exv10w40






Exhibit 10.40




EXECUTION COPY




Confidential Materials omitted and filed separately with the

Securities and Exchange Commission. Asterisks denote omissions.




AMENDED AND RESTATED




CROSS-LICENSE AGREEMENT



Between



ALNYLAM PHARMACEUTICALS, INC.



And



PROTIVA BIOTHERAPEUTICS INC.



Dated: May 30, 2008



 









 





AMENDED AND RESTATED CROSS-LICENSE AGREEMENT




     This Amended and Restated Cross-License Agreement (this “Agreement”) is entered into as of May
30, 2008, by and between ALNYLAM PHARMACEUTICALS, INC., a corporation organized under the laws of
the State of Delaware having a principal office at 300 Third Street, Cambridge, MA 02142, U.S.A.,
and PROTIVA BIOTHERAPEUTICS INC., a Canadian corporation, having a principal office at 100-3480
Gilmore Way, Burnaby, B.C., Canada.



RECITALS




     WHEREAS, ALNYLAM owns or controls certain intellectual property covering fundamental aspects
of the structure and uses of therapeutic products that (a) function through RNA interference
(“RNAi”), including but not limited to compositions and methods of use of siRNAs (defined below),
or (b) are, or function through the modulation of, miRNAs (as defined below); and ALNYLAM is
developing capabilities to develop and commercialize such therapeutic products;



     WHEREAS, PROTIVA owns or controls certain intellectual property covering certain targeted
nucleic acid delivery technology known as Stable Nucleic Acid Lipid Particle technology (the “SNALP
Technology”) which is useful for the delivery of a variety of therapeutic products that function
through RNAi or are, or function through the modulation of, miRNA, and is also engaged in the
business of discovering, developing, manufacturing and commercializing human therapeutic products;



     WHEREAS, ALNYLAM and PROTIVA are parties to a Cross-License Agreement dated as of August 14,
2007 (the “Original Cross-License Agreement”) under which:



          (i) ALNYLAM granted PROTIVA non-exclusive licenses under certain ALNYLAM intellectual property
to research, develop and commercialize products directed at up to four Targets (as defined below).
PROTIVA selected the PLK Target and the Second Target (each as defined below) prior to the
effective date of this Agreement, and has the right to select two additional Targets, subject to
ALNYLAM’s obligations to Third Parties (as defined below) and the terms of this Agreement;



          (ii) PROTIVA granted ALNYLAM a non-exclusive license under certain of PROTIVA’s intellectual
property related to delivery technologies also known as SNALP Technology with application to one or
more products to be researched, developed and commercialized by ALNYLAM alone or in partnership
with Third Parties; and



          (iii) ALNYLAM agreed to support certain research and development activities to be conducted by
PROTIVA over a [**]-year period to develop RNAi products to be delivered using PROTIVA’s
technology, and obtained a non-exclusive license under certain PROTIVA intellectual property to
further develop and commercialize the products that are the subject of such research and
development activities;



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     WHEREAS, following the execution of the Original Cross-License Agreement, PROTIVA entered into
[**] agreement (the “[**]”) with [**] and its affiliated companies (including without limitation
[**]) (collectively, the “[**]”) effective as of [**], under which, among other things, PROTIVA
granted to the [**] a non-exclusive license to certain intellectual property of PROTIVA;



     WHEREAS, ALNYLAM and TEKMIRA Pharmaceuticals Corporation (as successor in interest to Inex
Pharmaceuticals Corporation) (“TEKMIRA”) are parties to a License and Collaboration Agreement dated
as of January 8, 2007 (the “Original ALNYLAM-TEKMIRA License Agreement”), which as a condition to
ALNYLAM’s agreement to enter into this Agreement, is being amended and restated concurrently with
this Agreement (as so amended and restated, the “ALNYLAM-TEKMIRA License Agreement”);



     WHEREAS, on March 28, 2008, TEKMIRA, PROTIVA and all holders of securities of PROTIVA entered
into a Share Purchase Agreement (the “Purchase Agreement”) pursuant to which, upon completion of
the transactions contemplated therein (the “Closing”), TEKMIRA will purchase all of the outstanding
shares of capital stock of PROTIVA and PROTIVA will become a wholly-owned subsidiary of TEKMIRA;



     WHEREAS, following the execution and delivery of the Purchase Agreement, and as a condition to
Closing thereunder, TEKMIRA entered into a subscription agreement with ALNYLAM (the “ALNYLAM
Subscription Agreement”) and a subscription agreement with F. Hoffmann-La Roche Ltd (“ROCHE”) (the
“ROCHE Subscription Agreement”), pursuant to which ALNYLAM and ROCHE have each, separately, agreed
to purchase certain shares of TEKMIRA’s common stock upon the Closing if certain conditions are
met;



     WHEREAS, as a condition to the effectiveness of the ALNYLAM Subscription Agreement, ALNYLAM
has agreed to enter into this Agreement on the terms and conditions contained herein, including but
not limited to, the Parties’ agreement to harmonize the license grants from PROTIVA to ALNYLAM
contained in this Agreement with certain license grants from TEKMIRA to ALNYLAM in the
ALNYLAM-TEKMIRA License Agreement and the Parties’ agreement to harmonize the royalty and milestone
payment obligations of the Parties with the obligations of TEKMIRA and ALNYLAM contained in the
ALNYLAM-TEKMIRA License Agreement; and



     WHEREAS, concurrent with the execution of this Agreement, the Parties have entered into an
escrow agreement (the “Escrow Agreement”) pursuant to which the original signature pages to this
Agreement and the fully-executed ALNYLAM-TEKMIRA License Agreement, among other agreements, shall
be placed into escrow and shall be either (i) released from escrow and delivered to the appropriate
parties pursuant to the terms of the Escrow Agreement and, thereafter, this Agreement shall become
effective, or (ii) each Party’s original signature pages shall be returned to it pursuant to the
terms of the Escrow Agreement and this Agreement will never become fully executed, delivered or
effective.



     NOW, THEREFORE, in consideration of the mutual covenants contained herein, and other good and
valuable consideration, the receipt of which is hereby acknowledged,



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ALNYLAM and PROTIVA enter into this Agreement effective as of the Effective Date (defined
below) and subject to the terms of Section 12.1:




ARTICLE I — DEFINITIONS




     General. When used in this Agreement, each of the following terms, whether used in
the singular or plural, will have the meanings set forth in this Article I.



     1.1 Act means the United States Food, Drug and Cosmetic Act of 1938, 21 U.S.C. §§321
et seq., as such may be amended from time to time, and its implementing regulations.



     1.2 Active Internal Development Program, with respect to a particular RNAi Product or
miRNA Product, means that the following criteria have been satisfied, as of the relevant time under
this Agreement:




	 	(a)	 	an active program of Research, Development or Commercialization with respect to
such RNAi Product or miRNA Product has been commenced and remains in effect internally
at ALNYLAM or its Affiliates; and
	 
	 	(b)	 	if such program has not previously established preclinical proof-of-principle
for such RNAi Product or miRNA Product, ALNYLAM or its Affiliates have committed to
conduct such program at least through the completion of significant preclinical
proof-of-principle testing of a specific Formulation for such RNAi Product or miRNA
Product.





     1.3 Affiliate means any corporation, company, partnership, joint venture and/or firm
which controls, is controlled by, or is under common control with a Party. For purposes of the
foregoing sentence, “control” will mean (a) in the case of corporate entities, direct or indirect
ownership of at least fifty percent (50%) of the stock or shares having the right to vote for the
election of directors, (b) in the case of non-corporate entities, direct or indirect ownership of
at least fifty percent (50%) of the equity interest with the power to direct the management and
policies of such non-corporate entities, and (c) in any country where local law does not permit
foreign entities to own stock or shares or have equity interest of fifty percent (50%) or more in
such entities, the direct or indirect ownership or control of the maximum percentage of such stock
or shares or equity interest as is permitted under local law.



     1.4 ALNYLAM means Alnylam Pharmaceuticals, Inc., a Delaware corporation, its
Affiliates (including its subsidiary, Alnylam U.S., Inc.), Alnylam Europe AG and its successors and
assigns.



     1.5 ALNYLAM Development Products means ALNYLAM Class 1 Development Products and
ALNYLAM Class 2 Development Products.



     1.6 ALNYLAM Field means, with respect to any Target, the use of prophylactic or
therapeutic RNAi Products or miRNA Products against such Target for the prevention or treatment of
human disease, and related Research, Development and Commercialization.



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     1.7 ALNYLAM Partnered Product means an RNAi Product or miRNA Product, as the case may
be, that is at the relevant time being Researched, Developed, and/or Commercialized by ALNYLAM with
the participation or sponsorship of one or more Third Parties or, prior to the end of the
Restriction Period, TEKMIRA. For clarity, it is understood and agreed that no RNAi Product or
miRNA Product developed or to be developed in a project or arrangement in which all or
substantially all of ALNYLAM’s contributions or anticipated contributions are or will be in the
form of the grant by ALNYLAM of licenses or sublicenses to one or more intellectual properties will
be considered an ALNYLAM Partnered Product.



     1.8 ALNYLAM Patent Rights means (a) the patents and patent applications listed on
Exhibit A-1 and all patent applications hereafter filed that derive priority from the
patents and patent applications listed on Exhibit A-1, including all continuations,
continuations-in-part, divisions, applications for certificate of invention, provisionals, or any
substitute applications, any patents issued with respect to any such patent applications; and all
reissues, substitutions, confirmations, re-registrations, re-examinations, supplementary protection
certificates, certificates of invention and patents of addition of any such patents; and all
foreign equivalents of any of the foregoing; and (b) the Exclusively Licensed Tekmira IP.
Moreover, solely with respect to the PROTIVA Development Target that is the Second Target, ALNYLAM
Patent Rights will also include the patents and patent applications listed on Exhibit A-1-A
and all patent applications hereafter filed by ALNYLAM that derive priority from the patents and
patent applications listed on Exhibit A-1-A, including all continuations,
continuations-in-part, divisions, applications for certificate of invention, provisionals, or any
substitute applications, any patents issued with respect to any such patent applications; and all
reissues, substitutions, confirmations, re-registrations, re-examinations, supplementary protection
certificates, certificates of invention and patents of addition of any such patents; and all
foreign equivalents of any of the foregoing.



     1.9 ALNYLAM Target means any Target that is neither the PLK Target nor a PROTIVA
Development Target, nor a Tekmira Development Target under (and as defined in) the ALNYLAM-TEKMIRA
License Agreement; provided, however, that the exclusion of the PLK Target will not apply
if PROTIVA provides notice to ALNYLAM that PROTIVA is terminating its license rights under this
Agreement with respect to RNAi Products or miRNA Products for the PLK Target.



     1.10 Approval means, with respect to each Licensed Product Developed and
Commercialized, the receipt of sufficient authorization from the appropriate regulatory authority
on a country-by-country basis to market and sell such Licensed Product in a country, including
(where necessary in a particular country prior to marketing a Licensed Product) all separate
pricing and/or reimbursement approvals that may be required for marketing



     1.11 Biodefense Targets means (a) a Target within the genome of one or more Category
A, B and C pathogens, as defined by the National Institute of Allergy and Infectious Diseases,
including without limitation, pathogens listed on Schedule 1.15 to the ALNYLAM-TEKMIRA
License Agreement, but specifically excluding influenza virus, or (b) an endogenous cellular Target
against which ALNYLAM Develops and/or Commercializes an ALNYLAM Development Product that is a
Licensed Product for commercial supply to one or more Funding Authorities.



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     1.12 Bona Fide Collaboration means a collaboration between a Party and one or more
Third Parties involving the Research and Development of one or more RNAi Products (and/or miRNA
Products in the case of ALNYLAM) and established under a written agreement in which (i) the scope
of the licenses granted, and financial or other commitments of value, are of material value to such
Party, and (ii) such Party undertakes and performs substantial, mutual research activity with the
Third Party. For purposes of clarity, it is understood and agreed that no collaboration in which
all or substantially all of ALNYLAM’s contributions or anticipated contributions are or will be in
the form of the grant by ALNYLAM of licenses or sublicenses to one or more intellectual properties
will be considered a Bona Fide Collaboration.



     1.13 Commercialize or Commercialization means any and all activities directed
to manufacturing (including, without limitation, by means of contract manufacturers), marketing,
promoting, distributing, importing, exporting and selling an RNAi Product (and/or an miRNA Product
in the case of ALNYLAM), in each case for commercial purposes, and activities directed to obtaining
pricing and reimbursement approvals, as applicable.



     1.14 Commercially Reasonable Efforts means the level of efforts and resources that
would be employed by ALNYLAM or PROTIVA as the case may be in connection with Researching,
Developing, and Commercializing its own products of similar market potential at a similar stage of
its product life, taking into account the apparent attributes of the molecule, the competitiveness
of the relevant marketplace, the proprietary positions of Third Parties, regulatory structures,
including the likelihood of obtaining an Approval, and the anticipated profitability of such
product.



     1.15 Confidential Information means all proprietary or confidential information and
materials, patentable or otherwise, of a Party which are disclosed by or on behalf of such Party to
the other Party hereunder, including, without limitation, chemical substances, formulations,
techniques, methodology, equipment, data, reports, know how, sources of supply, patent positioning,
business plans, and also including without limitation proprietary and confidential information of
Third Parties in possession of such Party under an obligation of confidentiality, whether or not
related to making, using or selling RNAi Products or miRNA Products.



     1.16 Develop, Developing or Development means with respect to an RNAi
Product (and/or an miRNA Product in the case of ALNYLAM), preclinical and clinical drug development
activities, including without limitation: test method development and stability testing,
toxicology, formulations, manufacturing scale-up, preclinical and clinical manufacture, quality
assurance/quality control development, statistical analysis and report writing; clinical studies
and regulatory affairs; Approval and registration.



     1.17 Exclusively Licensed Tekmira IP shall have the meaning ascribed to it in the
ALNYLAM-TEKMIRA License Agreement.



     1.18 FDA means the United States Food and Drug Administration or any successor agency
thereto.



     1.19 Field means, with respect to the PLK Target and any PROTIVA Development



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Target, the use of prophylactic or therapeutic RNAi Products against such Target for the
prevention or treatment of human disease, and related Research, Development and Commercialization.




     1.20 First Commercial Sale means, with respect to each Licensed Product, the first
commercial sale in a country as part of a nationwide introduction after receipt by a Product Seller
(as defined below) of Approval in such country, excluding de minimis named patient and
compassionate use sales.



     1.21 Formulation means a particular SNALP formulation, characterized by its components
and its unique ratios among components.



     1.22 Funding Authorities means the United States Department of Health and Human
Services or other United States or foreign government or international agencies responsible for
requesting, approving and/or funding the development and manufacture of products for biodefense
purposes.



     1.23 GAAP means United States generally accepted accounting principles applied on a
consistent basis. Unless otherwise defined or stated, financial references shall be calculated by
the accrual method under GAAP.



     1.24 Generic Claim means a claim in an issued or pending patent that meets the
following criteria:




	 	(a)	 	the claim recites a nucleic acid-lipid particle comprising: an siRNA or miRNA, at least
one cationic lipid, at least one non-cationic lipid, and a conjugated lipid that inhibits
aggregation of particles, and/or methods or uses of such particle in the delivery of siRNA or
miRNA; and
	 
	 	(b)	 	the claim does not recite any Particular Moiety or any particular or specific cationic
lipid, non-cationic lipid, or conjugated lipid.





     1.25 IND or Investigational New Drug Application means a United States
investigational new drug application or its equivalent or any corresponding foreign application.



     1.26 Joint Patent Rights means all patents and patent applications to the extent
specifically claiming inventions or improvements discovered or reduced to practice jointly by
PROTIVA and ALNYLAM (as determined in accordance with U.S. patent law) directly in the course of
work conducted after the Original Effective Date and before the Effective Date by them under the
Second Target Research Plan or under the R&D Research Plan, or conducted after the Effective Date
by them whether or not under the PLK Research Plan or the R&D Research Plan, together with all
patent applications hereafter filed that derive priority from such patents and patent applications,
including all continuations, continuations-in-part, divisions, applications for certificate of
invention, provisionals, or any substitute applications, any patents issued with respect to any
such patent applications; and all reissues, substitutions, confirmations, re-registrations,
re-examinations, supplementary protection certificates, certificates of invention and patents of
addition of any such patents; and all foreign equivalents of any of the foregoing.



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     1.27 Joint Steering Committee or JSC means the committee described in Section
6.1 of this Agreement.



     1.28 Lead Formulation is a Formulation that has been identified by PROTIVA and ALNYLAM
as being the end product of PROTIVA’s and ALNYLAM’s work under the R&D Research Plan (and, if
ALNYLAM exercises its Opt-In Right, also under the PLK Research Plan) for a particular ALNYLAM
siRNA payload(s) directed at a particular Target. It is expected that formulated materials using a
number of different initial Formulations would be delivered by PROTIVA to ALNYLAM, tested by
ALNYLAM, and (on the basis of such tests, and subsequent iterative tests if needed) culled or
otherwise adjusted by PROTIVA to the point where both parties believe that no further formulation
adjustments, or improvements are anticipated under the R&D Research Plan (or, as applicable, the
PLK Research Plan). That Formulation is the Lead Formulation in that situation.



     1.29 Licensed Information means all biological materials and other tangible materials,
information, data, inventions, practices, methods, protocols, formulas, formulations, knowledge,
know-how, trade secrets, processes, assays, skills, experience, techniques and results of
experimentation and testing, including without limitation pharmacological, toxicological and
preclinical and clinical test data and analytical and quality control data, patentable or
otherwise, which relates to the identification, characterization, optimization, construction,
expression, formulation, use or production of RNAi Products or miRNA Products and Formulations
thereof and which are reasonably useful or necessary to Research, Develop, or Commercialize such
RNAi Products or miRNA Products in the Territory in the ALNYLAM Field and are controlled by
PROTIVA; provided, however, that in no event shall Licensed Information include
Confidential Information of PROTIVA with respect to, or methods for the development of, the
chemistry, formulation or manufacture of RNAi Products or miRNA Products beyond the scope of the
information, materials and data described in Appendix II.



     1.30 Licensed Product means: (a) with respect to PROTIVA and its Affiliates and
Sublicensees, an RNAi Product, the identification, characterization, validation, synthesis,
development, use, formulation, manufacture, production or sale of which, where and when occurring,
would, but for the grant of a license or sublicense from ALNYLAM, infringe a Valid Claim of the
ALNYLAM Patent Rights; and (b) with respect to ALNYLAM and its Affiliates and Sublicensees, an RNAi
Product or miRNA Product, the identification, characterization, validation, synthesis, development,
use, formulation, manufacture, production or sale of which, where and when occurring, would, but
for the grant of a license or sublicense from PROTIVA, infringe a Valid Claim of the PROTIVA Patent
Rights.



     1.31 Major Market means, individually and collectively, [**].



     1.32 miRNA Product means a product containing, comprised of or based on native or
chemically modified RNA oligomers designed to either modulate microRNA transcripts (“miRNA”) and/or
provide the function of an miRNA.



     1.33 Necessary Third Party IP means, with respect to any country in the Territory, on
a country-by-country basis, information, materials, data, know-how or patent rights (including,



7









 




without limitation, all rights in patents and patent applications) in such country owned or
controlled by a Third Party that in the absence of a license would be infringed through the
manufacture, use or sale of, as applicable, (a) ALNYLAM Development Products that are Licensed
Products; (b) PROTIVA Development Products; and (c) Licensed Products for the PLK Target;
provided, however, that, for clarity, in each of (a), (b) and (c) above, information,
materials, data, know-how or patent rights (including, without limitation, all rights in patents
and patent applications) in such country owned or controlled by TEKMIRA and licensed to ALNYLAM
under the ALNYLAM-TEKMIRA License Agreement shall not be considered Necessary Third Party IP.




     1.34 Net Sales means, with respect to any Licensed Products, the gross amount
invoiced, with respect to Articles II and III hereof, by PROTIVA, its Affiliates or Sublicensees,
or, with respect to Article IV hereof, by ALNYLAM, its Affiliates or Sublicensees (in each case, a
“Product Seller”) on sales or other dispositions of such Licensed Products to Third Parties which
are not Affiliates or Sublicensees of the Product Seller, less, (a) to the extent allowed and
taken, sales returns and allowances, granted or accrued, including trade, quantity and cash
discounts and any other adjustments, including those granted on account of price adjustments,
billing errors, rejected goods, damaged or defective goods, recalls, returns, rebates, chargebacks,
reimbursements or similar payments granted or given to wholesalers or other distributors, buying
groups, health care insurance carriers or other institutions; (b) adjustments arising from consumer
discount programs or similar programs, or arising in connection with any Discount or Savings
Program (as defined below); (c) customs or excise duties, sales tax, consumption tax, value added
tax, and other similar taxes (except income taxes) measured by the production, sale, or delivery of
goods; (d) duties relating to sales and any payments in respect of sales to the United States
government, any State government or any foreign government, or to any governmental authority, or
with respect to any government subsidized program or managed care organization; and (e) charges for
freight and insurance related to the return of Licensed Products and not otherwise paid by the
customer. For purposes of this definition of “Net Sales” only, “Discount or Savings Program” means
any discount, rebate or reimbursement program applicable to a Licensed Product under which the
Product Seller provides to low income, uninsured or other patients the opportunity to purchase
pharmaceutical products at discounted prices.


In the event that a Licensed Product is sold in any country in the form of a combination product
containing one or more therapeutically active ingredients in addition to such Licensed Product in
any year, Net Sales of such combination product will be adjusted by multiplying actual Net Sales of
such combination product in such country by the fraction A/(A+B), where A is the average Net Sales
price per daily dose during such year of the Licensed Product in such country, if sold separately
in such country, and B is the average Net Sales price per daily dose of any product containing the
other therapeutically active ingredients in the combination product in such country, if sold
separately in such country. If, in a specific country, the product containing the other
therapeutically active ingredients in the combination product are not sold separately in such
country, Net Sales will be calculated by multiplying actual Net Sales of such combination product
by the fraction A/C, where A is the average Net Sales price per daily dose of the Licensed Product
in such country and C is the average Net Sales price per daily dose of the combination product in
such country. If, in a specific country, the Licensed Product is not sold






8









 







separately in such country, Net Sales will be calculated by multiplying actual Net Sales of such
combination product by the fraction (C-B)/C, where B is the average Net Sales price per daily dose
of the product containing the other therapeutically active ingredients in the combination product
in such country and C is the average Net Sales price per daily dose of the combination product in
such country. If, in a specific country, both the Licensed Product and the product containing the
other therapeutically active ingredients in the combination product are not sold separately in such
country, the Net Sales price for the Licensed Product and the product containing the other
therapeutically active ingredients in the combination product will be negotiated by the Parties in
good faith based upon the costs, overhead and profit as are then incurred for the Licensed Product
and all similar substances then being made and marketed by the selling Party and having an
ascertainable market price.



In the event a Product Seller receives non-monetary consideration in exchange for the sale or other
disposition of Licensed Products to Third Parties that are not Affiliates or Sublicensees of the
Product Seller, Net Sales for such sale or other disposition shall include the fair market value of
the non-cash consideration received as a result of such sale or other disposition. If such sale or
other disposition occurred in a country where such Product Seller, within the preceding six months,
sold the same Licensed Product in commercial quantities solely for monetary consideration, the fair
market value of the non-cash consideration received for such Licensed Product shall be determined
on the basis of the value received in such solely monetary transactions. If such Product Seller
did not have sales or other dispositions of Licensed Product in such country solely for monetary
consideration in such six-month period, then the fair market value of such products shall be
determined on the basis of all relevant facts and circumstances.



In the event that the Product Seller prices and sells Licensed Products in conjunction with other
products of such Product Seller at a single price or rate or at a discount for collectively buying
such products, then Net Sales with respect to such Licensed Product shall equal the number of units
of the Licensed Product sold together with the non-Licensed Products multiplied by the average Net
Sales price at which the Product Seller sold the Licensed Product individually to similar customers
for similarly sized orders.



Net Sales shall be determined from books and records maintained in accordance with generally
accepted accounting principles in the United States, consistently applied throughout the
organization and across all products of the entity whose sales of Licensed Product are giving rise
to Net Sales.




     1.35 Opt-In Period is defined in Section 2.8.



     1.36 Opt-In Right is defined in Section 2.8.



     1.37 Original Effective Date means August 14, 2007.



     1.38 Particular Moiety means a specific nucleotide sequence of an RNAi Product or
miRNA Product, in either case directed against a particular individual Target.



9









 





     1.39 Party means either ALNYLAM or PROTIVA; Parties means both ALNYLAM and
PROTIVA.



     1.40 Phase I Clinical Trial means the first study of a Licensed Product in humans the
primary purpose of which is the determination of safety and which may include the determination of
pharmacokinetic and/or pharmacodynamic profiles in healthy individuals or patients.



     1.41 Phase II Clinical Trial means (a) a study of dose exploration, dose response,
duration of effect, kinetics or preliminary efficacy and safety study of a Licensed Product in the
target patient population, or (b) a controlled dose-ranging clinical trial to evaluate further the
efficacy and safety of such Licensed Product in the target population and to define the optimal
dosing regimen.



     1.42 Phase III Clinical Trial means a controlled study of a Licensed Product in
patients of the efficacy and safety of such Licensed Product which is prospectively designed to
demonstrate statistically whether such Licensed Product is effective and safe for use in a
particular indication in a manner sufficient to obtain Approval to market such Licensed
Product.



     1.43 PLK Research Plan means the plan described in Section 2.3 of this Agreement.



     1.44 PLK Target means polo-like kinase 1 as more specifically described in
Appendix I.



     1.45 PLK Term means the period of time commencing on the Effective Date and ending
upon the expiration or abandonment of all issued patents and filed applications within the ALNYLAM
Patent Rights or the earlier notice by PROTIVA to ALNYLAM that PROTIVA is terminating its license
rights under this Agreement with respect to RNAi Products for the PLK Target.



     1.46 PROTIVA means Protiva Biotherapeutics Inc., a Canadian corporation, its
Affiliates (including its subsidiary, Protiva Biotherapeutics (USA), Inc., but excluding, solely
for purposes of this definition, TEKMIRA), and its successors and assigns.



     1.47 PROTIVA Patent Rights means:




	 	(a)	 	the following (collectively the “Class 1 PROTIVA Patent
Rights”):






	 	(1)	 	the patents and patent applications listed onExhibit A-2;
	 
	 	(2)	 	all Generic Claims as reflected in any of the
patents and patent applications described in subsection 1.47(b)(i);
	 
	 	(3)	 	all Generic Claims as reflected in any patents
or patent applications claiming intellectual property discovered or
reduced to practice solely by PROTIVA directly in the course of work
conducted by it following the Original Effective Date and prior to the
Effective Date under the Second Target Research Plan or following the





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	 	 	 	Effective Date under the PLK Research Plan (prior to, but not after, the end of
the Opt-In Period, if ALNYLAM fails to exercise its Opt-In Right) or
under the R&D Research Plan; and
	 
	 	(4)	 	all Generic Claims as reflected in any patents
or patent applications claiming intellectual property owned or
controlled by PROTIVA and that are useful or necessary for Researching,
Developing, or Commercializing an RNAi Product or miRNA Product in the
ALNYLAM Field;




together with all Generic Claims in patent applications hereafter filed that derive priority from
the patents and patent applications described in (1), (2), (3) or (4) above, including all
continuations, continuations-in-part, divisions, applications for certificate of invention,
provisionals, or any substitute applications, any Generic Claims in patents issued with respect to
any such patent applications; and all reissues, substitutions, confirmations, re-registrations,
re-examinations, supplementary protection certificates, certificates of invention and patents of
addition of any such claims; and all foreign equivalents of any of the foregoing; and





	 	(b)	 	the following (collectively the “Class 2 PROTIVA Patent
Rights”):






	 	(1)	 	claims (other than Generic Claims and
Target-Specific Claims) as reflected in the patents and patent
applications listed on Exhibit A-3;






	 	(2)	 	claims (other than Generic Claims) as reflected
in all patents and patent applications claiming intellectual property
discovered or reduced to practice solely by PROTIVA directly in the
course of work conducted by it following the Original Effective Date
and prior to the Effective Date under the Second Target Research Plan
or following the Effective Date under the PLK Research Plan (prior to,
but not after, the end of the Opt-In Period, if ALNYLAM fails to
exercise its Opt-In Right) or under the R&D Research Plan; and






	 	(3)	 	claims (other than Generic Claims and
Target-Specific Claims) as reflected in all patents and patent
applications claiming intellectual property owned or controlled by
PROTIVA and that is useful or necessary for Researching, Developing, or
Commercializing an RNAi Product or miRNA Product in the ALNYLAM Field,




together with all claims (other than Generic Claims and Target-Specific Claims) in patent
applications hereafter filed that derive priority from the patents and patent applications
described in (1) or (3) above, and all claims (other than Generic Claims) in patent applications
hereafter filed that derive priority from the patents and patent applications described in (2)
above, including all continuations, continuations-in-part, divisions, applications for certificate
of invention, provisionals, or any substitute applications, any claims (other than Generic Claims) in





11









 







patents issued with respect to any such patent applications; and all reissues, substitutions,
confirmations, re-registrations, re-examinations, supplementary protection certificates,
certificates of invention and patents of addition of any such claims; and all foreign equivalents
of any of the foregoing.




     1.48 R&D Program Product means the Formulations that are related to RNAi Product(s)
and/or miRNA Products(s) developed under the R&D Research Plan under this Agreement and/or under
the Research Plan (as defined in the ALNYLAM-TEKMIRA License Agreement) for which ALNYLAM has
established an Active Internal Development Program.



     1.49 R&D Research Plan means the plan described in Section 5.4 of this Agreement.



     1.50 Research or Researching means identifying, evaluating, validating and
optimizing RNAi Products (and/or miRNA Products in the case of ALNYLAM).



     1.51 RNAi Product means a product containing, comprised of or based on siRNAs or siRNA
derivatives or other double-stranded moieties effective in gene function modulation and designed to
modulate the function of particular genes or gene products by causing degradation through RNA
interference of a Target mRNA to which such siRNAs or siRNA derivatives or moieties are
complementary.



     1.52 Royalty Quarter means each of the four (4) calendar quarters that begin January
1, April 1, July 1 and October 1 of each year



     1.53 Second Target means the Target described in Appendix I.



     1.54 Second Target Research Plan means the research plan for the Second Target
described in the Original Cross-License Agreement, and in effect as of the Effective Date.



     1.55 siRNA means a double-stranded ribonucleic acid (RNA) composition designed to act
primarily through an RNA interference mechanism that consists of either (a) two separate oligomers
of native or chemically modified RNA that are hybridized to one another along a substantial portion
of their lengths, or (b) a single oligomer of native or chemically modified RNA that is hybridized
to itself by self-complementary base-pairing along a substantial portion of its length to form a
hairpin.



     1.56 Sublicensee means a Third Party that is not an Affiliate of a Party, to whom such
Party (or another permitted sublicensee of such Party under this Agreement) grants a sublicense of
all or a portion of the rights licensed to it hereunder as permitted herein, including the right to
manufacture or have manufactured a Licensed Product. A Sublicensee will be deemed to include any
Third Party who is granted a sublicense hereunder by such Party pursuant to the terms of the
outcome or settlement of any infringement or threatened infringement action.



     1.57 Target means (a) a polypeptide or entity comprising a combination of at least one
polypeptide and other macromolecules, that is a site or potential site of therapeutic intervention
by a therapeutic agent; or a nucleic acid which is required for expression of such polypeptide,
together with all variants of such polypeptide, cellular entity or nucleic acid described
above; (b)



12









 




a defined non-peptide entity, including a microorganism, virus, bacterium or single cell
parasite; provided that the entire genome of a microorganism, virus, bacterium, or single
cell parasite shall be regarded as a single Target; or (c) a naturally occurring interfering RNA or
miRNA or precursor thereof.




     1.58 Target-Specific Claim means a claim in an issued or pending patent that recites
one or more specified Particular Moiety(ies).



     1.59 Territory means worldwide. For clarity, at any time the Territory will not
include any country to which the exportation or re-exportation of materials, products and related
technical data covered by this Agreement is restricted by the laws, rules or executive orders of
the federal government of the United States, which restriction has not been removed or waived.



     1.60 Third Party(ies) means any person or entity other than PROTIVA, ALNYLAM, and
their respective Affiliates.



     1.61 Valid Claim means (a) any claim in an issued and unexpired patent within the
ALNYLAM Patent Rights or PROTIVA Patent Rights, as applicable, which has not been held
unenforceable, unpatentable or invalid by a decision of a court or other governmental agency of
competent jurisdiction, which decision is unappealable or unappealed within the time allowed for
appeal, and which has not been admitted by the holder of the patent to be invalid or unenforceable
through reissue, re-examination, or disclaimer or otherwise and (b) a patent application within the
ALNYLAM Patent Rights or PROTIVA Patent Rights, as applicable, a claim of which has been pending
less than five (5) years and which claim has not been cancelled, withdrawn or abandoned or finally
rejected by an administrative agency action from which no appeal can be taken.



	 	 	 
	 	 	Section
	Additional Defined Terms	 	Reference
	ALNYLAM Class 1 Development Product
	 	4.1(a)
	ALNYLAM Class 2 Development Product
	 	4.1(b)
	ALNYLAM Data
	 	5.6
	ALNYLAM Indemnitee
	 	10.1
	ALNYLAM-TEKMIRA License Agreement
	 	Recitals
	ALNYLAM Subscription Agreement
	 	Recitals
	Analytical Report
	 	5.4(b)
	Class 1 PROTIVA Patent Rights
	 	1.47(a)
	Class 2 PROTIVA Patent Rights
	 	1.47(b)
	Change of Control
	 	14.7
	Closing
	 	Recitals
	Discount or Savings Program
	 	13.7
	Effective Date
	 	12.1
	Escrow Agreement
	 	Recitals
	Excluded Claim
	 	14.2(a)
	FTE
	 	5.2






13









 






	 	 	 
	 	 	Section
	Additional Defined Terms	 	Reference
	Follow-On Product
	 	3.7
	Licensee
	 	9.1
	Losses
	 	10.1
	[**]
	 	Recitals
	[**] Restriction
	 	2.1
	[**]
	 	Recitals
	miRNA
	 	1.33
	Novartis
	 	3.2
	Novartis Agreement
	 	3.2
	Original ALNYLAM-TEKMIRA License Agreement
	 	Recitals
	Original Cross-License Agreement
	 	Recitals
	Product Seller
	 	1.36
	Prosecuting Party
	 	7.2(c)
	PROTIVA Development Product
	 	3.1
	PROTIVA Development Target
	 	3.1
	PROTIVA Indemnitee
	 	10.2
	Purchase Agreement
	 	Recitals
	Research Term
	 	5.1
	Restriction Period
	 	13.1
	Restricted Joint Invention
	 	13.4
	RNAi
	 	Recitals
	ROCHE
	 	Recitals
	ROCHE-NUTLEY
	 	4.1(c)
	ROCHE Sublicensee
	 	4.1(c)
	ROCHE Subscription Agreement
	 	Recitals
	Significant Pharmaceutical Company
	 	14.6
	SNALP Technology
	 	Recitals
	Substances
	 	5.4(c)
	Successful Biodefense Product
	 	4.10
	Successful Product
	 	3.7
	Target Response Notice
	 	3.2
	TEKMIRA
	 	Recitals
	Tekmira Development Target
	 	1.9
	Tekmira Facilities Option
	 	13.2
	Third Party Claim
	 	7.8(a)
	Transaction Document
	 	12.2(e)






14









 






ARTICLE II — PLK LICENSE GRANT AND OPT-IN RIGHTS




     2.1 License of ALNYLAM Patent Rights.



     (a) Subject to the provisions of Article XIII, ALNYLAM grants to PROTIVA a non-exclusive
royalty-bearing right and license under the ALNYLAM Patent Rights, subject to the terms and
conditions of the in-license(s) identified on Exhibit B governing ALNYLAM’s rights, and
under ALNYLAM’s interest in Joint Patent Rights, only for purposes of Researching, Developing and
Commercializing RNAi Products for the PLK Target in the Field in the Territory. The license
granted in this Section 2.1 will be in effect for the PLK Term.



     (b) During the PLK Term and prior to the expiration of the Opt-In Period, PROTIVA will have no
right to grant sublicenses to any Third Party under the license granted in this Section 2.1 without
the prior written consent of ALNYLAM. Following the expiration of the Opt-In Period: (i) if
ALNYLAM has duly exercised its Opt-In Right, such restriction on sublicensing will be continued and
will be made part of the Parties’ co-development and co-commercialization agreement referred to in
Section 2.8(a); and (ii) if ALNYLAM has not exercised its Opt-In Right, the license granted in this
Section 2.1 will thereafter include the right for PROTIVA to grant a sublicense or sublicenses to
one or more Third Parties, provided the sublicensed RNAi Product(s) either (a) incorporate or
exploit material intellectual property rights (such as, without limitation, patents and/or
Confidential Information) owned or controlled by PROTIVA, other than Valid Claims of the ALNYLAM
Patent Rights and/or (b) are substantially developed by PROTIVA in a Bona Fide Collaboration with
such Third Party. Notwithstanding the foregoing, (i) in no event may PROTIVA or its Affiliates
grant a sublicense under any of the Exclusively Licensed Tekmira IP to the [**] under the licenses
granted in this Section 2.1 or Section 3.3 (the “[**] Restriction”) and (ii) in all events, any
sublicense granted under this Section 2.1(b) shall be subject to the terms of Article XIII.



     2.2 Retained Rights of ALNYLAM. ALNYLAM expressly retains any rights not expressly
granted to PROTIVA under this Article II (or otherwise under this Agreement). ALNYLAM represents
and warrants that it has the right to grant the license under the ALNYLAM Patent Rights provided in
Section 2.1 with respect to the PLK Target.



     2.3 PLK Research Plan. On or prior to the Effective Date PROTIVA has, with ALNYLAM’s
approval, prepared a research plan setting out the primary activities to be conducted by PROTIVA
with respect to the PLK Target (the “PLK Research Plan”). Such PLK Research Plan is attached to
this Agreement as Exhibit C. PROTIVA will fund and be responsible for conducting all
activities under the PLK Research Plan or otherwise warranted by the terms and conditions of this
Agreement.



     2.4 Role of JSC. The conduct of the PLK Research Plan will be coordinated by the
Joint Steering Committee. The JSC will attempt to act by consensus in respect of all matters
arising under or in connection with the PLK Research Plan. If such a consensus is not obtainable
with respect to a matter, PROTIVA’s representatives on the JSC will, prior to an exercise by
ALNYLAM of the Opt-In Right, have the deciding vote on that matter so long as they exercise such
right in a manner that is consistent with this Agreement.



15









 





     2.5 Conduct of Activities and Commercially Reasonable Efforts. PROTIVA shall use
Commercially Reasonable Efforts to carry out Research, Development, and Commercialization of RNAi
Products directed at the PLK Target on a sustained basis in a continuing program for Development
and Commercialization during the PLK Term. The activities of PROTIVA’s Affiliates, Sublicensees,
subcontractors, collaborators, transferees, and successors shall be attributed to PROTIVA for
purposes of determining PROTIVA’s satisfaction of the foregoing diligence obligations. If PROTIVA
uses any Third Party contract resources to conduct part or all of its activities under the PLK
Research Plan, it shall obtain agreements from such contractor(s) providing for rights in favor of
ALNYLAM, substantially equivalent to the rights ALNYLAM would have had if PROTIVA had done the work
itself.



     2.6 Regulatory Filings. PROTIVA, its Affiliates or Sublicensees will be responsible
for preparing, filing, and prosecuting all appropriate governmental applications and/or filings to
obtain Approval of RNAi Products for the PLK Target during the Opt-In Period. Except as may be
otherwise agreed in the co-development agreement in the event that ALNYLAM exercises its Opt-In
Right, PROTIVA, its Affiliates or Sublicensees will own and maintain all such applications and/or
filings and Approvals of the RNAi Products for the PLK Target.



     2.7 Reporting.



     (a) General. Promptly after the Effective Date, and on an on-going basis thereafter
(at least once each Calendar Quarter), PROTIVA will provide to ALNYLAM and the JSC all
then-existing Licensed Information in respect of RNAi Products for the PLK Target (including but
not limited to preclinical pharmacology, toxicology, clinical and regulatory plans and data), to
enable ALNYLAM to evaluate and decide whether to exercise its Opt-In Right with respect to
co-development of RNAi Products for the PLK Target and to enable the JSC to assess the progress and
direction of PROTIVA’s research activities.



     (b) Clinical Events. PROTIVA will notify ALNYLAM in writing within five (5) business
days of the dosing of the first patient in a Phase II Clinical Trial and in a Phase III Clinical
Trial for each Licensed Product for the PLK Target.



     2.8 Opt-In Right for Co-Development and Co-Commercialization.



     (a) At any time during the period commencing on the Effective Date and ending sixty (60) days
following the dosing of the first patient in a Phase II Clinical Trial in respect of an RNAi
Product for the PLK Target or the selection of a back-up to such an RNAi Product (if applicable);
or, if sooner, ending on the date on which ALNYLAM notifies PROTIVA that ALNYLAM does not intend to
exercise its Opt-In Right (the “Opt-In Period”), ALNYLAM may exercise its right to co-develop and
co-commercialize RNAi Products for the PLK Target with PROTIVA (“Opt-In Right”) by providing
written notice to PROTIVA. Upon provision of such written notice, the Parties agree to negotiate
and complete a written agreement providing for the co-development and co-commercialization of the
RNAi Products for the PLK Target by the Parties in accordance with the terms and conditions set
forth in Appendix IV to this Agreement. Upon the full execution of such agreement, the
terms in Sections 2.10 and 2.11 of this Agreement will no longer apply. The Parties agree (i) that
the terms and conditions set forth in



16









 




Appendix IV will be binding on the Parties and in effect upon the exercise by ALNYLAM
of its Opt-In Right and (ii) to use good faith efforts to complete the definitive agreement within
[**] following ALNYLAM’s exercise of its Opt-In Right.




     (b) If ALNYLAM does not exercise its Opt-In Right or notifies PROTIVA in writing that it does
not intend to exercise its Opt-In Right with respect to RNAi Products for the PLK Target, PROTIVA
may, subject to the terms of Article XIII and the [**] Restriction, continue its activities under
the PLK Research Plan and/or undertake different or altered activities in its discretion.
Additionally, PROTIVA may at any time thereafter notify ALNYLAM in writing if PROTIVA wishes to
terminate its license rights under this Agreement with respect to RNAi Products for the PLK Target.
If ALNYLAM has not exercised its Opt-In Right or elects not to exercise its Opt-In Right, and if
PROTIVA notifies ALNYLAM in writing that it wishes to terminate its license rights in respect of
the PLK Target, rights granted to PROTIVA under the ALNYLAM Patent Rights with respect to the PLK
Target herein will terminate immediately.



     (c) PLK Research Plan Information and Materials. In the event that PROTIVA wishes to
terminate its activities under the PLK Research Plan, PROTIVA will provide written notice to
ALNYLAM. If such termination notice is made prior to the end of the Opt-In Period, PROTIVA will
promptly provide to ALNYLAM all then-existing Licensed Information with respect to any Formulation
with respect to the PLK Target, to the extent such Licensed Information has not previously been
provided to ALNYLAM. For purposes of clarity, any activities of ALNYLAM in respect of the PLK
Target after termination of PROTIVA’s license hereunder with respect to the PLK Target will be
subject to the terms and conditions of Article IV of this Agreement to the extent relevant to the
PROTIVA Patent Rights.



     2.9 Initial Fee. In connection with the rights granted and other terms of this
Agreement, ALNYLAM has previously paid to PROTIVA three million U.S. dollars ($3,000,000) and
PROTIVA acknowledges the full receipt of such payment.



     2.10 Milestone Payments with Respect to Licensed Products for the PLK Target. With
respect to Licensed Products for the PLK Target and the achievement by PROTIVA, its Sublicensees or
Affiliates of the milestone events in the table below for Licensed Products for the PLK Target,
PROTIVA will provide written notice to ALNYLAM of the occurrence of a milestone event within [**]
of such event, and pay the indicated milestone fee to ALNYLAM within [**] after the occurrence of
the relevant event (all references are to U.S. dollars). Milestone payments will be due only once
and only in respect of the first Licensed Product for the PLK Target being Developed by PROTIVA, or
an Affiliate or Sublicensee for which the milestone event is achieved.



	 	 	 
	Milestone Event	 	Milestone Fee
	[**]*

	 	[**]
	[**]

	 	[**]
	[**]

	 	[**]
	[**]

	 	[**]
	[**]

	 	[**]
	[**]

	 	[**]






17









 





*The due date of the payment for this milestone event will be upon the end of the Opt-In Period and
only if ALNYLAM does not exercise the Opt-In Right.



In the event one or more milestone events set out above are skipped for any reason, the payment for
such skipped milestone event(s) will be due at the same time as the payment for the next achieved
milestone event.




     2.11 Royalties on Licensed Products for the PLK Target.



     (a) Royalties on Net Sales will be due and payable by PROTIVA to ALNYLAM on a Licensed
Product-by-Licensed Product basis in respect of Licensed Products for the PLK Target and on a
country-by-country basis in the Territory until the expiration of the last Valid Claim covering
such Licensed Product in such country. Beginning with the first Royalty Quarter in which a First
Commercial Sale in a country occurs, and during subsequent Royalty Quarters, running royalties are
payable on Net Sales in the Territory in accordance with the applicable running royalty rates set
out in subsections (b) of this Section 2.11. If at the time of the First Commercial Sale or at any
time thereafter all of ALNYLAM’s Valid Claims covering a Licensed Product expire in a particular
country, then such RNAi Product shall be royalty-free in such country; provided,
however, that if one or more additional Valid Claims of ALNYLAM covering such Licensed
Product thereafter issue in such country, such Licensed Product shall thereafter be royalty-bearing
in such country for all Net Sales of such Licensed Product in such country occurring after the date
of such issuance until expiration of such Valid Claims. No royalties will be payable more than once
by PROTIVA with respect to any single unit of Licensed Product.



     (b) Subject to subsection (a) of this Section 2.11, royalties will be due to ALNYLAM in
accordance with the applicable rate in the table below (all references are to U.S. dollars):



	 	 	 
	Aggregate Annual Net Sales	 	Royalty Rate
	On the first [**]

	 	[**]
	On the subsequent[**]

	 	[**]
	On the subsequent [**]

	 	[**]
	Greater than [**]

	 	[**]






     (c) The royalties due to ALNYLAM under this Section 2.11 may be reduced on a
country-by-country basis in the Territory by the amount of royalties due to Third Parties as a
result of the in-license of Necessary Third Party IP; provided, however, that
royalties due to ALNYLAM under this Section 2.11 may not be reduced by more than one-third of the
royalties otherwise due (and will not in any case be reduced below [**] of the amount of royalties
that would otherwise be due, e.g. for Net Sales up to and including [**] the minimum effective
royalty rate would be [**]. For purposes of illustration only, if annual Net Sales of a License



18









 




Product for the PLK Target are [**], and royalties due in respect of Necessary Third Party IP
for the sale of such product total [**] of Net Sales (or [**]), royalties due to ALNYLAM may be
reduced only by [**] which is determined as follows: maximum reduction is [**] of the royalty due
on Net Sales of [**], calculated by [**].




     2.12 Term of PLK License. Unless terminated sooner as described in Article XII, the
term of the licenses granted to PROTIVA with respect to the PLK Target commenced on the Effective
Date and ends upon the expiration or abandonment of all issued patents and filed applications
within the ALNYLAM Patent Rights; provided, however, that following the expiration
of such license at the end of such term, PROTIVA and its Affiliates or Sublicensees shall have the
worldwide, perpetual and paid-up right to Research, Develop, and Commercialize any RNAi Product
directed at the PLK Target to the extent not covered by other patent rights.



     2.13 Effect upon Second Target Research Plan. The Parties hereby agree that, while
PROTIVA may at its option continue work under the Second Target Research Plan and otherwise on the
Second Target as a PROTIVA Development Target, ALNYLAM will no longer (as of the Effective Date)
support that work, or by virtue of its payment of the Initial Fee, be deemed to be supporting that
work.



ARTICLE
III — Target-by-Target License to PROTIVA under ALNYLAM Patent Rights




     3.1 PROTIVA Development Targets. During the [**] period beginning on the Original
Effective Date, PROTIVA may select up to three (3) Targets with respect to which PROTIVA shall
Research, Develop and Commercialize RNAi Products directed to such Targets under the ALNYLAM Patent
Rights (each such Target, a “PROTIVA Development Target”, and each such RNAi Product, a “PROTIVA
Development Product”). For clarity, the Parties acknowledge that the three PROTIVA Development
Targets shall be in addition to the three (3) Tekmira Development Targets that are the subject of
the ALNYLAM-TEKMIRA License Agreement. The Parties acknowledge that the selection of each PROTIVA
Development Target (other than the Second Target) is subject to Novartis’ right of first offer
under the Novartis Agreement and to other binding ALNYLAM obligations to Third Parties pre-existing
the date of PROTIVA’s notice to ALNYLAM of PROTIVA’s selection of such Target. Effective as of the
Effective Date, the Parties hereby agree that the Second Target shall be one of the three (3)
PROTIVA Development Targets under this Agreement, and that Section 3.2 will not be applicable to
the Second Target.



     3.2 Selection Process. The following process shall apply to the selection of PROTIVA
Development Targets. As to Targets that are peptide entities, PROTIVA shall initially notify
ALNYLAM in writing of the NCBI Gene ID number (or, if a NCBI Gene ID number is not available, the
specific sequence of the proposed Target) of each Target nominated by PROTIVA for selection as a
PROTIVA Development Target. As to Targets that are non-peptide entities, PROTIVA shall initially
notify ALNYLAM in writing of the non-peptide entity. Within [**] following ALNYLAM’s receipt of a
notice nominating a Target, ALNYLAM shall notify PROTIVA in writing (a “Target Response Notice”)
whether such Target is either: (a) subject to a binding contractual obligation to a Third Party
that would be breached by the inclusion of such Target as a PROTIVA Development Target under these
terms, or (b) the




19












 




subject of an Active Internal Development Program at ALNYLAM and such Active Internal
Development Program was in existence as such prior to the receipt of such notice from PROTIVA and
ALNYLAM determines in good faith that it intends to continue such Active Internal Development
Program, and so notifies PROTIVA. If neither of these criteria applies, the Target shall be
considered to have been successfully nominated as a PROTIVA Development Target. ALNYLAM shall use
commercially reasonable efforts consistent with the terms of the Novartis Agreement to obtain
Novartis’ consent to the selection by PROTIVA of such Target as a PROTIVA Development Target under
these terms, and shall notify PROTIVA in writing as to whether or not such Target is available for
license hereunder. If a Target submitted to ALNYLAM is not so available for license as a PROTIVA
Development Target, then PROTIVA may nominate an additional Target as a PROTIVA Development Target,
until two (2) PROTIVA Development Targets (in addition to the Second Target) have been identified
and approved for selection pursuant to the foregoing procedure; provided, that PROTIVA may
not have pending at any given time more than two (2) proposed Targets to ALNYLAM for evaluation
pursuant to the foregoing procedure (in addition to any Tekmira Development Targets or candidate
Tekmira Development Targets submitted or pending under the ALNYLAM-TEKMIRA License Agreement). Any
Target approved by ALNYLAM for selection pursuant to the foregoing procedure shall be a PROTIVA
Development Target. As used herein, “Novartis Agreement” means that certain Research Collaboration
and License Agreement between Novartis Institutes for BioMedical Research, Inc. (“Novartis”) and
ALNYLAM dated October 12, 2005, as amended by the Addendum Re: Influenza Program to Research
Collaboration and License Agreement effective as of February 17, 2006, and as further amended from
time to time.




     3.3 License. Subject to the provisions of Article XIII and the terms and conditions
of the in-licenses identified on Exhibit B governing ALNYLAM’s rights, ALNYLAM will grant
to PROTIVA a non-exclusive license under the ALNYLAM Patent Rights and under ALNYLAM’s interest in
Joint Patent Rights with respect to up to three (3) PROTIVA Development Targets, to Research,
Develop and Commercialize PROTIVA Development Products covered by such ALNYLAM Patent Rights in the
Field in the Territory. Such license will be royalty-bearing with respect to PROTIVA Development
Products covered by Valid Claims of the ALNYLAM Patent Rights and will include the right to grant
sublicenses to Third Parties to Research, Develop and Commercialize PROTIVA Development Product(s),
provided such PROTIVA Development Product(s) either (a) incorporate or exploit material
intellectual property rights (such as, without limitation, patents and/or Confidential Information)
owned or controlled by PROTIVA, other than such Valid Claims of the ALNYLAM Patent Rights and/or
(b) are substantially developed by PROTIVA in a Bona Fide Collaboration with such Third Party. A
copy of the fully executed sublicense agreement will be promptly provided to ALNYLAM.
Notwithstanding the foregoing, (i) any sublicense, to the extent applicable to any Exclusively
Licensed Tekmira IP, shall be subject to the [**] Restriction and (ii) in all events, any
sublicense granted under this Section 3.3 shall be subject to the terms of Article XIII.



     3.4 Term. Unless terminated sooner as described in Article XII, the term of the
license grant in respect of each PROTIVA Development Target begins upon the approval of a Target as
a PROTIVA Development Target (or in the case of the Second Target, upon the Effective Date, it
being understood and agreed that PROTIVA held certain licenses under the Original Cross License
Agreement with respect to the Second Target from the Original Effective



20









 




Date through the Effective Date) and ends upon the expiration or abandonment of all issued
patents and filed applications within the ALNYLAM Patent Rights; provided, however, that following
the expiration of such license at the end of such term, PROTIVA and its Affiliates or Sublicensees
shall have the worldwide, perpetual and paid-up right to Research, Develop, and Commercialize any
PROTIVA Development Product to the extent not covered by other patent rights.




     3.5 Sublicense.



     (a) Any sublicense granted by PROTIVA pursuant to Section 3.3 shall be subject and subordinate
to the terms and conditions of this Agreement and shall contain terms and conditions consistent
with those in this Agreement, including, without limitation, the requirements of Section 3.6 below.
Agreements with any Sublicensee shall contain the following provisions: (a) a requirement that
such Sublicensee submit applicable sales or other reports consistent with those required hereunder;
(b) an audit requirement similar to the requirement set forth in Section 9.5; and (c) a requirement
that such Sublicensee comply with the confidentiality and non-use provisions of Article VIII.
PROTIVA shall assume full responsibility for the performance of all obligations and observance of
all terms herein under the licenses granted to PROTIVA Development Targets and will itself pay and
account to ALNYLAM for all payments due under such licenses by reason of such sublicense.
Sublicenses under the license granted to PROTIVA Development Targets will remain in full force and
effect in the event of any termination of such license, provided that Sublicensee(s) are in
compliance with the sublicense agreement (or are in compliance within thirty (30) days of the
termination) and agree in writing with ALNYLAM to the same terms and conditions as in the
sublicense agreement. In the event PROTIVA becomes aware of a material breach of any sublicense by
a Sublicensee, PROTIVA shall promptly notify ALNYLAM of the particulars of same and take all
reasonable efforts to enforce the terms of such sublicense.



     (b) Unless otherwise provided in this Agreement, PROTIVA will notify ALNYLAM within ten (10)
business days after execution of a sublicense entered into under Section 3.3 and provide a copy of
the fully executed sublicense agreement to ALNYLAM within the same time frame (with such reasonable
redactions as PROTIVA may make, provided that such redactions do not include provisions
necessary to demonstrate compliance with the requirements of this Agreement), which shall be
treated as Confidential Information under Article VIII; and provided further that ALNYLAM
may disclose such agreement(s) to Third Parties under confidence if and to the extent required in
order to comply with ALNYLAM’s contractual obligations under both this Agreement and Third Party
agreements.



     3.6 Retained Rights of ALNYLAM. ALNYLAM expressly retains any rights not expressly
granted to PROTIVA under this Article III (or otherwise under this Agreement). ALNYLAM represents
and warrants that it has the right to grant the license under the ALNYLAM Patent Rights provided in
Section 3.3.



     3.7 Milestones with Respect to PROTIVA Development Products. On a Licensed
Product-by-Licensed Product basis for PROTIVA Development Products that are Licensed Products,
payments will be due by PROTIVA to ALNYLAM based upon the achievement of



21









 




certain milestone events as set forth in the table below (all references are to U.S. dollars).
PROTIVA will provide written notice to ALNYLAM of the occurrence of a milestone event within
[**] of such event, and pay the indicated milestone fee to ALNYLAM within [**] after the occurrence
of the relevant event.



Capitalized terms in the chart below shall be read in context to apply to PROTIVA Development
Products that are Licensed Products.




	 	 	 
	Milestone Event	 	Milestone Fee
	[**]

	 	[**]
	[**]

	 	[**]
	[**]

	 	[**]
	[**]

	 	[**]
	[**]

	 	[**]
	[**]

	 	[**]





In the event one or more milestone events set out above are skipped for any reason, the payment for
such skipped milestone event(s) will be due at the same time as the payment for the next achieved
milestone event. The milestone payments described above shall be payable only once in relation to
each Licensed Product that achieves Approval in a Major Market (each, a “Successful Product”).
Therefore, unless and until there is a Successful Product directed to a particular Target, any of
the milestone payments made by PROTIVA under this Section in connection with a Licensed Product
directed to such Target shall be fully creditable against the repeated achievement of such
milestone event by any other Licensed Product directed to such Target. However, in the event that
there is a Successful Product with respect to a Target and PROTIVA subsequently begins to Develop
or continues to Develop another Licensed Product directed to such Target (a “Follow-On Product”),
then, if and when any of the milestone events set out above is thereafter achieved for such
Follow-On Product, in addition to the milestone payment for such milestone event, there will also
be due and payable all of the milestone payment(s) for any such milestones that were achieved for
such Follow-On Product prior to the achievement of Approval in a Major Market of a Successful
Product with respect to such Target.




     3.8 Clinical Events. PROTIVA will notify ALNYLAM in writing within [**] of the dosing,
respectively, of the first patient in a Phase II Clinical Trial and in a Phase III Clinical Trial
for each PROTIVA Development Product.



     3.9 Royalties on PROTIVA Development Products. The license granted with respect to
PROTIVA Development Targets under ALNYLAM Patent Rights will be royalty-bearing with respect to
PROTIVA Development Products that are, with respect to PROTIVA, Licensed



22









 




Products. Beginning with the first Royalty Quarter in which a First Commercial Sale in a country occurs, and on a
country-by-country basis during subsequent Royalty Quarters, running
royalties on Net Sales of PROTIVA Development Products covered by one or more Valid Claims of
ALNYLAM Patent Rights in the Territory will be due in accordance with the applicable running
royalty rates set out in the table below (all references are to U.S. dollars, and the Net Sales
figures are the aggregated sums with respect to PROTIVA and all of its Affiliates and
Sublicensees). If at the time of the First Commercial Sale or at any time thereafter all of the
Valid Claims of ALNYLAM Patent Rights covering a PROTIVA Development Product expire in a particular
country, then such product shall be royalty-free in such country; provided,
however, that if one or more additional Valid Claims of ALNYLAM Patent Rights covering the
PROTIVA Development Product thereafter issue in such country, such PROTIVA Development Product
shall thereafter be royalty-bearing in such country for all Net Sales of such PROTIVA Development
Product in such country occurring after the date of such issuance until expiration of such Valid
Claim(s). No royalties will be payable more than once by PROTIVA with respect to any single unit
of Licensed Product.




	 	 	 
	Aggregate Annual Net Sales	 	Royalty Rate
	On the first [**]

	 	[**]
	On the subsequent [**]

	 	[**]
	On the subsequent [**]

	 	[**]
	Greater than [**]

	 	[**]






     3.10 Royalty Reduction. The royalties due to ALNYLAM under Section 3.9 above may be
reduced on a country-by-country basis in the Territory by the amount of royalties paid or payable
with respect to Necessary Third Party IP; provided, however, that royalties due to
ALNYLAM under Section 3.9 may not be reduced by more than [**] of the royalties otherwise due (and
will not in any case be reduced below [**] of the amount of royalties that would otherwise be due,
e.g. for Net Sales up to and including [**] the minimum effective royalty rate would be [**].
For purposes of illustration only, if annual Net Sales of a PROTIVA Development Product are [**]
and royalties due to Third Parties in respect of the sale of such product total [**] of Net Sales
(or [**]), royalties due to ALNYLAM may be reduced only by [**] which is determined as follows:
maximum reduction is [**] of the royalty due on Net Sales of [**], calculated by [**].



     3.11 Studies by ALNYLAM. With mutual acknowledgement by PROTIVA and ALNYLAM, ALNYLAM
has conducted certain activities as described in Appendix III to the Original Cross License
Agreement. ALNYLAM has made the results of such studies available to PROTIVA under the Original
Cross-License Agreement. The Parties hereby affirm their agreement to permit use, without royalty
or other additional fee, of such results or other results arising from the Feasibility Study
Agreement between ALNYLAM and PROTIVA dated April



23









 




16, 2007 and referenced under the letter agreement between the Parties dated June 1, 2007 in a manner consistent with the activities
described in Appendix III to the Original Cross-License
Agreement and in conjunction with or in support of PROTIVA’s past and expected activities
under the Second Target Research Plan (whether before or after the Effective Date).



ARTICLE
IV — License to ALNYLAM under PROTIVA Patent Rights and Intellectual
Property




     4.1 Grants by PROTIVA.



     (a) Class 1: PROTIVA grants to ALNYLAM a non-exclusive license under Class 1 PROTIVA
Patent Rights, PROTIVA’s interest in Joint Patent Rights and the Licensed Information to Research,
Develop and Commercialize RNAi Products and miRNA Products for any Target in the ALNYLAM Field and
in the Territory (“ALNYLAM Class 1 Development Products”). Such license includes the right to
grant sublicenses under the license granted under this Section 4.1(a) to one or more Third Parties
in a Bona Fide Collaboration with ALNYLAM, but solely within the scope of and for the purposes of
such Bona Fide Collaboration, or with respect to the Researching, Developing and/or Commercializing
of ALNYLAM Class 1 Development Products that meet one or more of the following: (i) such ALNYLAM
Class 1 Development Product was initially Developed at least to the point of preclinical
proof-of-principle by ALNYLAM in an Active Internal Development Program; (ii) such ALNYLAM Class 1
Development Product is an ALNYLAM Partnered Product; or (iii) such ALNYLAM Class 1 Development
Product is an R&D Program Product.



     (b) Class 2: PROTIVA grants to ALNYLAM a non-exclusive license under Class 2 PROTIVA
Patent Rights and the Licensed Information to Research, Develop and Commercialize RNAi Products and
miRNA Products for any ALNYLAM Target in the ALNYLAM Field and in the Territory (“ALNYLAM Class 2
Development Products”). Such license includes the right to grant sublicenses under the license
granted in this Section 4.1(b); provided that such right to sublicense will apply only with
respect to the Researching, Developing and/or Commercializing of ALNYLAM Class 2 Development
Products that meet one or more of the following:




	 	(i)	 	such ALNYLAM Class 2 Development Product is an R&D Program Product; or
	 
	 	(ii)	 	such ALNYLAM Class 2 Development Product incorporates the same Formulation as
the Lead Formulation of an R&D Program Product, whether or not it is directed at the
same ALNYLAM Target as that R&D Program Product, and also meets one or more of the
following: (1) such ALNYLAM Class 2 Development Product was initially Developed at
least to the point of preclinical proof-of-principle by ALNYLAM in an Active Internal
Development Program; or (2) such ALNYLAM Class 2 Development Product is an ALNYLAM
Partnered Product.





     (c) ALNYLAM may sublicense any and all of its rights under this Section 4.1 to ROCHE and to
Hoffmann-La Roche Inc. (“ROCHE-NUTLEY”, and together with ROCHE, the “ROCHE Sublicensees”)
pursuant to an agreement substantially in the form set forth in Exhibit E to this
Agreement.



24









 





     (d) ALNYLAM and PROTIVA acknowledge and agree that the determination of which items to include
under Class 1 PROTIVA Patent Rights and Class 2 PROTIVA Patent
Rights, both as defined in Section 1.47 and listed in Exhibits A-2 and A-3
respectively, was made based upon the descriptions included such Section. Accordingly, ALNYLAM and
PROTIVA agree that any item listed in Exhibit A-3 as Class 2 PROTIVA Patent Rights or claim
thereunder that meets the definition of Class 1 PROTIVA Patent Rights as described in Section 1.47
will become a Class 1 PROTIVA Patent Right and the relevant Exhibits will be updated accordingly.
For purposes of clarity, only items or claims under Class 2 PROTIVA Patent Rights may change to
Class 1 PROTIVA Patent Rights, and the Parties agree that Class 1 PROTIVA Patent Rights will not
change to Class 2 PROTIVA Patent Rights for any purpose of this Agreement.



     4.2 Retained Rights of PROTIVA. PROTIVA expressly retains any rights of PROTIVA not
expressly granted to ALNYLAM under this Article IV (or otherwise under this Agreement). PROTIVA
represents and warrants that it has the right to grant the license under the PROTIVA Patent Rights
provided in Section 4.1.



     4.3 Term. Unless terminated sooner as described in Article XII, the term of the
licenses granted to ALNYLAM under the Class 1 PROTIVA Patent Rights and the Class 2 PROTIVA Patent
Rights commenced on the Original Effective Date and ends upon the expiration or abandonment of all
issued patents and filed applications with the Class 1 PROTIVA Patent Rights and Class 2 PROTIVA
Patent Rights, respectively; provided, however, that following the expiration of such license at
the end of such term, ALNYLAM and its Affiliates or Sublicensees shall have the worldwide,
perpetual and paid-up right to Research, Develop, and Commercialize any Class 1 ALNYLAM Development
Product or Class 2 ALNYLAM Development Product to the extent not covered by other patent rights.



     4.4 No grant of rights to TEKMIRA. Except in connection with the exercise of the
Tekmira Facilities Option or as otherwise specifically set forth in this Agreement, prior to the
end of the Restriction Period, in no event will ALNYLAM have the right to sublicense or agree to
sublicense any PROTIVA Patent Rights to TEKMIRA.



     4.5 Sublicense.



     (a) Any sublicense granted by ALNYLAM pursuant to Section 4.1 shall be subject and subordinate
to the terms and conditions of this Agreement and shall contain terms and conditions consistent
with those in this Agreement, including, without limitation, the requirements of Sections 4.2 and
4.4 above. Agreements with any Sublicensee shall contain the following provisions: (i) a
requirement that such Sublicensee submit applicable sales or other reports consistent with those
required hereunder; (ii) an audit requirement similar to the requirement set forth in Section 9.5;
and (iii) a requirement that such Sublicensee comply with the confidentiality and non-use
provisions of Article VIII. ALNYLAM shall assume full responsibility for the performance of all
obligations and the observance of all terms herein under a sublicense to the license granted for
ALNYLAM Development Products and will itself pay and account to PROTIVA for all payments due by
reason of such sublicense. Sublicenses under the



25









 




licenses granted for ALNYLAM Development Products
will remain in full force and effect in the event of any termination of one or both of the
licenses, provided that sublicensee(s) are in compliance with the sublicense agreement (or are in
compliance within thirty (30) days of the termination) and agree in writing with PROTIVA to the
same terms and conditions as in the
sublicense agreement. In the event ALNYLAM becomes aware of a material breach of any
sublicense by a Sublicensee, ALNYLAM shall promptly notify PROTIVA of the particulars of same and
take all reasonable efforts to enforce the terms of such sublicense.




     (b) Unless otherwise provided in this Agreement, ALNYLAM will notify PROTIVA within ten (10)
business days after execution of a sublicense entered into under Section 4.1 and provide a copy of
the fully executed sublicense agreement to PROTIVA within the same time frame (with such reasonable
redactions as ALNYLAM may make, provided that such redactions do not include provisions
necessary to demonstrate compliance with the requirements of this Agreement), which shall be
treated as Confidential Information under Article VIII; and provided further that PROTIVA
may disclose such agreement(s) to Third Parties under confidence if and to the extent required in
order to comply with PROTIVA’s contractual obligations under both this Agreement and Third Party
agreements.



     4.6 License Fee; Payment. In addition to the fee paid by ALNYLAM pursuant to Section
2.9, ALNYLAM has previously paid PROTIVA an upfront license fee of [**] for the licenses granted to
ALNYLAM under Section 4.1 of this Agreement. PROTIVA acknowledges the full receipt of such
payment.



     4.7 Milestones with Respect to ALNYLAM Development Products. On a product-by-product
basis for ALNYLAM Development Products that are Licensed Products, and subject to the provisions of
Section 4.10, payments will be due by ALNYLAM to PROTIVA based on the achievement of certain
milestone events as set forth in the table below (all references are to U.S. dollars). ALNYLAM will
provide written notice to PROTIVA of the occurrence of a milestone event within [**] of such event,
and pay the indicated milestone fee to PROTIVA within [**] after the occurrence of the relevant
event.


Capitalized terms in the chart below shall be read in context to apply to ALNYLAM Development
Products that are Licensed Products; provided, however, that only one milestone payment will be due
in respect of a given Licensed Product.





26









 








	 	 	 
	Milestone Event	 	Milestone Fee
	[**]

	 	[**]
	[**]

	 	[**]
	[**]

	 	[**]
	[**]

	 	[**]
	[**]

	 	[**]
	[**]

	 	[**]





In the event one or more milestone events set out above are skipped for any reason, the payment for
such skipped milestone event(s) will be due at the same time as the payment for the next achieved
milestone event. The milestone payments described above shall be payable only once in relation to
each Successful Product. Therefore, unless and until there is a Successful Product directed to a
particular Target, any of the milestone payments made by ALNYLAM under this Section in connection
with a Licensed Product directed to such Target shall be fully creditable against the repeated
achievement of such milestone event by any other Licensed Product directed to such Target.
However, in the event that there is a Successful Product with respect to a Target and ALNYLAM
subsequently begins to Develop or continues to Develop a Follow-On Product, if and when any of the
milestone events set out above is thereafter achieved for such Follow-On Product, in addition to
the milestone payment for such milestone event, there will also be due and payable all of the
milestone payment(s) for any such milestones that were achieved for such Follow-On Product prior to
the achievement of Approval in a Major Market of a Successful Product with respect to such Target .




     4.8 Clinical Events. ALNYLAM will notify PROTIVA in writing within [**] of the dosing,
respectively, of the first patient in each of a Phase I Clinical Trial, a Phase II Clinical Trial,
and a Phase III Clinical Trial for each ALNYLAM Development Product.



     4.9 Royalties on ALNYLAM Development Products. The license granted with respect to
ALNYLAM Development Products under PROTIVA Patent Rights will be royalty-bearing with respect to
ALNYLAM Development Products that are, with respect to ALNYLAM, Licensed Products (whether or not
the same are directed to Biodefense Targets). Beginning with the first Royalty Quarter in which a
First Commercial Sale in a country occurs, and on a country-by-country basis during subsequent
Royalty Quarters, and subject to the provisions of Section 4.10, running royalties on Net Sales of
ALNYLAM Development Products covered by one or more Valid Claims of PROTIVA Patent Rights in the
Territory will be determined and due, as follows:



     (a) Where the Net Sales are those of, and are invoiced by, any one of the
following:




	 	(i)	 	ALNYLAM or its Affiliate;
	 
	 	(ii)	 	a ROCHE Sublicensee under a sublicense granted in accordance
with Section 4.1(c);




27









 












	 	(iii)	 	Regulus Therapeutics LLC, under a sublicense granted by
ALNYLAM in compliance with Section 4.5; or
	 
	 	(iv)	 	another Sublicensee under a sublicense granted by ALNYLAM in
connection with, and solely for the purpose of, a Bona Fide Collaboration of
ALNYLAM, and solely for the purposes of such Bona Fide Collaboration,






	 	 	the applicable running royalty rates shall be as set out in the table below (all
references are to U.S. dollars, and the Net Sales figures are the aggregated sums
with respect to ALNYLAM and all of its Affiliates and Sublicensees):





	 	 	 
	Aggregate Annual Net Sales	 	Royalty Rate
	On the first [**]

	 	[**]
	On the subsequent [**]

	 	[**]
	Greater than [**]

	 	[**]







	 	(b)	 	In all other cases, the applicable running royalty rates shall be as set out in
the table below:





	 	 	 
	Aggregate Annual Net Sales	 	Royalty Rate
	On the first [**]

	 	[**]
	On the subsequent [**]

	 	[**]
	On the subsequent [**]

	 	[**]
	Greater than [**]

	 	[**]







	 	(c)	 	If at the time of the First Commercial Sale or at any time thereafter all of
the Valid Claims of PROTIVA Patent Rights covering an ALNYLAM Development Product
expire in a particular country, then such product shall be royalty-free in such
country; provided, however, that if one or more additional Valid Claims
of PROTIVA Patent Rights covering the ALNYLAM Development Product thereafter issue in
such country, such ALNYLAM Development Product shall thereafter be royalty-bearing in
such country for all Net Sales of such ALNYLAM Development Product in such country
occurring after the date of such issuance until expiration of such Valid Claim(s). No
royalties will be payable more than once by ALNYLAM with respect to any single unit of
Licensed Product.




28









 












	 	 	 	4.10 Biodefense Targets. The milestone fees payable by ALNYLAM to PROTIVA under
Section 4.7 with respect to ALNYLAM Development Products that are Licensed Products directed
to Biodefense Targets that are not intended for sale to a Funding Authority, will be as set
forth in Section 4.7. The milestone fees payable by ALNYLAM to PROTIVA with respect to
ALNYLAM Development Products that are Licensed Products directed to Biodefense Targets which
are intended for sale to a Funding Authority shall be payable on a product-by-product basis
as follows:





	 	 	 
	Milestone Event	 	Milestone Fee
	[**]

	 	[**]
	[**]

	 	[**]
	[**]

	 	[**]





In the event one or more milestone events set out above are skipped for any reason, the payment for
such skipped milestone event(s) will be due at the same time as the payment for the next achieved
milestone event. The milestone payments described above shall be payable only once in relation to
each Licensed Product directed to a Biodefense Target that achieves First Commercial Sale in a
Major Market (each, a “Successful Biodefense Product”). Therefore, unless and until there
is a Successful Biodefense Product directed to a particular Biodefense Target, any of the milestone
payments made by ALNYLAM under this Section in connection with a Licensed Product directed to such
Biodefense Target shall be fully creditable against the repeated achievement of such milestone
event by any other Licensed Product directed to such Biodefense Target. However, in the event that
there is a Successful Product with respect to a Biodefense Target and PROTIVA subsequently begins
to Develop or continues to Develop a Follow-On Product, then, if and when any of the milestone
events set out above is thereafter achieved for such Follow-On Product, in addition to the
milestone payment for such milestone event, there will also be due and payable all of the milestone
payment(s) for any such milestones that were achieved for such Follow-On Product prior to the
achievement of Approval in a Major Market of a Successful Product with respect to such Biodefense
Target.




     4.11 Royalty Reduction. Any royalties due PROTIVA under Section 4.9 above may be
reduced on a country-by-country basis in the Territory by the amount of royalties paid with respect
to Necessary Third Party IP; provided, however, that royalties due to PROTIVA under
Section 4.9 may not be reduced by more than [**] of the royalties otherwise due (and will not in
any case be reduced below [**] of the amount of royalties that would otherwise be due, e.g. for Net
Sales up to and including [**] the minimum effective royalty rate would be [**]). For purposes of
illustration only, if annual Net Sales of an ALNYLAM Development Product are [**] and royalties due
to Third Parties in respect of the sale of such product total [**] of Net Sales (or [**]),
royalties due to PROTIVA may be reduced only by [**], which is determined as follows: maximum
reduction is one-third of the royalty due on Net Sales of [**], calculated by [**].



29









 





     4.12 Suspension of Royalties and Milestones. If any ALNYLAM Development Product that
is a Licensed Product is also an “Alnylam Royalty Product” (as such term is defined in the
ALNYLAM-TEKMIRA License Agreement), ALNYLAM shall not be required to pay royalties or milestone
fees with respect to such ALNYLAM Development Product that is a Licensed Product under both this
Agreement and the ALNYLAM-TEKMIRA License Agreement, but, rather, shall pay only the larger of such
royalties or milestone fees under such agreements, respectively. Moreover, in the event that
ALNYLAM is required to make any payments to UBC pursuant to the UBC Sublicense Agreement or
pursuant to a direct license
agreement between UBC and ALNYLAM as a result of the default by, or bankruptcy or insolvency
of, TEKMIRA as more fully described in Section 3.4 and Article 17.0 of the Tekmira-UBC License
Agreement (as such terms are defined in the ALNYLAM-TEKMIRA License Agreement), then ALNYLAM shall
be entitled to offset any amounts payable by ALNYLAM to PROTIVA under this Agreement pursuant to
this Section 4.12 by the amount of ALNYLAM’s payments to UBC until such amounts have been credited
in full.



     4.13 More Favorable Terms. If after the Effective Date, PROTIVA grants to a Third
Party any license substantially similar in scope and substance to the license grant to Alnylam with
respect to the PROTIVA Patent Rights on terms calling for milestone fees and royalties that are, as
a whole, more favorable (to the licensee in such other license) than the comparable terms contained
in this Article IV, then PROTIVA shall so notify ALNYLAM and, at ALNYLAM’s option, such more
favorable financial terms granted to such Third Party shall apply to ALNYLAM’s or its Affiliates’
or Sublicensees’ license with respect to the PROTIVA Patent Rights, rather than the royalty terms
and milestone fees stated under this Article IV.



     4.14 Acknowledgement. For clarity, the Parties acknowledge that no conceptions,
developments, techniques, data, inventions, improvements, technical information, or works of
authorship that were, are, or that hereafter may be in whole or in part conceived, reduced to
practice, discovered, created, authored or otherwise made or obtained by or for TEKMIRA or its
contractors at any time during the period from January 18, 2001 through the expiration of the
Restriction Period, will be considered to be owned or controlled by PROTIVA by virtue of any
agreement, right, or claim existing or arguably existing prior to the Effective Date.



ARTICLE
V — Conduct of R&D Research Plan and Funding from ALNYLAM




     5.1 Research Term. ALNYLAM and PROTIVA hereby agree to continue to conduct a research
and development program pursuant to the R&D Research Plan, which program commenced on the Original
Effective Date and shall continue until [**] (the “Research Term”); provided,
however, that the Research Term may be extended once by ALNYLAM for an additional [**] if
ALNYLAM exercises such right by notice received by PROTIVA no later than [**] prior to the
expiration of the initial [**].



     5.2 During the Research Term, PROTIVA will use commercially reasonable efforts to provide for
the conduct of activities pursuant to the R&D Research Plan by qualified employees of PROTIVA, or
individual contractors approved by the JSC, who collectively will spend time and effort working on
activities pursuant to the R&D Research Plan equivalent to the time and effort of seven (7)
full-time employees for the Research Term. Full-time employee or



30









 




equivalent will be based on at
least forty-five (45) weeks per calendar year and forty (40) hours per week of work (less normal
vacations, sick days and holidays) (“FTE”).




     5.3 Funding. ALNYLAM will continue to provide funding to PROTIVA for the staffing and
conduct of activities under the R&D Research Plan in the amount of [**] during the Research Term
(and funding in the same amount over the renewal term, if any), payable in  [**] equal quarterly
installments of [**] each. The funding amount is deemed to cover PROTIVA’s reasonably anticipated
costs for the FTEs dedicated to the conduct of the R&D Research Plan in accordance with Section 5.2
above, including any general and administrative overhead costs for
such FTEs and the costs and expenses for chemical and other research supplies and equipment
used by the FTEs in conducting activities under the R&D Research Plan. For purposes of clarity,
such costs and expenses will not be separately reimbursed by ALNYLAM to PROTIVA.



     5.4 Conduct of Research.



     (a) General. PROTIVA will conduct its activities under the R&D Research Plan in good
scientific manner, and in compliance in all material respects with the requirements of applicable
laws and regulations (including, where applicable, the requirements of the United States Federal
government in connection with activities funded by it) and, where necessary, with applicable good
laboratory practices, to attempt to achieve its objectives efficiently and expeditiously. Without
limiting the foregoing, PROTIVA will carry out its obligations under the R&D Research Plan and this
Agreement using sustained efforts that are at least equivalent to those efforts and resources
commonly used by PROTIVA and other biopharmaceutical companies similar to PROTIVA for a comparable
program of research. PROTIVA will maintain laboratories, offices and all other facilities
reasonably necessary to carry out the activities to be performed by it pursuant to the R&D Research
Plan. In conformity with standard pharmaceutical and biotechnology industry practices and the
terms and conditions of this Agreement, PROTIVA will prepare and maintain, or will cause to be
prepared and maintained, complete and accurate written records, accounts, notes, reports and data
with respect to activities conducted pursuant to the R&D Research Plan.



     (b) R&D Research Plan. PROTIVA will conduct activities under a mutually agreed upon
research plan pursuant to which PROTIVA will seek to identify and develop Formulations using
PROTIVA’s SNALP Technology (and expected to be covered by PROTIVA Patent Rights) to deliver siRNA
drug molecules supplied from ALNYLAM locally or systemically (e.g. to intended cells and tissues,
organs or whole animals) (the “R&D Research Plan”). ALNYLAM will have sole discretion as to the
selection of siRNA molecules for inclusion under the R&D Research Plan, provided that ALNYLAM may
not select such molecules if ALNYLAM knows or reasonably should know that such molecule is directed
to any of the following: (i) the PLK Target; (ii) the Second Target; (iii) another PROTIVA
Development Target which is approved or remains in process in accordance with the terms in Section
3.2 of this Agreement or (iv) a Tekmira Development Target. During the Research Term, PROTIVA will
not work on ALNYLAM Targets included in the R&D Research Plan for its internal programs or on
behalf of any Third Party, unless PROTIVA is, at the time of ALNYLAM’s request to include such
ALNYLAM Target in the R&D Research Plan, working on such Target (i) in its internal programs or
(ii) on behalf of any Third Party, or has agreed in writing to do so with a Third



31









 




Party; and PROTIVA promptly provides written notice to ALNYLAM with respect to which exception above applies
and for which ALNYLAM Target. ALNYLAM will have the right to suspend work on any siRNA molecule,
and, if it so desires, to name additional siRNA molecules in its place, under the R&D Research Plan
at any time upon written notice to PROTIVA. The R&D Research Plan will set forth the research
objectives and activities to be performed during the Research Term with reasonable specificity,
including without limitation: the Party responsible for performing identified activities and a
timeline for such activities. The R&D Research Plan will otherwise be consistent with this
Agreement. In the event of any conflict between the terms of this Agreement and the terms in the
R&D Research Plan as it may be updated, the terms of this Agreement will govern. The Parties have
prepared an updated R&D Research Plan setting out the primary activities to be conducted for the 2008 calendar year,
which is attached to this Agreement as Exhibit D. The JSC will be responsible for further
updating and amending the R&D Research Plan at least quarterly or more frequently as needed, based
on the progress and results of the conduct of the R&D Research Plan. PROTIVA will, from time to
time as outlined in the R&D Research Plan, provide, periodic reports to ALNYLAM with respect to
progress under the R&D Research Plan (no less frequently than quarterly), including without
limitation information on PROTIVA’s standard-form Analytical Report for formulated materials
delivered by PROTIVA to ALNYLAM as contemplated under the R&D Research Plan and Appendix II
to this Agreement (“Analytical Report”). At the end of the Research Term, PROTIVA will provide a
final report to ALNYLAM with respect to all results and outcomes (e.g., Formulations) of the then
current R&D Research Plan.




     (c) Material Transfer. In order to facilitate the work under the R&D Research Plan,
ALNYLAM and PROTIVA will transfer to one another certain materials or chemical compounds for use in
furtherance of the conduct of the R&D Research Plan (“Substances”). Except as otherwise provided
under this Agreement, Substances delivered by one Party to the other Party will remain the sole
property of the supplying Party, will be used only for purposes of the R&D Research Plan and will
remain solely under the control of the supplying Party, will not be used or delivered to or for the
benefit of any Third Party without the prior written consent of the supplying Party and will
not be used in research or testing involving human subjects. The Substances supplied pursuant
to this Agreement will be used with prudence and appropriate caution as all of their
characteristics may not be known. THE SUBSTANCES ARE PROVIDED “AS IS” AND WITHOUT ANY
REPRESENTATION OR WARRANTY, EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION ANY IMPLIED WARRANTY
OR MERCHANTABILITY OR OF FITNESS FOR ANY PARTICULAR PURPOSE.



     (d) Subcontracts. PROTIVA will not be permitted to perform any of its obligations in
connection with performance of activities under the R&D Research Plan through the use of
subcontractor(s) without the prior written consent of ALNYLAM.



     5.5 Role of JSC. The conduct of the R&D Research Plan will be coordinated by the
Joint Steering Committee. If a consensus is not reached among the members of the Joint Steering
Committee with respect to the conduct of activities under the R&D Research Plan, ALNYLAM’s
representatives on the JSC will have the deciding vote on that matter, provided that such decision
is otherwise made in a manner consistent with this Agreement.



32









 





     5.6 Disclosures Pursuant to R&D Research Plan.



     (a) Promptly after the Effective Date, and on an on-going basis thereafter (at least once each
Calendar Quarter), PROTIVA will provide to ALNYLAM all then-existing Licensed Information with
respect to each Formulation identified or developed under this Agreement in connection with the R&D
Research Plan . During the Research Term, the provision of such Licensed Information by PROTIVA
will be without additional cost to ALNYLAM to the extent such activities are within the scope of
work under the R&D Research Plan.



     (b) Subsequent to the Research Term as may be extended, or otherwise if outside the scope of
the work under the R&D Research Plan, and subject to mutual agreement as to
reasonable additional fees or costs, ALNYLAM may engage PROTIVA as a consultant (and PROTIVA
agrees to be so engaged) for purposes of effectuating the provision of such Licensed Information
and with respect to regulatory matters.



     (c) Promptly after the Effective Date and on an ongoing and timely basis thereafter during the
Research Term, ALNYLAM shall (unless otherwise requested by PROTIVA in any instance or instances)
disclose to PROTIVA data generated by ALNYLAM using the Substances provided by PROTIVA to ALNYLAM
pursuant to Section 5.4(c) (“ALNYLAM Data”).



     (d) ALNYLAM grants to PROTIVA a perpetual, non-exclusive, royalty-free, worldwide license to
use and exploit the ALNYLAM Data; provided, however, that: (i) PROTIVA will,
pursuant to Article VIII, protect from disclosure any of such ALNYLAM Data that constitutes
ALNYLAM’s Confidential Information and (ii) to the extent any ALNYLAM Data that constitutes
ALNYLAM’s Confidential Information relates to a Particular Moiety (other than a Particular Moiety
directed at the PLK Target or a PROTIVA Development Target), PROTIVA will not use or exploit such
ALNYLAM Data, or transfer or sublicense such ALNYLAM Data to any Third Party, for the purposes of
Research, Development, or Commercialization of products directed at the Target of such Particular
Moiety, except to contractors and subcontractors of PROTIVA permitted under Section 5.2 or 5.4(d).



     5.7 Regulatory Matters. ALNYLAM will have the sole authority and responsibility, at
its cost and expense, for all regulatory matters relating to conduct of any clinical trials on R&D
Program Products and seeking and obtaining regulatory approvals. In addition to performing any
activities pursuant to the R&D Research Plan, during the Research Term, PROTIVA will provide
ALNYLAM with such assistance as is reasonably requested by ALNYLAM from time to time to perform its
responsibilities with respect to regulatory matters at no additional cost to ALNYLAM. Subsequent
to the Research Term, PROTIVA will be paid its costs and reasonable fees at its then-current
consulting rates for such additional assistance.



     5.8 Biological Data. During the Research Term, to the extent not prohibited under
agreements with Third Parties, PROTIVA agrees to make available to ALNYLAM, and ALNYLAM agrees to
make available to PROTIVA, as and when more fully described in the R&D Research Plan, all relevant
biological data from material in vitro and in vivo testing (whether or not conducted under the R&D
Research Plan and whether conducted prior to or



33









 




following the Original Effective Date) of Formulations that may be identified or developed under the R&D Research Plan.




ARTICLE
VI — JOINT STEERING COMMITTEE




     6.1 Joint Steering Committee. The Parties previously established a Joint Steering
Committee pursuant to the Original Cross License Agreement. This JSC will continue and will
include an equal number of representatives from each Party and will meet at least once every
calendar quarter in person or via telephone conference.



     6.2 JSC Responsibilities. The JSC has the following responsibilities:



          (i) coordinating the conduct of activities under the PLK Research Plan and the R&D Research
Plan;




          (ii) receiving updates on the overall progress of the PLK Research Plan and the R&D Research
Plan and, consistent with Appendix II hereof, any Analytical Reports and related
disclosures under the respective research plans;




          (iii) reviewing, recommending and approving annual updates to the PLK Research Plan and the
R&D Research Plan and related budgets; and




          (iv) performing such other activities as are contemplated by this Agreement or that the
Parties agree will be the responsibility of the JSC, it being understood and agreed that the JSC
shall have no role or responsibilities following the Effective Date with respect to any work or
activities under the Second Target Research Plan.



The JSC’s responsibilities with respect to the PLK Research Plan and progress thereunder may be
delegated by the Parties’ respective members of the JSC to senior level employees of the Parties
who will follow the requirements set forth in this Agreement for the JSC in the context of the PLK
Target.




ARTICLE VII — INTELLECTUAL PROPERTY




     7.1 Ownership. Inventorship for patentable inventions conceived or reduced to
practice during the course of the performance of activities pursuant to this Agreement shall be
determined in accordance with United States patent laws for determining inventorship. ALNYLAM will
solely own all intellectual property discovered and reduced to practice solely by ALNYLAM directly
in the course of work conducted after the Original Effective Date under the Second Target Research
Plan or under the PLK Research Plan or under the R&D Research Plan. PROTIVA will solely own all
intellectual property discovered and reduced to practice solely by PROTIVA directly in the course
of work conducted after the Original Effective Date under the Second Target Research Plan or under
the PLK Research Plan or under the R&D Research Plan. The Parties will jointly own all
intellectual property discovered and reduced to practice jointly by ALNYLAM and PROTIVA directly in
the course of work conducted after the Original Effective Date under the Second Target Research
Plan or under the PLK Research Plan or under the R&D Research Plan, and all Joint Patent Rights.



34









 





     7.2 Prosecution and Maintenance of Patent Rights. ALNYLAM will have the sole right
and responsibility, at ALNYLAM’s discretion and at its expense, to file, prosecute and maintain
patent protection in the Territory for all ALNYLAM Patent Rights, except for Exclusively Licensed
Tekmira IP. PROTIVA will have the sole right and responsibility, at PROTIVA’s discretion and at
its expense, to file, prosecute and maintain patent protection in the Territory for all PROTIVA
Patent Rights.



     7.3 Joint Patent Rights. Subject to the rights granted each Party under this
Agreement, each Party shall have the right to use, sell, keep, license or assign its interest in
Joint Patent Rights and otherwise undertake all activities a sole owner might undertake with
respect to such Joint Patent Rights without the consent of and without accounting to the other
Party. Subject to PROTIVA’s continuing right to the prior review of, comment on, revision to and
approval of material documents, which shall not be unreasonably delayed or withheld, ALNYLAM has
the first responsibility to, at ALNYLAM’s discretion and expense, file,
prosecute, and maintain (including the defense of any interference or opposition proceedings)
in the Territory, all Joint Patent Rights, in the names of both PROTIVA and ALNYLAM. If ALNYLAM
elects not to seek or continue to seek or maintain patent protection on any Joint Patent Rights,
then PROTIVA shall have the right (but not the obligation), at its expense, to file, prosecute and
maintain (including the defense of any interference or opposition proceedings) in the Territory,
such Joint Patent Right, in the names of both PROTIVA and ALNYLAM.



     7.4 Cooperation. Each Party hereby agrees: (a) to make its employees, agents and
consultants reasonably available to the other Party (or to the other Party’s authorized attorneys,
agents or representatives), to the extent reasonably necessary to enable such Party to undertake
patent prosecution; (b) to provide the other Party with copies of all material correspondence
pertaining to prosecution with the patent offices; (c) to cooperate, if necessary and appropriate,
with the other Party in gaining patent term extensions wherever applicable to patent rights; and
(d) to endeavor in good faith to coordinate its efforts with the other Party to minimize or avoid
interference with the prosecution and maintenance of the other Party’s patent applications.



     7.5 Third Party Infringement of ALNYLAM Patent Rights.



     (a) Each Party will promptly report in writing to the other Party during the Term any known or
suspected infringement by a Third Party of any of the ALNYLAM Patent Rights of which such Party
becomes aware, as such infringement relates to Research, Development or Commercialization of
Licensed Products for the PLK Target or one or more of the PROTIVA Development Targets, or any
PROTIVA Development Products, and will provide the other Party with all available evidence
supporting such infringement.



     (b) ALNYLAM will have the sole and exclusive right to initiate an infringement or other
appropriate suit in the Territory with respect to infringements or suspected infringements of any
of the ALNYLAM Patent Rights, and to any and all recoveries obtained in connection therewith.



35









 





     (c) ALNYLAM will have the sole and exclusive right to select counsel for any suit referred to
in subsection 7.5(b) above initiated by it and will pay all expenses of the suit, including without
limitation attorneys’ fees and court costs.




	     7.6	 	Third Party Infringement of PROTIVA Patent Rights.





     (a) Each Party will promptly report in writing to the other Party during the Term any known or
suspected infringement by a third party of any of the PROTIVA Patent Rights of which such Party
becomes aware, as such infringement relates to the Research, Development or Commercialization of
Licensed Products directed at any ALNYLAM Target or any ALNYLAM Development Products and will
provide the other Party with all available evidence supporting such infringement.



     (b) PROTIVA will have the sole and exclusive right to initiate an infringement or other
appropriate suit in the Territory with respect to infringements or suspected infringements of any
of the PROTIVA Patent Rights and to any and all recoveries obtained in connection therewith.



     (c) PROTIVA will have the sole and exclusive right to select counsel for any suit referred to
in subsection 7.6(b) above initiated by it and will pay all expenses of the suit, including without
limitation attorneys’ fees and court costs.



     7.7 Rights to Enforce Joint Patent Rights.



     (a) Each Party will promptly report in writing to the other Party during the Term any known or
suspected infringement by a third party of any of the Joint Patent Rights of which such Party
becomes aware. ALNYLAM will have the first right to initiate an infringement or other appropriate
suit in the Territory with respect to infringements or suspected infringements of any of the Joint
Patent Rights; provided, that if ALNYLAM fails to initiate a suit or take other appropriate
action with respect to a Joint Patent Right within ninety (90) days after becoming aware of the
basis for such suit or action, then PROTIVA may, in its discretion, provide ALNYLAM with written
notice of PROTIVA’s intent to initiate a suit or take other appropriate action with respect to such
Joint Patent Right. If PROTIVA provides such notice and ALNYLAM fails to initiate a suit or take
such other appropriate action within thirty (30) days after receipt of such notice from PROTIVA,
then PROTIVA shall have the right to initiate a suit or take other appropriate action that it
believes is reasonably required to protect its interests under such Joint Patent Right.



     (b) Regardless of which Party brings such enforcement action, the Party not bringing the
enforcement action shall (i) provide all reasonable assistance to the Party bringing the action, at
the expense of the Party bringing the action, and (ii) have the right to join and participate in
such action at its own expense with its own counsel and to share equally all expenses of such suit
if it so elects. If required under applicable law in order for the initiating Party to initiate
and/or maintain such suit, or if the initiating Party is unable to initiate or prosecute such suit
solely in its own name or it is otherwise advisable to obtain an effective legal remedy, in each
case, the other Party shall, at the expense of the initiating Party, join as a party to the suit
and will execute and



36









 




cause its Affiliates to execute all documents necessary for the initiating
Party to initiate litigation to prosecute and maintain such action.




     (c) Any damages or other recovery, whether by settlement or otherwise, from an action under
this Section 7.7 to enforce the Joint Patent Rights shall first be applied pro rata to reimburse
the Parties for the costs and expenses of litigation in such action, and any remaining amount shall
be paid to the Party conducting the litigation, or shared equally if both Parties participated
voluntarily throughout the litigation and shared its expenses.



     7.8 Claimed Infringement of Third Party Rights.



     (a) In the event that a Third Party at any time provides written notice of a claim to, or
brings an action, suit or proceeding against, either Party, or any of their respective Affiliates
or Sublicensees, claiming infringement of its patent rights based upon an assertion or claim
arising out of the development, use, manufacture, distribution, importation or sale of Licensed
Products (“Third Party Claim”), such Party will promptly notify the other Party of the claim or the
commencement of such action, suit or proceeding, enclosing a copy of the claim and all papers
served. Each Party agrees to make available to the other Party its advice and counsel regarding
the technical merits of any such claim at no cost to the other Party and to offer reasonable
assistance to the other Party at no cost to the other Party.



     (b) Except as set forth herein, each Party shall have sole and exclusive responsibility for
the defense of its own interests in actions in which they are named in connection with any Third
Party Claim brought against either Party or any of their respective Affiliates or Sublicensees.
All litigation costs and expenses incurred by either Party in connection with the defense of such
Third Party Claim will be borne by such Party. Each Party will keep the other Party promptly
informed, and may from time to time consult with the other Party regarding the status of any such
Third Party Claims.



     (c) Neither Party will settle any Third Party claim in a manner that is in derogation of the
rights of the other Party without obtaining the prior written consent of such other Party.



     (d) THE PROVISIONS OF THIS SECTION 7.8 STATE THE ENTIRE RESPONSIBILITY OF THE PARTIES, AND THE
SOLE AND EXCLUSIVE REMEDY OF THE PARTIES, IN THE CASE OF ANY THIRD PARTY CLAIMS OR VIOLATION OF ANY
THIRD PARTY’S RIGHTS.



     7.9 Other Infringement Resolutions. In the event of a dispute or potential dispute
which has not ripened into a demand, claim or suit of the types described above in this Article
VII, the same principles governing control of the resolution of the dispute, consent to settlements
of the dispute, and implementation of the settlement of the dispute will apply.



     7.10 Interpretation of Patent Judgments. If any claim relating to a patent under the
ALNYLAM Patent Rights or the PROTIVA Patent Rights or Joint Patent Rights becomes the subject of a
judgment, decree or decision of a court, tribunal, or other authority of competent jurisdiction in
any country, which judgment, decree, or decision is or becomes final (there being



37









 




no further right of review) and adjudicates the validity, enforceability, scope, or infringement of the same, the
construction of such claim in such judgment, decree or decision shall be followed thereafter in
such country in determining whether a product is a Licensed Product hereunder, not only as to such
claim but also as to all other claims in such country to which such construction reasonably
applies. If at any time there are two or more conflicting final judgments, decrees, or decisions
with respect to the same claim, the decision of the higher tribunal shall thereafter control, but
if the tribunal be of equal rank, then the final judgment, decree, or decision more favorable to
such claim shall control unless and until the majority of such tribunals of equal rank adopt or
follow a less favorable final judgment, decree, or decision, in which event the latter shall
control.




     7.11 Product Trademarks. ALNYLAM shall own trademarks for ALNYLAM Development
Products and shall be solely responsible for filing and maintaining such trademarks in the
Territory (including payment of costs associated therewith), ALNYLAM shall assume full
responsibility, at its sole cost and expense, for any infringement of a trademark for an ALNYLAM
Development Product by a Third Party and for any claims of infringement of the rights of a Third
Party by the use of a trademark in connection with such ALNYLAM Development Product. PROTIVA shall
own the trademarks for PROTIVA Development Products and shall be solely responsible for filing and
maintaining such trademarks in the Territory (including payment of costs associated therewith).
PROTIVA shall assume full responsibility, at its sole cost and expense, for any infringement of a trademark for a
PROTIVA Development Product by a Third Party and for any claims of infringement of the rights of a
Third Party by the use of a trademark in connection with such PROTIVA Development Product.



     7.12 Patent Certification. To the extent required by law or permitted by law, the
Parties shall use reasonable efforts to maintain with the applicable regulatory authorities during
the Term correct and complete listings of applicable patent rights for ALNYLAM Development Products
and PROTIVA Development Products, as the case may be, being commercialized, including all so called
“Orange Book” listings required under the Hatch-Waxman Act.



ARTICLE VIII — CONFIDENTIAL INFORMATION, PUBLICATION, AND NON-SOLICITATION




     8.1 Non-Use and Non-Disclosure of Confidential Information. Each Party agrees that
all Confidential Information of a Party that is disclosed by a Party to the other Party (a) will
not be used by the receiving Party except in connection with the activities contemplated by this
Agreement or in order to further the purposes of this Agreement, (b) will be maintained in
confidence by the receiving Party, and (c) will not be disclosed by the receiving Party to any
Third Party who is not a consultant or advisor under an obligation of confidentiality to, the
receiving Party or an Affiliate or Sublicensee of the receiving Party, without the prior written
consent of the disclosing Party. Notwithstanding the foregoing, the receiving Party will be
entitled to use and disclose Confidential Information of the disclosing Party which (i) was known
by the receiving Party or its Affiliates prior to its date of disclosure by the disclosing Party to
the receiving Party as demonstrated by legally admissible evidence available to the receiving Party
or its Affiliates, (ii) either before or after the date of the disclosure such Confidential
Information is lawfully disclosed to the receiving Party or its Affiliates by sources other than
the disclosing



38









 




Party, (iii) either before or after the date of the disclosure by the disclosing
Party to the receiving Party such Confidential Information becomes published or otherwise part of
the public domain through no fault or omission on the part of the receiving Party or its
Affiliates, (iv) is independently developed by or for the receiving Party or its Affiliates without
reference to or in reliance upon the Confidential Information as demonstrated by legally admissible
evidence available to the receiving Party or its Affiliates, (v) is reasonably necessary to conduct
clinical trials or to obtain regulatory approval of RNAi Products or miRNA Products or for the
prosecution and maintenance of patent rights, (vi) is reasonably required in order for a Party to
obtain financing or conduct discussions with Development or Commercialization partners so long as
such Third Party recipients are bound by an obligation of confidentiality or (vii) in the
reasonable judgment of the disclosing Party is required to be disclosed by the receiving Party to
comply with applicable laws or regulations or legal process, including without limitation by the
rules or regulations of the United States Securities and Exchange Commission or similar regulatory
agency in a country other than the United States or of any stock exchange or NASDAQ, provided that
the receiving Party provides prior written notice of such disclosure to the disclosing Party and
takes reasonable and lawful actions to avoid or minimize the extent of such disclosure.




     If a Party is required by judicial or administrative process to disclose Confidential
Information that is subject to the non-disclosure provisions of this Section 8.1, such Party shall
promptly inform the other Party of the disclosure that is being sought in order to provide the
other Party an opportunity to challenge or limit the disclosure obligations. Confidential
Information that is disclosed by judicial or administrative process shall remain otherwise subject
to the confidentiality and non-use provisions of this Section 8.1, and the Party disclosing
Confidential Information pursuant to law or court order shall take all steps reasonably practical,
including without limitation seeking an order of confidentiality, to ensure the continued
confidential treatment of such Confidential Information. In addition to the foregoing restrictions
on public disclosure, if either Party concludes that a copy of this Agreement must be filed with
the United States Securities and Exchange Commission or similar regulatory agency in a country
other than the United States, such Party shall seek the maximum confidential treatment available
under applicable law, provide the other Party with a copy of this Agreement showing any sections as
to which the Party proposes to request confidential treatment, provide the other Party with an
opportunity to comment on any such proposal and to suggest additional portions of this Agreement
for confidential treatment, and take such Party’s reasonable comments into consideration before
filing this Agreement.



     8.2 Limitation on Disclosures. Each Party agrees that it will provide Confidential
Information received from the other Party solely to its employees, consultants and advisors, and
the employees, consultants and advisors of its Affiliates or Sublicensees as applicable, who have a
legitimate business need to know and an obligation to maintain in confidence the Confidential
Information of the disclosing Party. The disclosing Party is liable for any breach of the
non-disclosure obligation of its consultants, advisors, Affiliates and Sublicensees as applicable.



     8.3 Publication. PROTIVA and ALNYLAM each acknowledge the other Party’s interest in
publishing the results of the R&D Research Plan and the PLK Research Plan. Each Party also
recognizes the mutual interest in obtaining valid patent protection and in protecting




39











 




business interests and trade secret information. Consequently, except for disclosures
permitted pursuant to Section 8.1 and 8.2, either Party, its Affiliates, or their respective
employees or consultants wishing to make a publication or a disclosure to a Third Party relating to
the R&D Research Plan, the PLK Research Plan or any Licensed Product of the other Party shall
deliver to the other Party a copy of the proposed written publication or an outline of an oral
disclosure at least thirty (30) days prior to submission for publication or presentation. The
reviewing Party shall have the right (a) to propose modifications to the publication or
presentation for patent reasons, trade secret reasons or business reasons, or (b) to request a
reasonable delay in publication or presentation in order to protect patentable information. If the
reviewing Party requests a delay, the publishing Party shall delay submission or presentation for a
period of thirty (30) days to enable patent applications protecting each Party’s rights in such
information to be filed in accordance with Article VII above. Upon expiration of such thirty (30)
days, the publishing Party shall be free to proceed with the publication or presentation. If the
reviewing Party requests modifications to the publication or presentation, the publishing Party
shall edit such publication to prevent disclosure of trade secret or proprietary business
information prior to submission of the publication or presentation. With respect to any proposed
publications or disclosures by investigators or academic or non-profit collaborators, such
materials shall be subject to review under this Section 8.3 to the extent that PROTIVA or ALNYLAM,
as the case may be, has the right and ability (after using reasonable efforts) to do so. For the
avoidance of doubt, subject to its obligations under Section 8.1, each Party may make publications
and disclosures to Third Parties relating to its own Licensed Products outside of the R&D Research
Plan without any obligation to permit the other Party to review or comment on such publication or
disclosure.




     8.4 Non-Solicitation. Until [**], neither ALNYLAM nor any of its Affiliates will
knowingly offer to hire or hire any individual who is, at such time, an officer or employee of
PROTIVA or any of its Affiliates, and who was, at any time in the preceding three (3) months,
involved in (i) selecting the PROTIVA Development Targets, (ii) the Development and
Commercialization of PROTIVA Development Products and/or (iii) conducting the R&D Research Plan or
Second Target Research Plan or PLK Research Plan. For clarity, placing an advertisement in a
newspaper, periodical or other publication of general availability, or other general recruitment
activities not directed at a particular individual, do not constitute an “offer to hire.”



ARTICLE
IX — REPORTS, TAXES AND PAYMENTS




     9.1 Terminology. For purposes of Articles II and III, the “Licensee” referred to
in this Article IX shall be understood to be PROTIVA. For purposes of Article IV, the “Licensee”
referred to in this Article IX shall be understood to be ALNYLAM.



     9.2 Reports. As to each Royalty Quarter commencing with the Royalty Quarter
during which the First Commercial Sale occurs, within thirty (30) days after the end of such
Royalty Quarter (if the Licensee has not entered into an agreement with a Sublicensee) and within
thirty (30) days after the receipt by the Licensee from a Sublicensee of such Sublicensee’s report,
as required by such Sublicensee’s sublicense for each Royalty Quarter (if the Licensee has entered
into an agreement with a Sublicensee), the Licensee will deliver to the other Party to



40









 




this Agreement a written report showing, on a country-by-country basis, the Net Sales of
Licensed Products calculated under GAAP and its royalty obligation for such quarter with respect to
such Net Sales under this Agreement together with wire transfer of an amount equal to such royalty
obligation. All Net Sales will be segmented in each such report according to sales by the Licensee
and each Affiliate and Sublicensee, as well as on a product-by-product basis, including the rates
of exchange used to convert Net Sales to United States Dollars from the currency in which such
sales were made. For the purposes of this Agreement, the rates of exchange to be used for
converting Net Sales to United States Dollars will be the simple average of the selling and buying
rates of U.S. dollars published in The Wall Street Journal East Coast Edition for the last business
day of the Royalty Quarter covered by the report.




     9.3 Tax Withholding. The Licensee will use all reasonable and legal efforts to
reduce tax withholding with respect to payments to be made to the other Party under this Agreement.
Notwithstanding such efforts, if the Licensee concludes that tax withholdings under the laws of
any country are required with respect to payments, the Licensee will make the full amount of the
required payment to such other Party after any tax withholding. In any such case, the Licensee
shall provide such other Party with a written explanation of such withholding and original receipts
or other evidence reasonably desirable and sufficient to allow it to document such tax withholdings
for purposes of claiming foreign tax credits and similar benefits. For purposes of clarity, any
payment due in respect of fees set out in any of Articles II, III or IV of this Agreement will be
paid in the full amount specified after any tax withholding, with the amount of any tax withholding
associated with such payments to be paid by the Licensee to the appropriate government authority.



     9.4 Payments. Unless otherwise agreed by the Parties, all payments required to be
made under this Agreement will be made in United States Dollars via wire transfer to an account
designated in advance by the receiving Party.



     9.5 Audits.



     (a) At any given point in time, the Licensee will have on file and will require its
Affiliates and Sublicensees to have on file complete and accurate records for the last three (3)
years of all Net Sales of Licensed Products. The other Party to this Agreement will have the
right, once during each twelve (12) month period, to retain at its own expense an independent
qualified certified public accountant reasonably acceptable to the Licensee to review such records
solely for accuracy and for no other purpose upon reasonable notice and under a written obligation
of confidentiality, during regular business hours. If the audit demonstrates that the payments
owed under this Agreement have been understated, the Licensee will pay the balance to such other
Party together with interest on such amounts from the date on which such payment obligation accrued
at a rate equal to the then current 30-day United States dollar LIBOR rate plus two percent per
annum. If the underpayment is greater than five percent of the amount owed, then the Licensee will
reimburse such other Party for its reasonable out-of-pocket costs of the audit. If the audit
demonstrates that the payments owed under this Agreement have been overstated, such other Party to
this Agreement will credit the balance against the next payment due from the Licensee (without
interest).



41









 





     (b) PROTIVA shall require that the terms of any sublicense under its rights in this
Agreement are fully in compliance with the terms and conditions of the in-licenses governing
ALNYLAM’s rights under the ALNYLAM Patent Rights identified on Exhibit B, including without
limitation, all obligations with respect to maintenance of records and audit rights. ALNYLAM will
provide PROTIVA in a timely manner with a true and complete copy (subject to redaction of financial
and other information not material to ALNYLAM’s ability to sublicense rights licensed thereunder to
PROTIVA under this Agreement) of all such in-licenses.



ARTICLE
X — INDEMNIFICATION AND INSURANCE




     10.1 PROTIVA Indemnification. PROTIVA agrees to indemnify and hold harmless
ALNYLAM and its Affiliates, and their respective agents, directors, officers and employees and
their respective successors and assigns (the “ALNYLAM Indemnitees”) from and against any and all
losses, costs, damages, fees or expenses (“Losses”) incurred by an ALNYLAM Indemnitee arising out
of or in connection with any claim, suit, demand, investigation or proceeding brought by a Third
Party or a PROTIVA Affiliate based on (a) the development, use, manufacture, distribution or sale
of any Licensed Product covered by ALNYLAM Patent Rights by PROTIVA or any of its Affiliates or
Sublicensees, including, but not limited to, any claims made against ALNYLAM by Third Parties or a
PROTIVA Affiliate alleging infringement, injury, damage, death or other consequence occurring to
any person claimed to result, directly or indirectly, from the possession, use or consumption of,
or treatment with, any Licensed Product covered by ALNYLAM Patent Rights, whether claimed by reason
of breach of warranty, negligence, product defect or otherwise, and regardless of the form or forum
in which any such claim is made, (b) any breach of any representation, warranty or covenant of
PROTIVA in this Agreement, and (c) actions taken or omitted to be taken by PROTIVA or its
Affiliates, subcontractors or Sublicensees, or the employees, agents or representatives of any of
them in performing PROTIVA’s obligations under this Agreement.


The above indemnification shall not apply to the extent that any Losses are due to a material
breach of any of ALNYLAM’s representations, warranties, covenants and/or obligations under this
Agreement.




     10.2 ALNYLAM Indemnification. ALNYLAM agrees to indemnify and hold harmless
PROTIVA and its Affiliates, and their respective agents, directors, officers and employees and
their respective successors and assigns (the “PROTIVA Indemnitees”) from and against any and all
Losses incurred by a PROTIVA Indemnitee arising out of or in connection with any claim, suit,
demand, investigation or proceeding brought by a Third Party or an ALNYLAM Affiliate based on (a)
the Development, use, manufacture, distribution or sale of any Licensed Product covered by PROTIVA
Patent Rights by ALNYLAM or any of its Affiliates or Sublicensees, including, but not limited to,
any claims made against PROTIVA by Third Parties or an ALNYLAM Affiliate alleging infringement,
injury, damage, death or other consequence occurring to any person claimed to result, directly or
indirectly, from the possession, use or consumption of, or treatment with, any Licensed Product
covered by PROTIVA Patent Rights, whether claimed by reason of breach of warranty, negligence,
product defect or otherwise, and regardless of the form or forum in which any such claim is made,
(b) any breach of any representation, warranty or covenant of ALNYLAM in this Agreement or any
Other Agreement,



42









 




and (c) actions taken or omitted to be taken by ALNYLAM or its Affiliates, subcontractors or
Sublicensees, or the employees, agents or representatives of any of them in performing ALNYLAM’s
obligations under this Agreement.



The above indemnification shall not apply to the extent that any Losses are due to a material
breach of any of PROTIVA’s representations, warranties, covenants and/or obligations under this
Agreement.




     10.3 Tender of Defense; Counsel. The obligation to indemnify pursuant to this
Article shall be contingent upon timely notification by the indemnitee to the indemnitor of any
claims, suits or service of process; the tender by the indemnitee to the indemnitor of full control
over the conduct and disposition of any claim, demand or suit; and reasonable cooperation by the
indemnitee in the defense of the claim, demand or suit. No indemnitor will be bound by or liable
with respect to any settlement or admission entered or made by any indemnitee without the prior
written consent of the indemnitor. The indemnitee will have the right to retain its own counsel to
participate in its defense in any proceeding hereunder. The indemnitee shall pay for its own
counsel except to the extent it is determined that (i) one or more legal defenses may be available
to it which are different from or additional to those available to the indemnitor, or (ii)
representation of both Parties by the same counsel would be inappropriate due to actual or
potential differing interests between them. In any such case and to such extent, the indemnitor
shall be responsible to pay for the reasonable costs and expenses of the separate counsel retained
to participate in the defense of the indemnitee, provided that such expenses are otherwise among
those covered by the indemnitor’s indemnity agreement hereunder.Notwithstanding the
foregoing, if the indemnitor believes that any of the exceptions to its obligation of
indemnification of the indemnitee set forth in Sections 10.1 or 10.2 may apply, the indemnitor
shall promptly notify the indemnitee, which shall then have the right to be represented in any such
action or proceeding by separate counsel at their expense; provided, that the indemnitor
shall be responsible for payment of such expenses if the indemnitee is ultimately determined to be
entitled to indemnification from the indemnitor.



     10.4 PROTIVA Insurance. With respect to its activities under this Agreement,
PROTIVA will secure and maintain in full force and effect throughout the PLK Term and the term of
the license set out in Section 3.4, as the case may be (and for at least six (6) years thereafter
for claims-made coverage), the following types and amounts of insurance coverage with carriers
having a minimum AM Best rating of A, with per claim deductibles that do not exceed [**]:


Comprehensive General Liability and Personal Injury, including coverage for contractual liability
assumed by PROTIVA and coverage for PROTIVA independent contractor(s), with limits of at least [**]
per occurrence and a general aggregate limit of [**].



Prior to, at, and following the dosing of the first patient in a Phase I Clinical Trial of any
Licensed Product by PROTIVA or its Affiliates or Sublicensees, Umbrella Liability, exclusive of the
coverage provided by the policies listed above, with a limit of at least [**].



Prior to, at, and following the First Commercial Sale of any Licensed Product by PROTIVA or






43









 







its Affiliates or Sublicensees, Products/Clinical/Professional Liability, exclusive of the coverage
provided by the Comprehensive General Liability policy, with limits of at least [**] per occurrence
and an aggregate limit of at least [**], with ALNYLAM to be named as an additional insured party
with respect to each RNAi Product or miRNA Product under such coverage.




     10.5 ALNYLAM Insurance. With respect to its activities under this Agreement,
ALNYLAM will secure and maintain in full force and effect throughout the term of the license set
out in Section 4.3 (and for at least six (6) years thereafter for claims-made coverage), the
following types and amounts of insurance coverage with carriers having a minimum AM Best rating of
A, with per claim deductibles that do not exceed [**]:


Comprehensive General Liability and Personal Injury, including coverage for contractual liability
assumed by ALNYLAM and coverage for ALNYLAM independent contractor(s), with limits of at least [**]
per occurrence and a general aggregate limit of [**].



Prior to, at, and following the dosing of the first patient in a Phase I Clinical Trial of any
Licensed Product by ALNYLAM or its Affiliates or Sublicensees, Umbrella Liability, exclusive of the
coverage provided by the policies listed above, with a limit of at least [**].



Prior to, at, and following the First Commercial Sale of any Licensed Product by ALNYLAM or its
Affiliates or Sublicensees, Products/Clinical Liability, exclusive of the coverage provided by the
Comprehensive General Liability policy, with limits of at least [**] per occurrence and an
aggregate limit of at least [**], with PROTIVA to be named as an additional insured party with
respect to each Licensed Product under such coverage.




ARTICLE XI — EXPORT




     11.1 General. The Parties acknowledge that the exportation from the United States
of materials, products and related technical data (and the re-export from elsewhere of United
States origin items) may be subject to compliance with United States export laws, including without
limitation the United States Bureau of Export Administration’s Export Administration Regulations,
the Act and regulations of the FDA issued thereunder, and the United States Department of State’s
International Traffic and Arms Regulations which restrict export, re-export, and release of
materials, products and their related technical data, and the direct products of such technical
data. The Parties agree, under this Agreement, to comply with all applicable exports laws and to
commit no act that, directly or indirectly, would violate any United States law, regulation, or
treaty, or any other international treaty or agreement, relating to the export, re-export, or
release of any materials, products or their related technical data to which the United States
adheres or with which the United States complies.



     11.2 Delays. The Parties acknowledge that they cannot be responsible for any
delays attributable to export controls which are beyond the reasonable control of either Party.



     11.3 Assistance. The Parties agree to provide assistance to one another in
connection with each Party’s efforts to fulfill its obligations under this Article XI.



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ARTICLE XII — EFFECTIVE DATE, TERM AND TERMINATION




     12.1 Effective Date; Term; Expiration. The “Effective Date” shall be the date
upon which this Agreement and the ALNYLAM-TEKMIRA License Agreement are released from escrow and
delivered to the appropriate parties in accordance with the terms of the Escrow Agreement. Unless
and until the foregoing condition is met, the Original Cross-License Agreement shall remain in full
force and effect and the terms and conditions of the Original Cross-License Agreement shall govern
the Parties without any regard being given to this Agreement or its terms and conditions. On and as
of the Effective Date, this Agreement will supersede and replace the Original Cross-License
Agreement and, unless terminated earlier as provided herein, the licenses granted under this
Agreement will expire at the end of the periods described in Section 2.12, 3.4 or 4.3, as
applicable to each of such licenses.



     12.2 Material Breach.



     (a) ALNYLAM, as the licensor under Articles II and III, will have the right to terminate
the licenses granted under such Articles, upon written notice to PROTIVA, in the event PROTIVA
materially breaches its obligations under this Agreement related to the license granted under
Articles II or III and does not remedy such breach within ninety (90) days after receipt of written
notice from ALNYLAM specifically identifying the breach and stating that ALNYLAM intends to
terminate such licenses if PROTIVA fails to remedy the breach within the ninety (90)-day time
period; provided, however, that if PROTIVA disputes in good faith that the claimed breach exists,
such 90-day period will not start to run until such dispute has been resolved or can no longer be
maintained in good faith.



     (b) PROTIVA, as the licensor under Article IV, will have the right to terminate the
licenses granted under such Article, upon written notice to ALNYLAM, in the event ALNYLAM
materially breaches its obligations under this Agreement related to the license granted under
Article IV and does not remedy such breach within ninety (90) days after receipt of written notice
from PROTIVA specifically identifying the breach and stating that PROTIVA intends to terminate such
licenses if ALNYLAM fails to remedy the breach within the ninety (90)-day time period; provided,
however, that if ALNYLAM disputes in good faith that the claimed breach exists, such 90-day period
will not start to run until such dispute has been resolved or can no longer be maintained in good
faith.



     (c) In the event that ALNYLAM materially breaches its obligations under this Agreement as
referenced below, and does not remedy such breach within ninety (90) days after receipt of written
notice from PROTIVA specifically identifying the breach, PROTIVA will, in addition to its rights
under Section 12.2(b), have the following rights: (i) if ALNYLAM’s material breach is in respect
of its obligations arising under Articles II or III of this Agreement, PROTIVA may (A) suspend any
obligation to make payments to ALNYLAM due under Articles II or III of this Agreement until such
time as the breach is cured and (B) suspend the performance of its obligations under the PLK
Research Plan; and/or (C) terminate its obligations under the PLK Research Plan; or (ii) if
ALNYLAM’s material breach is in respect of its obligations arising under Articles IV or V of this
Agreement, PROTIVA may (A) suspend the performance of its obligations under the R&D Research Plan;
and/or (B) terminate its obligations under the R&D Research Plan; provided, however, that if
ALNYLAM disputes in good faith that the claimed breach exists, PROTIVA will not exercise its right
of termination under clauses



45









 




(i)(C) or (ii)(B) above until such dispute has been resolved or can no longer be maintained in
good faith. Within sixty (60) days after cure of the breach, PROTIVA will pay to ALNYLAM all
amounts previously due, but not paid as a result of any suspension of payments.




     (d) In the event that PROTIVA materially breaches its obligations under this Agreement as
described below, and does not remedy such breach within ninety (90) days after receipt of written
notice from ALNYLAM specifically identifying the breach, ALNYLAM will, in addition to its rights
under Section 12.2(a), have the following rights: (i) if PROTIVA’s material breach is in respect
of its obligations arising under Articles IV or V of this Agreement, ALNYLAM may suspend any
obligation to make payments to PROTIVA due under Articles IV and V of this Agreement until such
time as the breach is cured; and/or (ii) if PROTIVA’s material breach is in respect of its
obligations under Articles II or III, ALNYLAM suspend its obligations under Section 3.2 with
respect to Targets proposed by PROTIVA. Within sixty (60) days after cure of the breach, ALNYLAM
will pay to PROTIVA all amounts previously due, but not paid as a result of any suspension of
payments.



     (e) In the event that TEKMIRA is in breach of any of its material obligations under any
“Transaction Document” (defined below) to which it is a party (other than the Supply Agreement or
any Quality Agreement (as such terms are defined in the ALNYLAM-TEKMIRA License Agreement)), by
causes and reasons within the control of TEKMIRA, and if the breach is capable of being cured,
TEKMIRA has not cured such breach within the period provided for cure under the applicable
Transaction Document or, if greater, ninety (90) days after receiving notice of such breach from
the non-breaching Party, and if, and to the extent that ALNYLAM exercises its rights to terminate
any licenses under the ALNYLAM-TEKMIRA License Agreement with respect to Exclusively Licensed
Tekmira IP, then ALNYLAM may, in its sole discretion, also and concurrently (and to the same
extent, e.g., with respect to the same “Region” as defined in the ALNYLAM-TEKMIRA License
Agreement) terminate the licenses under this Agreement to PROTIVA with respect to Exclusively
Licensed Tekmira IP; provided, however, that, in the event of a good faith dispute with respect to
the existence of a material breach, the applicable cure period shall be tolled until such time as
the dispute is resolved pursuant to the dispute resolution provisions of the applicable Transaction
Document, or in the absence of any dispute resolution provisions in the applicable Transaction
Document, Section 12.6 of the ALNYLAM-TEKMIRA License Agreement. “Transaction Documents” means the
ALNYLAM Subscription Agreement, the ALNYLAM-TEKMIRA License Agreement, the Tekmira-UBC License
Agreement, the UBC Sublicense Documents, the Loan Agreement (all as defined in the ALNYLAM-TEKMIRA
License Agreement), all letter agreements and other documents executed by TEKMIRA in connection
with the Original ALNYLAM-TEKMIRA License Agreement and any other documents or agreements that are
executed by the Parties and/or TEKMIRA after the Original Effective Date as contemplated by this
Agreement or the ALNYLAM-TEKMIRA License Agreement.



     12.3 Challenges of ALNYLAM Patent Rights. In the event that PROTIVA, TEKMIRA or
any of their Affiliates shall (a) commence or participate in any action or proceeding (including,
without limitation, any patent opposition or re-examination proceeding), or otherwise assert in
writing any claim, challenging or denying the validity of any of the ALNYLAM Patent Rights licensed
hereunder, or any claim thereof or (b) actively assist any



46









 




other person or entity in bringing or prosecuting any action or proceeding (including, without
limitation, any patent opposition or re-examination proceeding) challenging or denying the validity
of any of such ALNYLAM Patent Rights or any claim thereof, ALNYLAM will have the right to give
notice to PROTIVA (which notice must be given, if at all, within sixty (60) days after ALNYLAM
first learns of the foregoing) that the licenses granted by ALNYLAM to such ALNYLAM Patent Right
will terminate in thirty (30) days following such notice, and, unless PROTIVA or TEKMIRA withdraws
or causes to be withdrawn all such challenge(s) within such thirty-day period, such licenses will
so terminate.




     12.4 Challenges of PROTIVA Patent Rights. In the event that ALNYLAM or any of its
Affiliates shall (a) commence or participate in any action or proceeding (including, without
limitation, any patent opposition or re-examination proceeding), or otherwise assert in writing any
claim, challenging or denying the validity of any of the PROTIVA Patent Rights or any claim thereof
or (b) actively assist any other person or entity in bringing or prosecuting any action or
proceeding (including, without limitation, any patent opposition or re-examination proceeding)
challenging or denying the validity of any of such PROTIVA Patent Rights or any claim thereof,
PROTIVA will have the right to give notice to ALNYLAM (which notice must be given, if at all,
within sixty (60) days after PROTIVA first learns of the foregoing) that ALNYLAM’s license under
Class 1 PROTIVA Patent Rights and/or the license under Class 2 PROTIVA Patent Rights will
terminate in thirty (30) days following such notice, and, unless ALNYLAM withdraws or causes to be
withdrawn all such challenge(s) within such thirty-day period, such licenses will so terminate.



     12.5 Consequences of Termination; Survival.



     (a) In the event of termination by ALNYLAM under Section 12.2(a) above, all licenses and
rights granted by ALNYLAM to PROTIVA under Article II and III and Section 5.6 of this Agreement
will terminate; provided, however, that to the extent such licenses and rights are
required in respect of clinical trials that are ongoing and cannot reasonably be terminated
promptly due to health or safety reasons or the requirements of applicable law, such licenses and
rights will continue in effect until such clinical trials are properly terminated. Moreover, any
breach of the restrictions in Section 5.6(d) which PROTIVA fails to cure within ninety (90) days
after receipt of written notice from ALNYLAM specifically identifying the breach, shall result in
the termination of PROTIVA’s license under such Section to the Alnylam Data, but it shall not, by
itself, result in the termination of any other licenses to PROTIVA under this Agreement unless
ALNYLAM meets the burden of demonstrating that such breach has had or is reasonably likely to have
a material adverse effect on the benefits, taken as a whole, that ALNYLAM reasonably anticipates it
will obtain from this Agreement and the ALNYLAM-TEKMIRA License Agreement and the activities and
grants contemplated under such agreements.



     (b) In the event of termination by PROTIVA under Section 12.2(b) above, all licenses and
rights granted by PROTIVA to ALNYLAM under Article IV of this Agreement will terminate;
provided, however, that to the extent such licenses and rights are required in
respect of clinical trials that are ongoing and cannot reasonably be terminated promptly due to
health or safety reasons or the requirements of applicable law, such licenses and rights will
continue in effect until such clinical trials are properly terminated.



47









 





     (c) Expiration or termination of this Agreement shall not relieve the Parties of any
obligation accruing prior to such expiration or termination. Any expiration or termination of this
Agreement shall be without prejudice to the rights of either Party against the other accrued or
accruing under this Agreement prior to expiration or termination, including without limitation the
obligation to pay royalties for Licensed Product sold prior to such expiration or termination. The
provisions of Article VIII shall survive the expiration or termination of this Agreement. In
addition, to the extent applicable under their terms, the provisions of Sections 4.14, 5.6(b),
5.6(d) (subject to the provisions of Section 12.2(a)), 7.1, 7.3, 7.4, 7.7, 11.1, and 13.4, and
Articles I, IX, X, XII, and XIV shall survive any expiration or termination of this Agreement.




12.6 License upon Termination.



     (a) Upon any termination of this Agreement, ALNYLAM shall enter into an agreement
containing substantially the same provisions as this Agreement with any Sublicensees of PROTIVA
existing at the time of such termination, covering the RNAi Products that had been licensed to such
Sublicensee by PROTIVA in compliance with this Agreement, provided that at the time of any
termination of this Agreement, such Sublicensees are in full compliance with the terms and
conditions of the sublicense agreement. ALNYLAM acknowledges that such Sublicensees of PROTIVA
that are then in full compliance with the terms and conditions of their respective sublicense
agreement are third party beneficiaries of this Agreement, including this Section 12.6(a).



     (b) Upon any termination of this Agreement, PROTIVA shall enter into an agreement
containing substantially the same provisions as this Agreement with any Sublicensees of ALNYLAM
existing at the time of such termination, covering the RNAi Products and miRNA Products that had
been licensed to such Sublicensee by ALNYLAM in compliance with this Agreement, provided that at
the time of any termination of this Agreement, such Sublicensees are in full compliance with the
terms and conditions of the sublicense agreement. PROTIVA acknowledges that such Sublicensees of
ALNYLAM that are then in full compliance with the terms and conditions of their respective
sublicense agreement are third party beneficiaries of this Agreement, including this Section
12.6(b).



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ARTICLE XIII — SEPARATE CONDUCT OF CERTAIN PROTIVA AND TEKMIRA ACTIVITIES




     13.1 Separate Conduct. Immediately upon the effective date of the Purchase
Agreement and through [**] (the “Restriction Period”), PROTIVA has taken and will take all steps
necessary to ensure, to the maximum extent practicable, that there was and is no collaboration
between, or joint inventive work conducted by, PROTIVA and TEKMIRA under the Second Target Research
Plan or under the PLK Research Plan or the R&D Research Plan, or under the Research Plan or
Manufacturing Plan (as each such term is defined in the ALNYLAM-TEKMIRA License Agreement), or any
activities contemplated thereunder, with the goal of [**]. Such steps shall include, without
limitation, the requirement that during the Restriction Period, PROTIVA has maintained and shall
maintain research and manufacturing operations that are separate from the research and
manufacturing operations of TEKMIRA for all activities under the Research Plan, the Manufacturing
Plan (as each such term is defined in the ALNYLAM-TEKMIRA License Agreement), the Second Target
Research Plan, the PLK Research Plan and the R&D Research Plan, and has ensured and shall ensure
that the PROTIVA personnel who work on the Second Target Research Plan or the PLK Research Plan or
the R&D Research Plan did not and do not undertake research activities with or for TEKMIRA under
the Research Plan or the Manufacturing Plan.



     13.2 Common Management; TEKMIRA Facilities Option. Notwithstanding the
requirements of Section 13.1, during the Restriction Period (a) PROTIVA and TEKMIRA may (i) have
common management in the form of one person who serves as CEO of both companies, (ii) have
interlocking boards of directors, and (iii) share with each other or loan to each other specific
items of equipment and/or other tangible and intangible assets (but not human resources, other than
administrative personnel not involved in Research or Development activities); and (b) PROTIVA may
use TEKMIRA’s physical facilities solely to manufacture (x) at ALNYLAM’s sole discretion, a product
formulation developed by PROTIVA for ALNYLAM under this Agreement; or (y) upon mutual written
agreement of ALNYLAM, TEKMIRA and PROTIVA, an RNAi Product directed to the PLK Target (“TEKMIRA
Facilities Option”).



     13.3 Notification. During the period from the Effective Date through December 31,
2008, PROTIVA shall notify ALNYLAM in writing within thirty (30) days after conception of any
intellectual property conceived by PROTIVA or TEKMIRA (or their employees or consultants) on or
prior to [**], with respect to which ALNYLAM has a license under this Agreement, the
ALNYLAM-TEKMIRA License Agreement or the UBC Sublicense (as defined in the ALNYLAM-TEKMIRA License
Agreement), it being understood that such notice as to the period from the end of the Restriction
Period through [**] will be for informational purposes only.



     13.4 Violations, Penalties. In the event that any joint invention is made (i) by
inventor(s) who are employees or consultants of PROTIVA and inventor(s) who are employees or
consultants of TEKMIRA during the Restriction Period, (ii) due to or in respect of the conduct of
PROTIVA and/or TEKMIRA during the Restriction Period and (iii) without any inventive contribution
from ALNYLAM or communication by or through ALNYLAM of any information or materials from TEKMIRA or
PROTIVA to the other in a manner that is material to the



49









 




determination of inventorship (any such joint invention is hereinafter referred to as a
“Restricted Joint Invention”), with the result that any rights to such Restricted Joint Invention
are licensed to [**] under the [**] as they existed on the Effective Date), then, except and solely
to the extent that any such Restricted Joint Invention arises from manufacturing performed by
PROTIVA at a TEKMIRA facility as a result of the exercise of the Tekmira Facilities Option:




     (a) PROTIVA shall pay to ALNYLAM any and all royalties and milestone payments received
from [**] under the [**] with respect to the development or commercialization of any product as to
which the [**] owed such royalties or milestones due to the coverage of such product by any claims
(whether issued or pending) covering such Restricted Joint Invention (or that would have been so
received from [**] under the terms of the [**] as they existed on the Effective Date);



     (b) ALNYLAM shall have a fully-paid, perpetual, milestone-free, royalty-free, and
exclusive (except as to the [**] rights under the [**]) license to PROTIVA’s right, title and
interest in the Restricted Joint Invention; and



     (c) any and all royalties required to be paid by ALNYLAM to PROTIVA under this Agreement
with respect to ALNYLAM Development Products that are Licensed Products the identification,
characterization, validation, synthesis, development, use, formulation, manufacture, production or
sale of which, where and when occurring, would, but for the grant of a license or sublicense from
Tekmira, infringe a Valid Claim of the Exclusively Licensed Tekmira IP shall be reduced by fifty
percent (50%).



ARTICLE XIV — MISCELLANEOUS




     14.1 Representations and Warranties.




	 	 (a)	 	Mutual Representations and Warranties by PROTIVA and ALNYLAM.





          (i) Each Party hereby represents and warrants to the other Party as of the Effective Date:



               (1) It is a corporation duly organized under the laws of the state of its incorporation,
and has all necessary power and authority to conduct its business in the manner in which it is
currently being conducted, to own and use its assets in the manner in which its assets are
currently owned and used, and to enter into and perform its obligations under this Agreement.



               (2) The execution, delivery and performance of this Agreement has been duly authorized by
all necessary action on the part of such Party and its Board of Directors and no consent, approval,
order or authorization of, or registration, declaration or filing with any Third Party or
governmental authority is necessary for the execution, delivery or performance of this Agreement.



               (3) This Agreement constitutes the legal, valid and binding obligation of such Party,
enforceable against it in accordance with its terms, subject to (A) laws of general



50









 




application relating to bankruptcy, insolvency and the relief of debtors, and (B) rules of law
governing specific performance, injunctive relief and other equitable remedies.




               (4) Neither it nor any of its Affiliates has been found in breach of any laws or
regulations governing the production of medicinal products in the United States or any other
jurisdiction within the Territory.



               (5) Neither it nor any of its Affiliates or employees has been debarred (nor is it or any
of its Affiliates or employees using in any capacity in connection with its activities under this
Agreement any person who has been debarred) by the FDA from working for or providing services to
any pharmaceutical or biotechnology company under Section 306 of the United States Food, Drug and
Cosmetic Act. Each Party agrees to inform the other Party in writing immediately if it or any
person that is performing activities under this Agreement is debarred or is the subject of a
conviction described in Section 306, or if any action, suit, claim, investigation or legal or
administrative proceeding is pending or, to the best of the notifying Party’s knowledge, is
threatened, relating to the debarment or conviction of the notifying Party or any person or entity
used in any capacity by such Party or any of its Affiliates.



               (6) It has never approved or commenced any proceeding, or made any election contemplating,
the winding up or cessation of its business or affairs or the assignment of material assets for the
benefit of creditors. To such Party’s knowledge, no such proceeding is pending or threatened.



          (ii) Each Party will notify the other Party promptly in writing if any proceeding
described in Section 14.1(a)(i)(6) is approved, commenced or, to such Party’s knowledge, becomes
pending or threatened, against it. Each Party will promptly provide copies to the other Party of
all documents filed with the court with respect to such proceedings and will consult with such
other Party in a timely manner concerning the progress and/or disposition of such proceedings.



          (iii) Each Party acknowledges and agrees that the other Party has not made any
representation or warranty that it has or can provide all the rights that are necessary or useful
to Research, Develop or Commercialize (as applicable) an RNAi Product (and/or miRNA Product in the
case of ALNYLAM).



          (iv) Each Party represents and warrants to the other Party that as of the Effective Date
it has the right to grant to such other Party, its Affiliates and Sublicensees the licenses granted
hereunder and has not granted any conflicting rights to any other person or entity. Each Party
shall maintain any applicable in- licenses in effect and shall not amend any such in-licenses in a
manner that is detrimental to the rights of the other Party under this Agreement without the prior
written consent of such other Party.



     (b) ALNYLAM Representations and Warranties. ALNYLAM hereby represents and
warrants to PROTIVA that:



51









 





          (i) except for the Exclusively Licensed Tekmira IP, as to which ALNYLAM
makes no representations or warranties, to ALNYLAM’s knowledge, the conception, development
and reduction to practice of the ALNYLAM Patent Rights licensed to PROTIVA under this Agreement did
not constitute or involve the misappropriation of trade secrets or other rights or property of any
person or entity; and



          (ii) except as set forth in Appendix V, it has not assigned, transferred, conveyed
or otherwise encumbered its right, title and interest in the ALNYLAM Patent Rights in a manner that
conflicts with any rights granted to PROTIVA hereunder.



     (c) PROTIVA Representations and Warranties. PROTIVA hereby represents and warrants
to PROTIVA that:



          (i) the patents and patent applications listed on Appendices A-2 and A-3 are all the
PROTIVA Patent Rights existing on the Effective Date, and include, without limitation, all the
patent rights licensed by PROTIVA to the [**]. To PROTIVA’s knowledge, the conception, development
and reduction to practice of the PROTIVA Patent Rights and Know-How licensed to ALNYLAM under this
Agreement do not constitute or involve the misappropriation of trade secrets or other rights or
property of any person or entity;



          (ii) except as set forth herein this Agreement, it has not assigned, transferred, conveyed
or otherwise encumbered its right, title and interest in the PROTIVA Patent Rights in a manner that
conflicts with any rights granted to ALNYLAM hereunder; and



          (iii) the [**] does not provide that any payments, other than milestone and royalty
payments, will be owed or would be owed by the [**] to PROTIVA or its Affiliates with respect to
the development or commercialization of any product due to the coverage of such product by any
claims (whether issued or pending) covering any Restricted Joint Invention.



     (d) Warranty Disclaimer. EXCEPT AS OTHERWISE EXPRESSLY PROVIDED IN THIS
AGREEMENT, NEITHER PARTY MAKES ANY REPRESENTATION OR EXTENDS ANY WARRANTY OR CONDITIONS OF ANY
KIND, EITHER EXPRESS OR IMPLIED, TO THE OTHER PARTY WITH RESPECT TO ANY INTELLECTUAL PROPERTY,
LICENSED PRODUCTS, GOODS, THE COLLABORATION, RIGHTS OR OTHER SUBJECT MATTER OF THIS AGREEMENT AND
HEREBY DISCLAIMS ALL IMPLIED CONDITIONS, REPRESENTATIONS, AND WARRANTIES, INCLUDING WITHOUT
LIMITATION, WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND NONINFRINGEMENT OR
VALIDITY OF PATENT RIGHTS WITH RESPECT TO ANY AND ALL OF THE FOREGOING. EACH PARTY HEREBY
DISCLAIMS ANY REPRESENTATION OR WARRANTY THAT THE DEVELOPMENT, MANUFACTURE OR COMMERCIALIZATION OF
ANY LICENSED PRODUCT PURSUANT TO THIS AGREEMENT WILL BE SUCCESSFUL OR THAT ANY PARTICULAR SALES
LEVEL WITH RESPECT TO SUCH LICENSED PRODUCTS WILL BE ACHIEVED.



52









 





     14.2 Dispute Resolution; Arbitration Procedures.



     (a) In the event of any dispute, controversy or claim arising out of or relating to this
Agreement, or the breach thereof, the Parties will try to settle such dispute, controversy or claim
amicably between themselves, including referring such dispute, controversy or claim to the Chief
Operating Officer of ALNYLAM or his designee, and the Chief Executive Officer of PROTIVA, or any
other officer designated by such Chief Executive Officer. In the event that after forty-five (45)
days the designated officers of both Parties fail to resolve the matter, either Party may submit
such dispute, controversy or claim that is not an “Excluded Claim” for resolution by binding
arbitration under the Rules of Arbitration of the International Chamber of Commerce. Judgment on
the arbitration award may be entered in any court of competent jurisdiction. The arbitration will
be conducted in New York, New York and the language of all communications and proceedings relating
to the arbitration will be English.



     (b) The arbitration shall be conducted by a panel of three persons experienced in the
pharmaceutical business. Within thirty (30) days after initiation of arbitration, each Party shall
select one person to act as arbitrator and the two Party-selected arbitrators shall select a third
arbitrator within thirty (30) days of their appointment. If the arbitrators selected by the
Parties are unable or fail to agree upon the third arbitrator, the Parties shall select two
replacement arbitrators to replace the arbitrators originally selected, which replacement
arbitrators shall select a third arbitrator within thirty (30) days of their appointment. The
Parties agree (a) to meet with the arbitrator(s) within thirty (30) days of selection and (b) to
agree at that meeting or before upon procedures for discovery and as to the conduct of the hearing
which will result in the hearing being concluded within no more than six (6) months after selection
of the arbitrator(s) and in the award being rendered within thirty (30) days of any post-hearing
briefing, which briefing will be completed by both sides within thirty (30) days after the
conclusion of the hearings, or within sixty (60) days of the conclusion of the hearings if there is
no post-hearing briefing. In the event the Parties cannot agree upon procedures for discovery as
set forth in (a) above, the arbitrator(s) shall provide that discovery be limited so that the
schedule may be met without difficulty and so that neither side obtains more than a total of
twenty-five (25) hours of deposition testimony from all witnesses, including both fact and expert
witnesses, or serves more than ten (10) individual requests for documents or ten (10) individual
requests for admission or interrogatories. In no event will the arbitrator(s), absent agreement of
the Parties, allow more than three (3) days per side for the hearing or more than a total of six
(6) days for the hearing. Multiple hearing days will be scheduled consecutively to the greatest
extent possible.



     (c) Either Party may apply to the arbitrators for interim injunctive relief until the
arbitration award is rendered or the controversy is otherwise resolved. Either Party also may,
without waiving any remedy under this Agreement, seek from any court having jurisdiction any
injunctive or provisional relief necessary to protect the rights or property of that Party pending
the arbitration award. The arbitrators shall have no authority to award punitive or any other type
of damages not measured by a Party’s compensatory damages. Each Party shall bear its own costs and
expenses and attorneys’ fees and an equal share of the arbitrators’ fees and any administrative
fees of arbitration.



     (d) Except to the extent necessary to confirm an award or as may be required by law,
neither a Party nor an arbitrator may disclose the existence, content, or results of an arbitration
without the prior written consent of both Parties. In no event shall an arbitration be initiated
after



53









 




the date when commencement of a legal or equitable proceeding based on the dispute,
controversy or claim would be barred by the applicable New York statute of limitations.




     (e) The Parties agree that, in the event of a dispute over the nature or quality of
performance under this Agreement, neither Party may terminate this Agreement until final resolution
of the dispute through arbitration or other judicial determination. The Parties further agree that
any payments made pursuant to this Agreement pending resolution of the dispute shall be refunded if
an arbitrator or court determines that such payments are not due.



     (f) As used in this Section 14.2, the term “Excluded Claim” shall mean a dispute,
controversy or claim that concerns (a) the validity or infringement of a patent, trade secret,
trademark or copyright; or (b) any antitrust, anti-monopoly or competition law or regulation,
whether or not statutory. Excluded Claims shall be resolved in a court of competent jurisdiction.



     14.3 Publicity. No disclosure of the existence of, or the terms of, this
Agreement may be made by either Party or its Affiliates, and no Party or its Affiliate shall use
the name, trademark, trade name or logo of the other Party or its employees in any publicity, news
release or disclosure relating to this Agreement or its subject matter, without the prior express
written permission of the other Party, except as may be required by law or as set forth in this
Section 14.3. The Parties expect that upon the Effective Date of this Agreement TEKMIRA will, and
ALNYLAM may, issue separate press releases publicizing the execution of this Agreement and the
ALNYLAM-TEKMIRA License Agreement, and that prior to the execution of this Agreement, ALNYLAM and
TEKMIRA shall agree in writing upon any such press releases. The Parties agree to consult with each
other reasonably and in good faith with respect to the text and timing of any proposed press
releases prior to the issuance thereof. Either Party may issue such press releases or otherwise
make such public statements or disclosures (such as in annual reports to stockholders or filings
with the Securities and Exchange Commission) as it determines, based on advice of counsel and with
reasonable prior written notice to the other Party, are reasonably necessary to comply with
applicable laws and regulations. In addition, following any press release(s) announcing this
Agreement or the Original Cross-License Agreement or any other public disclosure approved by both
Parties, either Party shall be free to disclose, without the other Party’s prior written consent,
the existence of this Agreement, the identity of the other Party and those terms of the Agreement
which have already been publicly disclosed in accordance herewith.



     14.4 Force Majeure. No failure or omission by the Parties in the performance of
any obligation of this Agreement will be deemed a breach of this Agreement or create any liability
if the same will arise from any cause or causes beyond the control of the Parties, including, but
not limited to, the following: acts of God; acts or omissions of any government; any rules,
regulations or orders issued by any governmental authority or by any officer, department, agency or
instrumentality thereof; fire; flood; storm; earthquake; accident; war; rebellion; insurrection;
riot; and invasion. The affected Party shall notify the other Party of such force majeure
circumstances as soon as reasonably practical, and shall promptly undertake all reasonable efforts
necessary to cure such force majeure circumstances.



     14.5 Consequential Damages. NEITHER PARTY (INCLUDING ITS AFFILIATES



54









 




AND SUBLICENSEES) SHALL BE LIABLE UNDER THIS AGREEMENT FOR ANY SPECIAL, INCIDENTAL, OR
CONSEQUENTIAL DAMAGES OR FOR LOSS OF PROFIT OR LOST REVENUE, EVEN IF SUCH PARTY HAS BEEN ADVISED OF
THE POSSIBILITY OF SUCH DAMAGES. NOTWITHSTANDING THE FOREGOING, NOTHING IN THIS SECTION 14.5 IS
INTENDED TO OR SHALL LIMIT OR RESTRICT THE INDEMNIFICATION RIGHTS OF A PARTY OR DAMAGES AVAILABLE
FOR A PARTY’S BREACH OF CONFIDENTIALITY OR NON-SOLICITATION OBLIGATIONS IN SECTION 8.3.




     14.6 Assignment. (a) This Agreement, and any of its rights and obligations, may
not be assigned or otherwise transferred by either Party without the prior written consent of the
other Party, which consent shall not be unreasonably withheld, delayed or conditioned;
provided, however, that subject to Section 14.7, either Party may assign this
entire Agreement, without the consent of the other Party, to an Affiliate or in connection with
such Party’s merger, consolidation or transfer or sale of all or substantially all of the assets of
such Party; and provided further that the successor, surviving entity, purchaser of assets,
or transferee, as applicable, expressly assumes in writing such Party’s obligations under this
Agreement, if any. Notwithstanding the foregoing, PROTIVA may not assign (i) this Agreement or its
rights and obligations hereunder to TEKMIRA without ALNYLAM’s prior written consent, except that
PROTIVA may, upon prior written notice to ALNYLAM, transfer or assign its rights and obligations
with respect to any PROTIVA Development Targets, any PROTIVA Development Products and /or any
Licensed Products for the PLK Target (subject to the terms and conditions of Article II) to
TEKMIRA; provided that, (x) any such transfer shall be subject in all respects to the [**]
Restriction and the terms of Article XIII, and (y) TEKMIRA expressly assumes in writing PROTIVA’s
obligations with respect to such PROTIVA Development Target(s), PROTIVA Development Product(s)
and/or Licensed Product(s) for the PLK Target; or (ii) its rights under this Agreement to perform
the PLK Research Plan or the R&D Research Plan to any PROTIVA Affiliate of which [**] or more of
the outstanding voting securities are owned, controlled or held by a pharmaceutical company,
biotechnology company, or group of such companies acting in concert, with annual sales of human
pharmaceutical products greater than [**] of control of the management and policies of PROTIVA
(“Significant Pharmaceutical Company”) or by any investment entity affiliated with any such
Significant Pharmaceutical Company.



     (b) Any purported transfer or assignment in contravention of this Section 14.6 shall, at
the option of the non-assigning Party, be null and void and of no effect.



     (c) This Agreement will be binding upon and inure to the benefit of the Parties and their
permitted successors and assigns.



     (d) The above notwithstanding: (i) PROTIVA agrees not to assign or transfer this
Agreement to any Third Party who is not also the assignee or transferee of all ownership rights in
the Class 1 PROTIVA Patent Rights and the Class 2 PROTIVA Patent Rights or otherwise in a manner
that would be inconsistent with ALNYLAM’s rights under this Agreement; and (ii) ALNYLAM agrees not
to assign this Agreement to any Third Party who is not also the assignee or transferee of all
ownership rights in the ALNYLAM Patent Rights or otherwise in a manner



55









 




that would be inconsistent with PROTIVA’s rights under this Agreement.




     14.7 License, Provision of Information and other Rights Upon Material Breach,
Bankruptcy or Change of Control. In the event PROTIVA materially breaches its obligations
under Article V of this Agreement and does not remedy such breach within ninety (90) days after
receipt of written notice from ALNYLAM specifically identifying the breach, or in the event a
proceeding is initiated with respect to PROTIVA’s insolvency, bankruptcy reorganization,
liquidation or receivership, that is not withdrawn within sixty (60) days or upon an assignment of
a substantial portion of the assets for the benefit of creditors by PROTIVA or upon any “Change of
Control” of PROTIVA, (i) the licenses granted to ALNYLAM under this Agreement will remain in full
force and effect in accordance with their terms; and (ii) PROTIVA will promptly provide to ALNYLAM
all then-existing Licensed Information with respect to all Formulations identified or developed
under this Agreement, to the extent such Licensed Information has not previously been provided to
ALNYLAM and (iii) the conduct of activities in respect of the PLK Research Plan and R&D Research
Plan, including funding from ALNYLAM, will be terminated immediately at ALNYLAM’s discretion.


For purposes of this Section 14.7, “Change of Control” means a Change of Control under and as
defined in the ALNYLAM-TEKMIRA License Agreement, or any other transaction, or series of related
transactions, whereby (a) PROTIVA merges, reorganizes, amalgamates or consolidates with another
entity, and the shareholders of PROTIVA owning at least fifty percent (50%) of the outstanding
voting securities of PROTIVA immediately prior to such transaction(s) own less than fifty percent
(50%) of the outstanding voting securities of PROTIVA or the surviving entity as a result of such
transaction(s); (b) PROTIVA sells, transfers or otherwise disposes of all or substantially all of
its assets to which this Agreement relates; or (c) PROTIVA issues securities to any Third Party,
TEKMIRA sells, transfers or otherwise disposes of any PROTIVA securities, or PROTIVA permits or
otherwise consents to the sale, transfer or other disposition of any PROTIVA securities, if and
only if, in any of these circumstances, such transaction or series of transactions results in a new
Affiliate of PROTIVA; provided, however, that (i) the merger, reorganization,
amalgamation or consolidation of PROTIVA with TEKMIRA after the end of the Restriction Period, and
(ii) the sale or transfer of all or substantially all of the assets to which this Agreement relates
to TEKMIRA after the end the Restriction Period, shall not be deemed a Change of Control for
purposes of this Section 14.7. ALNYLAM acknowledges and agrees that the transactions under the
Purchase Agreement will not constitute a “Change of Control” under either the Original
Cross-License Agreement or this Agreement. Upon (1) PROTIVA receiving or otherwise becoming aware
of a proposal or intention by a Third Party to take any action, whether directly or indirectly,
including without limitation a non-binding letter of intent, that could lead to a Change of
Control, (2) PROTIVA planning to solicit or soliciting offers relating to its voting securities or
assets that could lead to a Change of Control, or (3) any Change of Control, PROTIVA shall provide
prompt written notice thereof to ALNYLAM.





56









 








     14.8 Notices.



     Notices to ALNYLAM will be addressed to:


Alnylam Pharmaceuticals, Inc.

300 Third Street

Cambridge, Massachusetts 02142

U.S.A.

Attention: Vice President — Legal

Facsimile No.: (617) 551-8101



With copy to:



Faber Daeufer & Rosenberg PC

950 Winter Street, Suite 4500

Waltham, Massachusetts 02451

Attention: Sumy C. Daeufer, Esq.

Facsimile No.: (781) 795-4747




     Notices to PROTIVA will be addressed to:


PROTIVA Biotherapeutics Inc.

100-3480 Gilmore Way

Burnaby, B.C., Canada

Attention: President & CEO

Facsimile No.: (604) 630-5103




     With copy to:


Fenwick & West LLP

1191 Second Avenue

Seattle, WA 98101

Attention: Roger M. Tolbert, Esq.

Facsimile No.: (206) 389-4511



Any Party may change its address by giving notice to the other Party in the manner provided in this
Section 14.8. Any notice required or provided for by the terms of this Agreement will be in
writing and will be (a) sent by certified mail, return receipt requested, postage prepaid, (b) sent
via a reputable international express courier service, or (c) sent by facsimile transmission, with
a copy by regular mail. The effective date of the notice will be the actual date of receipt by the
receiving Party.




     14.9 Independent Contractors. It is understood and agreed that the relationship
between the Parties is that of independent contractors and that nothing in this Agreement will be
construed as authorization for either Party to act as the agent for the other Party.



     14.10 Governing Law; Jurisdiction. This Agreement will be governed and
interpreted in accordance with the substantive laws of the State of Delaware, U.S.A.,
notwithstanding the provisions governing conflict of laws under such law of the State of Delaware
to the contrary, provided that (i) matters of intellectual property law will be determined in
accordance with the national intellectual property laws relevant to the intellectual property in
question, and (ii) the



57









 




application of the 1980 United Nations Convention on Contracts for the International Sale of
Goods is expressly excluded from this Agreement.




     14.11 Severability. In the event that any provision of this Agreement is held by
a court of competent jurisdiction to be unenforceable because it is invalid or in conflict with any
law of the relevant jurisdiction, the validity of the remaining provisions will not be affected and
the rights and obligations of the Parties will be construed and enforced as if the Agreement did
not contain the particular provisions held to be unenforceable, provided that the Parties will
negotiate in good faith a modification of this Agreement with a view to revising this Agreement in
a manner which reflects, as closely as is reasonably practicable, the commercial terms of this
Agreement as originally signed.



     14.12 No Implied Waivers. The waiver by either Party of a breach or default of
any provision of this Agreement by the other Party will not be construed as a waiver of any
succeeding breach of the same or any other provision, nor will any delay or omission on the part of
either Party to exercise or avail itself of any right, power or privilege that it has or may have
hereunder operate as a waiver of any right, power or privilege by such Party.



     14.13 Headings. The headings of articles and sections contained this Agreement
are intended solely for convenience and ease of reference and do not constitute any part of this
Agreement, or have any effect on its interpretation or construction.



     14.14 Entire Agreement. This Agreement constitutes the entire agreement between
the Parties with respect to its subject matter and supersedes all previous written or oral
representations, agreements and understandings between the Parties including, without limitation,
the Original Cross-License Agreement. This Agreement (including the attachments hereto) may be
amended only by a writing signed by both Parties.



     14.15 Waiver of Rule of Construction. Each Party has had the opportunity to
consult with counsel in connection with the review, drafting and negotiation of this Agreement.
Accordingly, the rule of construction that any ambiguity in this Agreement shall be construed
against the drafting Party shall not apply.



     14.16 No Third Party Beneficiaries. Except as expressly contemplated herein, no
Third Party, including any employee of any Party to this Agreement, shall have or acquire any
rights by reason of this Agreement.



     14.17 Further Assurances. The Parties will with reasonable diligence, do all such
things and provide all such reasonable assurances as may be required to consummate the transactions
contemplated by this Agreement, and each Party will provide such further documents or instruments
required by the other Party as may be reasonably necessary or desirable to give effect to the
purpose of this Agreement and carry out its provisions.



     14.18 Counterparts. This Agreement may be executed in any number of counterparts,
each of which will be deemed an original, and all of which together will constitute one and the
same instrument.



58









 





[Signature Page Follows]






59









 








     IN WITNESS WHEREOF, the Parties hereto have set their hand to this Agreement as of the date
first written above.



	 	 	 	 	 
	 	ALNYLAM PHARMACEUTICALS, INC.

 	 
	 	By:  	/s/ John Maraganore
 	 
	 	 	Name:  	John Maraganore 	 
	 	 	Title:  	CEO 	 
	 
	 	PROTIVA BIOTHERAPEUTICS INC.

 	 
	 	By:  	/s/ Mark J. Murray
 	 
	 	 	Name:  	Mark J. Murray 	 
	 	 	Title:  	President and CEO 	 



60









 






	 	 	 	 	 



EXHIBIT A-1




ALNYLAM Patent Rights


[**]



A total of eight pages were omitted and filed separately with the Securities and Exchange
Commission.












 









 








EXHIBIT A-1-A




CERTAIN ALNYLAM PATENTS RIGHTS RELATING TO THE APOB TARGET


[**]






i









 








EXHIBIT A-2




Class 1 PROTIVA Patent Rights


[**]



A total of six pages were omitted and filed separately with the Securities and Exchange Commission.








ii









 








EXHIBIT A-3




Class 2 PROTIVA Patent Rights


[**]



A total of four pages were omitted and filed separately with the Securities and Exchange
Commission.






iii









 








EXHIBIT B




IN-LICENSES COVERING ALNYLAM PATENT RIGHTS




     [**]



iv









 





EXHIBIT C




PLK RESEARCH PLAN


[**]








v









 








EXHIBIT D




R&D RESEARCH PLAN


[**]



A total of two pages were omitted and filed separately with the Securities and Exchange Commission.







vi









 








EXHIBIT E



[**]



A total of
four pages were omitted and filed separately with the Securities and Exchange
Commission.







vii









 








APPENDIX I




PLK TARGET



     [**]








viii









 








APPENDIX II




DESCRIPTION OF LICENSED INFORMATION TO BE DISCLOSED BY PROTIVA



[**].[**]



A total of seven pages were omitted and filed separately with the Securities and Exchange
Commission.









i









 








APPENDIX III




[Intentionally omitted]






i









 








APPENDIX IV




Terms and Conditions of Co-Development Agreement



[**].



A total of two pages were omitted and filed separately with the Securities and Exchange Commission.









i









 








APPENDIX V




EXCEPTIONS TO REPRESENTATIONS AND WARRANTIES



[**]





ii