is associated with any of them, without
STANFORD’s prior written consent, except as required by law.  STANFORD shall not unreasonably withhold
consent under this Section 7.


 


8.                                      SUBLICENSE(S).


 


8.1          Subject
to the provisions of this Article 8, RIGEL may grant a sublicense to the
license rights granted to RIGEL by STANFORD in Sections 2.1 and 2.2 to Cell
Genesys solely in the field of human and/or animal gene therapy.


 


8.2          Any
sublicense granted by RIGEL to Cell Genesys under this Agreement shall be
subject and subordinate to terms and conditions of this Agreement, except:


 


(a)           Sublicense
terms and conditions shall reflect that any sublicensee(s) shall not grant a
sublicense to a third party; and


 


(b)           The
financial obligations of any sublicensee to RIGEL specified in the
sublicense(s) may be different from those obligations set forth in this
Agreement.


 


Any such sublicense(s) also shall expressly include
the provisions of Articles 5 and 6 for the benefit of STANFORD and shall
survive any termination of this Agreement.


 


8.3          RIGEL
agrees to provide STANFORD with a copy (with financial terms redacted) of any
sublicense granted to Cell Genesys pursuant to this Article 8 and written
notice of the effective date of any termination of such sublicense prior to the
expiration of the Term (as defined in Section 9.1).


 


9.                                      TERM
AND TERMINATION.


 


9.1          The
term of this Agreement shall commence upon the Effective Date and shall expire
upon the later of: (a) the expiration of the last to expire of any Patents
owned by STANFORD at any time which claim inventions in the Licensed Biological
Materials or the Licensed Know-How; or (b) twenty (20) years from the
Effective Date (the “Term”).  In
addition, RIGEL may terminate this Agreement prior to the expiration of the
Term by giving STANFORD notice in writing at least thirty (30) days in advance
of the effective termination date selected by RIGEL.


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


5





















 


9.2          Either
party may terminate this Agreement prior to the expiration of the Term if the
other party is in material breach of any provision hereof and fails to remedy
any such default or breach within thirty (30) days after written notice thereof
to the breaching party.


 


9.3          Surviving
the expiration of the Term are:


 


(a)           Any
cause of action or claim of RIGEL or STANFORD, accrued or to accrue, because of
any breach or default by the other party prior to the expiration of the Term;
and


 


(b)           Articles
4, 5, 6, 7 and 11; and


 


(c)           Article 8
and Sections 2.1 and 2.2; and the licenses granted thereunder shall be deemed
perpetual and fully paid-up.


 


9.4          Surviving
any termination of this Agreement are:


 


(a)           Any
cause of action or claim of RIGEL or STANFORD, accrued or to accrue, because of
any breach or default by the other party prior to the termination of this
Agreement; and


 


(b)           Articles
4, 5, 6, 7, 8 and 11 and Section 3.2; and


 


(c)           Sections 2.1
and 2.2 if RIGEL has fulfilled all of its payment obligations to STANFORD under
Section 3.1 prior to such termination; and the licenses granted thereunder
shall be deemed perpetual and fully paid-up.


 


10.                               ASSIGNMENT.


 


This Agreement may not be assigned by either party
without the express written consent of the other party, except that RIGEL may
assign the Agreement in connection with a merger, consolidation or sale of all
or substantially all of RIGEL’s assets.


 


11.                               ARBITRATION.


 


11.1        Any
controversy arising under or related to this Agreement, and any disputed claim
by either party against the other under this Agreement excluding any dispute
relating to patent validity or infringement arising under this Agreement, shall
be settled by arbitration in accordance with the Licensing Agreement
Arbitration Rules of the American Arbitration Association.


 


11.2        Upon
request by either party, arbitration will be by a third party arbitrator
mutually agreed upon in writing by RIGEL and STANFORD within thirty (30) days
of such arbitration request.  Judgment
upon the award rendered by the arbitrator shall be final and nonappealable and
may be entered in any court having jurisdiction thereof.


 


11.3        The
parties shall be entitled to discovery in like manner as if the arbitration
were a civil suit in the California Superior Court.


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


6





















 


11.4        Any
arbitration shall be held at Stanford, California, unless the parties hereto mutually
agree in writing to another place.


 


12.                               NOTICES.


 


All notices under this Agreement shall be deemed to
have been fully given when done in writing and deposited in the United States
mail registered or certified, and addressed as follows:


 


To STANFORD:                   Office
of Technology Licensing


Stanford University


900 Welch Road, Suite 350


Palo Alto, CA 94304-1850


Attention: 
Director


 


To RIGEL:                              Rigel
Pharmaceuticals, Inc.


240 East Grand Ave.


South San Francisco, CA 94080


Attention: 
President


 


Either
party may change its address upon written notice to the other party.


 


13.                               WAIVER.


 


None of the terms of this Agreement can be waived
except by the written consent of the party waiving compliance.


 


14.                               APPLICABLE
LAW.


 


This Agreement shall be governed by the laws of the
State of California applicable to agreements negotiated, executed and performed
wholly within California.  Any claim or
controversy arising out of or related to this Agreement or any breach hereof
shall be submitted to a court of applicable jurisdiction in the State of
California, and each party hereby consents to the jurisdiction and venue of
such court.


 


15.                               DISCLAIMER
OF AGENCY.


 


Neither party is, or will be deemed to be, the legal
representative or agent of the other, nor shall either party have the right or
authority to assume, create, or incur any third party liability or obligation
of any kind, express or implied, against or in the name of or on behalf of
another except as expressly set forth in this Agreement.


 


16.                               SEVERABILITY.


 


If any provision or provisions of this Agreement shall
be held to be invalid, illegal or unenforceable, the validity, legality and
enforceability of the remaining provisions shall not be in any way affected or
impaired thereby.


 


17.                               ENTIRE
AGREEMENT.


 


This Agreement,
together with the Exhibit attached hereto, embodies the entire
understanding of the parties and shall supersede all previous communications,
representations or 


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


7





















 


understandings, either oral or written, between the parties relating to
the subject matter hereof.  No amendment
or modification hereof shall be valid or binding upon the parties unless made
in writing and signed by duly authorized representatives of both parties.


 


18.                               COUNTERPARTS.


 


This Agreement may
be executed in counterparts, with the same force and effect as if the parties
had executed the same instrument.


 


IN
WITNESS WHEREOF, the parties hereto have executed this
Agreement in duplicate originals by their duly authorized officers or
representatives.


 


	
  THE BOARD OF TRUSTEES OF THE 

  LELAND STANFORD JUNIOR UNIVERSITY

  	
   

  	
  RIGEL PHARMACEUTICALS, INC.

  
	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  
	
  By:

  	
  /s/ Katherine Ku

  	
   

  	
   

  	
  By:

  	
  /s/ Donald W. Perryman

  
	
  Name:

  	
   

  	
  Katherine Ku

  	
   

  	
   

  	
  Name:

  	
   

  	
  Donald W. Perryman

  
	
  Title:

  	
   

  	
  Director, Technology
  Licensing

  	
   

  	
   

  	
  Title:

  	
   

  	
  VP, Business
  Development 

  
	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
   

  	
  June 9,1999

  
														



 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


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EXHIBIT A


 


LICENSED BIOLOGICAL MATERIALS


 


[ * ] Vectors:


[ * ]


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


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APPENDIX F


 


	
  Application, Patent 

  Number or 

  Publication Number

  	
   

  	
  Filing Date, Grant 

  Date, or Publication

  Date

  	
   

  	
  Title/Inventors

  
	
  [ * ]

  	
   

  	
   

  	
  [ * ]

  	
   

  	
  [ * ]

  
	
  [ * ]

  	
   

  	
   

  	
  [ * ]

  	
   

  	
  [ * ]

  
	
  [ * ]

  	
   

  	
   

  	
  [ * ]

  	
   

  	
  [ * ]

  
	
  [ * ]

  	
   

  	
   

  	
  [ * ]

  	
   

  	
  [ * ]

  
	
  [ * ]

  	
   

  	
   

  	
  [ * ]

  	
   

  	
  [ * ]

  
	
  [ * ]

  	
   

  	
   

  	
  [ * ]

  	
   

  	
  [ * ]

  
	
  [ * ]

  	
   

  	
   

  	
  [ * ]

  	
   

  	
  [ * ]

  
	
  [ * ]

  	
   

  	
   

  	
  [ * ]

  	
   

  	
  [ * ]

  



 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


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APPENDIX G


 


RESEARCH PLAN


 


[ * ]


 


1





















 


APPENDIX H


 


LIST OF FTEs


 


[ * ]


[ * ]


[ * ]


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


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APPENDIX I


 


THIRD PARTY PATENTS


 


[ * ]


 










[ * ] =
CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETS, HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION  PURSUANT TO 24B-2 OF
THE SECURITIES EXCHANGE ACT OF 1934, AS AMENDED.


 


1