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Exhibit 10.9  


 
 

EXCLUSIVE LICENSE AGREEMENT    
    
    between    
    
    THE UNIVERSITY OF ARIZONA    
    
    and    
    
    ProlX PHARMACEUTICALS, INC.    
    
    Agreement Number 97-0268    
    



        This Exclusive License Agreement (the "Agreement") is made effective the date of the last signature date below (the "Effective Date") between The Arizona Board of
Regents on behalf of The University of Arizona, with its principal offices in Tucson, Arizona 85721 (the "UNIVERSITY"), and ProlX Pharmaceuticals, Inc., a Pennsylvania corporation, with its
principal place of business at P.O. Box 10146, Pittsburgh, Pennsylvania 15232 (the "LICENSEE"). 


        WHEREAS,
an invention, entitled "Thioredoxin as a Target for Cancer Chemotherapeutic and Cancer Preventive Drugs" UA1596 (the
"Technology"), useful for an anticancer drug, as a screening tool to identify new cancer drugs, and/or as a mitogenic tissue-culture reagent, was developed at UNIVERSITY by  Garth Powis (the
"Inventor") and is claimed in Patent Rights, as defined below; 


        WHEREAS,
Inventor was an employee of UNIVERSITY when Technology was developed, and Inventor assigned to UNIVERSITY all of the right, title, and interest in Technology; 


        WHEREAS,
LICENSEE is interested in obtaining rights to make, have made, use, offer for sale and sell products from Technology and can provide useful management for production and
distribution of Licensed Products, and UNIVERSITY is willing to grant such rights so that the Technology may be developed and the benefits enjoyed by the public; and 


        WHEREAS,
LICENSEE has executed a letter of intent with UNIVERSITY effective December 5, 1977, under which UNIVERSITY agreed to negotiate an exclusive world-wide
license to Technology in return for Licensee paying all patent costs for protecting this Technology during the term of that letter of intent. 


        The
parties hereto, intending to be legally bound, hereby agree as follows: 


 
 

ARTICLE 1    
    
    Definitions    
    


        1.1   "Licensed
Method" shall mean any method that is covered by Patent Rights, the use of which would constitute, but for the license granted to the LICENSEE under this
Agreement, an infringement of any issued, valid and enforceable claim of Patent Rights. 


        1.2   "Licensed
Product" shall mean any product that is either covered by Patent Rights or that is produced by the Licensed Method, to the extent that the production, use,
offer for sale or sale of such product would infringe an issued, valid and enforceable claim of Patent Rights, but for the license granted to LICENSEE under this Agreement. 


        1.3   "Net
Sales" shall mean the total of the gross invoice prices from the sale of Licensed Product or the performance of Licensed Method by LICENSEE or a sublicensee to any
third parties for cash or other forms of consideration, in accordance with generally accepted accounting principles. LICENSEE 



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DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR CONFIDENTIALITY PURPOSES 







 

may
make the following deductions, at rates customary within the industry (if not already deducted from the gross invoice price), when calculating the total gross invoice prices: 




	1.3.1
	allowances
(actually paid and limited to rejections, returns, and prompt payment and volume discounts granted to customers of LICENSEE, or a sublicensee, whether in cash or other
consideration in lieu of cash); and



	1.3.2
	freight,
transportation, packing, and/or insurance charges associated with transportation; and



	1.3.3
	taxes
based on sales when included in gross sales, but not taxes assessed on income derived from such sales.



	1.3.4
	license
fees required to be paid by LICENSEE to any third party in order to practice Patent Rights. 





Where
LICENSEE distributes Licensed Products for end use to itself or a sublicensee, then such distribution will be considered a sale at the list price normally charged to independent third parties,
and UNIVERSITY will be entitled to collect royalty on such a sale in accordance with Article 3 (Fees and Royalties). 



        1.5   "Patent
Rights" shall mean issued U.S. and foreign patents having valid and enforceable claims assigned to UNIVERSITY by Inventor, including any reissues, continuations,
divisional, and extensions, and any continuation-in-part applications to the extent that claims of the original application are continued, based on the subject matter claimed
in or covered by the following: 




	[+]
	






        1.6   "Territory"
shall mean those countries in which LICENSEE is supporting or maintaining patents or patent applications under the provisions of Paragraph 3.3 below. 


 
 

ARTICLE 2    
    
    Grant    
    


        2.1   UNIVERSITY
grants to LICENSEE an exclusive license to make, have made, use, market, offer for sale, sell, have sold, import and distribute Licensed Product and practice
Licensed Method in the Territory. These rights are subject to the terms and conditions set forth herein. This grant does not relinquish UNIVERSITY ownership in or rights to Patent Rights and does not
grant, by implication or otherwise, any other rights to LICENSEE of any other technologies owned, invented, or discovered by UNIVERSITY, whether past, present, or future. If LICENSEE or UNIVERSITY
identifies any use or application within the Patent Rights other than use of Technology as an anticancer drug, as a screening tool to identify new cancer drugs and/or as a mitogenic tissue culture
reagent, LICENSEE shall use reasonable efforts to commercialize such other use or application; otherwise, LICENSEE shall license such other use or application back to UNIVERSITY. 


        2.2   UNIVERSITY
grants LICENSEE the right to issue sublicenses to third parties to make, have made, use, market, offer for sale, sell, have sold, import and distribute
Licensed Product and practice Licensed Method as long as LICENSEE possesses an exclusive license under this Agreement. Any and all sublicense agreements granted by LICENSEE shall include all of the
rights and obligations due UNIVERSITY, and, if applicable, the United States government, contained in this Agreement. Such rights and obligations due UNIVERSITY in all such sublicense agreements
include, but are not limited to, the right of UNIVERSITY to receive all royalties and fees under Paragraphs 3.1 (other than 3.1.3), 3.2 and 3.9, if not otherwise paid to UNIVERSITY by LICENSEE.
LICENSEE shall notify the 


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DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR CONFIDENTIALITY PURPOSES 


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UNIVERSITY
of each sublicense granted hereunder and provide UNIVERSITY with a copy of each sublicense. LICENSEE shall collect and pay all fees and royalties due UNIVERSITY and guarantee all such
payments due from sublicensees. LICENSEE shall require sublicensees to provide payments with royalty reports, and LICENSEE shall collect and summarize for UNIVERSITY all such reports due from
sublicensees. LICENSEE shall monitor sublicensees and assure license terms are met and product quality is equal to or greater than that required by this Agreement. Upon termination of this Agreement
for any reason, UNIVERSITY, at its sole discretion, shall determine whether any or all sublicenses shall be canceled or assigned to UNIVERSITY. 




	[+]
	






        2.3   The
development of Technology was sponsored in part by the National Institutes of Health, under grant numbers CA48725 and CA17094, and as a consequence, this license is
subject to overriding obligations to the Federal Government under 35 U.S.C. §200-212 and applicable implementating regulations, as well as the royalty-free
provisions of paragraph 3.11 below. 


        2.4   UNIVERSITY
shall reserve an irrevocable right to produce and use Licensed Product and to practice Licensed Method only for research and educational purposes and for
purposes not covered by this Agreement. Nothing in this Agreement shall be deemed to limit the right of UNIVERSITY to publish any and all technical data resulting from any research performed by
UNIVERSITY, including, but not limited to, research relating to the Licensed Products, Licensed Method, or Technology. 


        2.5   The
production, use, offer for sale, sale, and distribution of Licensed Products and the practice of Licensed Method shall be subject to applicable county, state,
federal or foreign laws, rules, and regulations governing the production, use, marketing, sale, and distribution of Licensed Products or the practice of Licensed Method in or between any county,
state, federal, or foreign jurisdiction. 


        2.6   LICENSEE
acknowledges that Licensed Products will not be produced, used, marketed, offered for sale, sold, distributed, and/or sublicensed outside the Territory and that
Licensed Method will not be practiced outside the Territory. 


 
 

ARTICLE 3    
    
    Fees and Royalties    
    



        3.1    Fees.    In consideration, in part, for the rights granted herein, LICENSEE shall pay the following fees: 




	3.1.1
	LICENSEE
shall pay UNIVERSITY a license-issue fee of [+] as a one-time, non-refundable, non-cancelable,
non-creditable fee. This fee shall be paid as follows:



	•
	[+]
shall be paid within fifteen working-days after the Effective Date of this Agreement; and 








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DESIGNATES PORTIONS OF THIS DOCUMENT THAT HAVE BEEN OMITTED FOR CONFIDENTIALITY PURPOSES 


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	•
	[+]
shall be paid within fifteen working-days of the receipt of a Notice of Allowance from the U. S. Patent and Trademark Office of valid
and enforceable claims covering Licensed Product and/or Licensed Method.






	3.1.2
	Beginning
on January 1, 2000, and continuing on each January 1 thereafter for the term of this Agreement, LICENSEE shall pay UNIVERSITY a nonrefundable annual license
maintenance fee. This fee shall be paid as follows:



	•
	[+]
non-creditable fee on each January 1 that a U. S. Patent has not issued with valid and enforceable claims covering Licensed
Product and/or Licensed Method, or



	•
	[+]
fee on each January 1 that a U. S. Patent has issued with valid and enforceable claims covering Licensed Product and/or Licensed Method,
said fee being fully creditable against certain patent preparation and prosecution costs as set forth under Paragraph 3.3 below after a total of [+] in patent
preparation and prosecution fees has been paid by Licensee.






	3.1.3
	LICENSEE
shall pay UNIVERSITY a one-time milestone payment of [+] upon issuance of a U. S. Patent with valid and enforceable claims covering
Licensed Product or Licensed Method. 





        3.2    Royalties.    In consideration, in part, for the rights granted herein, including the exclusive worldwide
license granted to LICENSEE, LICENSEE shall pay the following royalties: 




	3.2.1
	LICENSEE
shall pay to UNIVERSITY an earned royalty of [+] of Net Sales of Licensed Products or performance of Licensed Method in each country in the
Territory in which Patent Rights exist, with certain patent preparation and prosecution costs as set forth in Paragraph 3.3 below being [+] creditable after a total of
[+] in patent preparation and prosecution fees has been paid by LICENSEE. If no patent with valid and enforceable claims covering Licensed Product or Licensed Method has issued
within [+] of the Effective Date in any country in which Patent Rights are pending, the earned royalty shall be reduced to [+], but shall revert to
[+] upon issuance of Patent Rights in any such country;



	3.2.2
	LICENSEE
shall pay to UNIVERSITY a minimum royalty of [+] per year for the life of UNIVERSITY'S Patent Rights, beginning after (a) issuance of a U.S.
patent with valid and enforceable claims covering Licensed Product or Licensed Method, and (b) commercialization by LICENSEE or a sublicensee of a product identified by screening using the
Licensed Method, said payment being fully creditable against certain patent preparation and prosecution costs as set forth in Paragraph 3.3 below after a total of [+] in
patent preparation and prosecution fees has been paid by LICENSEE;



	3.2.3
	LICENSEE
shall pay to UNIVERSITY a royalty of [+] of all fees LICENSEE receives from third parties for work performed under the grant of this Agreement, such
as "fee-for-service" activities wherein LICENSEE practices Licensed Method for such third party; and



	3.2.4
	Under
no circumstances shall the earned royalties to be paid to UNIVERSITY by LICENSEE be reduced by more than [+] in any reporting period by the credit
provided in Paragraph 3.2.1, although any unused credit may be carried over from one reporting period to subsequent reporting periods. 





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        3.3    Patent Costs.    LICENSEE shall pay all documented costs, past, present and future, incurred by UNIVERSITY in
obtaining and perfecting Patent Rights, except that any costs of patent preparation and prosecution in excess of [+] shall be creditable by LICENSEE against license maintenance
fees of Paragraph 3.1.2 and earned royalties of Paragraph 3.2.1 above. The credit against license maintenance fees shall not apply to patent preparation and prosecution fees relating to
reissue, reexamination and interference proceedings. It is understood that UNIVERSITY has already filed a PCT patent application naming all PCT countries including the U. S. 


        3.4   Payments
hereunder shall be made in U.S. dollars in the United States. If Licensed Products are sold or Licensed Method is performed for monies other than United States
dollars, LICENSEE shall first determine the earned royalty in the currency of the country in which Licensed Products were sold or Licensed Method was practiced and then convert the amount into
equivalent United States funds, using the exchange rate quoted in the Wall Street Journal on the last business day of the reporting period. 



        3.5   Royalties
earned on sales occurring in any country outside the United States may not be reduced by any taxes, fees, or other charges imposed by the government of such
country on the payment of royalty income, The LICENSEE is responsible for all bank transfer charges. Notwithstanding this, all payments made by LICENSEE in fulfillment of UNIVERSITY'S own tax
liability in any particular country will be credited against earned royalties or fees due UNIVERSITY for that country. 


        3.6   If
at any time, legal restrictions prevent the prompt remittance of royalties by the LICENSEE from any country where Licensed Products are sold or Licensed Method is
practiced, the LICENSEE shall convert the amount owed to UNIVERSITY into United States funds and shall pay UNIVERSITY directly from its U.S. source of funds for so long as the legal restrictions
apply. 


        3.7   Royalties
accruing to UNIVERSITY shall be payable by LICENSEE to UNIVERSITY when Licensed Products are invoiced, or if not invoiced, when delivered to a third party. 


        3.8   LICENSEE
shall pay all royalties under paragraph 3.2 semiannually and within 30 days of December 31 and June 30 of each calendar year. Each
such payment shall be for the most recently completed calendar half year. 


        3.9   In
the event that royalty payments are not received when due, the LICENSEE shall pay additional interest charges at an annual rate of [+].
Interest shall be calculated from the date payment was due and until actually received by UNIVERSITY. 


        3.10 If
any patent or patent claim within Patent Rights is held invalid in a final decision by a court of competent jurisdiction and last resort from which no appeal has or
can be taken, all obligation to pay royalties based on that patent or claim or any claim patentably indistinct therefrom will cease as of the date of final decision. LICENSEE shall not, however, be
relieved from paying any royalties that accrued before the final decision, or that are based on another patent or claim not involved in the final decision. 


        3.11 No
royalties may be collected or paid on Licensed Products sold to or Licensed Method performed for the U.S. Government or any agency thereof, as provided for in the
license to the government. 


 
 

ARTICLE 4    
    
    Reports and Inspections    
    



        4.1   LICENSEE
shall maintain accurate books and records, and, upon reasonable advance notice by UNIVERSITY, LICENSEE'S records, inventory, and Licensed Product production or
Licensed Method practice facilities shall be open for inspection by UNIVERSITY for the purpose of verifying 


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the
accuracy of reports. The LICENSEE shall keep, and cause sublicensee(s) to keep, accurate records and books showing the maintenance, production, inventory, sale, distribution or sublicensing of
Licensed Product and the performance of Licensed Method and shall permit duly authorized agents of UNIVERSITY, during regular business hours, to inspect upon reasonable notice facilities and records
of LICENSEE for the purpose of verifying quality control and royalty payments due UNIVERSITY. In the event payment is in error by [+] or more, LICENSEE shall pay all reasonable
documented, third party audit expenses. 



        4.2   After
the first commercial sale of Licensed Products or performance of Licensed Method, LICENSEE shall provide UNIVERSITY with a semiannual written report within
30 days after December 31 and June 30 of each year indicating: 




	4.2.1
	Quantity
of Licensed Product produced or Licensed Method performed in each location, relevant information on maintaining Licensed Products quality, and supplies of Licensed Products
held by LICENSEE and sublicensee(s); and



	4.2.2
	Summary
of Licensed Product and Licensed Method gross sales and Net Sales for both LICENSEE and sublicensee(s); and



	4.2.3
	The
royalties due, including the method used to calculate royalties, as well as the exchange rates used, if applicable; and



	4.2.3
	An
accounting of the quantity of Licensed Product sold and Licensed Method performed by LICENSEE and each sublicensee, including a summary of domestic and international distribution
on which royalties are payable. 







        4.3   Beginning
six months after the Effective Date and continuing semi-annually thereafter, LICENSEE shall submit to UNIVERSITY a progress report covering
LICENSEE'S activities related to the development and testing of all Licensed Products and Licensed Methods and, if applicable, activities related to the obtaining of the governmental approvals
necessary for marketing and distribution. Progress reports are required for each Licensed Product and Licensed Method until the first commercial sale of that Licensed Product occurs in the United
States and shall again be required if commercial sales of such Licensed Product or performance of Licensed Method are suspended or discontinued. 


        4.4   Progress
reports submitted under section 4.3 shall include, but are not limited to, the following topics: 



	•
	summary
of work completed



	•
	key
scientific discoveries



	•
	summary
of work in progress



	•
	market
plans for introduction of Licensed Products and Licensed Methods



	•
	current
schedule of anticipated events or milestones, and



	•
	a
summary of resources (dollar value) spent in the reporting period 



 
 

ARTICLE 5    
    
    Infringement    
    


        5.1   LICENSEE
and sublicensee(s) shall mark all shipping and other containers of Licensed Product with the appropriate markings to reflect that unauthorized production, use,
sale, and distribution are prohibited and that a U.S. Patent is either applied for or has been granted. 


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        5.2   Nothing
contained in this Agreement confers any right to use in advertising, publicity, or other promotional activities any name, trade name, trademark, or other
designation of either party hereto to the other party (including contraction, abbreviation, or simulation of any of the foregoing). Unless required by law, the use by LICENSEE of the name "The
University of Arizona" is prohibited. 


        5.3   The
LICENSEE shall notify UNIVERSITY promptly of any known production, sale, marketing, distribution, or use of Licensed Product or the performance of Licensed Method by
persons that are not authorized to produce, use, or sell Licensed Product. Such notification shall include reasonable details that should enable UNIVERSITY to investigate and terminate such
unauthorized activity, and UNIVERSITY retains the right to terminate such activity. 


        5.4   Pursuant
to this Agreement, LICENSEE is empowered: 




	5.4.1
	to
bring suit in its own name, at its own expense, and on its own behalf for infringement of presumably valid claims in Patent Rights, and



	5.4.2
	in
any such suit, to enjoin infringement and to collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement, and



	5.4.3
	in
any such suit, with the prior written permission of UNIVERSITY, such permission not to be unreasonably withheld, to settle any claim or suit for infringement of Patent Rights, 





for
Patent Rights for which LICENSEE has exclusive rights under this Agreement, provided that LICENSEE shall notify UNIVERSITY of LICENSEE'S intention to file suit at least fourteen (14) days
prior to filing thereof. In the event that LICENSEE exercises its rights under this paragraph, unless UNIVERSITY then notifies LICENSEE in writing, within seven (7) days after UNIVERSITY'S
receipt of LICENSEE'S notice, that UNIVERSITY agrees to bear one-half of the expense of prosecuting such suit, all recoveries had or obtained in such suit shall belong solely to LICENSEE,
with the exception of any earned royalties payable to UNIVERSITY as set forth in this Agreement. In any suit brought by LICENSEE under this Paragraph in which UNIVERSITY has not agreed to bear
one-half of the expenses of such suit as detailed in Paragraph 5.5, UNIVERSITY shall have the right to be represented at trial of any such suit by counsel of UNIVERSITY'S choice at
LICENSEE'S expense if such suit involves, or causes to become involved, actual or potential rights, obligations, and/or properties of UNIVERSITY. LICENSEE agrees to keep UNIVERSITY reasonably apprised
of the status and progress of any such litigation. 


        5.5   If
UNIVERSITY notifies LICENSEE that UNIVERSITY agrees to bear one-half of expenses as specified in paragraph 5.4, and if UNIVERSITY pays LICENSEE
from time to time (but not less than once per calendar quarter) as expenses are incurred, then LICENSEE and UNIVERSITY may agree on counsel to represent them jointly and all recoveries had or obtained
in such suit (after deduction of all expenses and fees incurred in prosecuting such suit) shall be divided equally between LICENSEE and UNIVERSITY. 


        5.6   In
the event that suit is brought by LICENSEE under this Article, UNIVERSITY agrees that LICENSEE may, if necessary, join UNIVERSITY as a party plaintiff in any such
suit. 


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        5.7   In any infringement action commenced under this Article, in which UNIVERSITY fails to notify LICENSEE, as provided in paragraph 5.4, that UNIVERSITY agrees to
bear one-half of the expense of prosecuting such suit, the expenses in such action, including, but not limited to, costs, fees, attorney fees, and disbursements, shall be paid solely by
LICENSEE. 


        5.8   UNIVERSITY
shall cooperate fully with LICENSEE in connection with any infringement action initiated by LICENSEE under this Article, and UNIVERSITY agrees to use
reasonable efforts to promptly provide reasonable access to all necessary documents, faculty and employees of UNIVERSITY and to render reasonable assistance in response to a written request by
LICENSEE. 


        5.9   In
the event that a declaratory judgment action alleging invalidity or non-infringement of any of the patents included in Patent Rights shall be brought
against LICENSEE alone or raised by way of counterclaim or affirmative defense in an infringement suit brought by LICENSEE under this Article, LICENSEE is empowered: 




	5.9.1
	to
defend the suit in its own name, at its own expense, and on its own behalf, for presumably valid claims in such patents; and



	5.9.2
	in
any such suit, to enjoin infringement and to collect for its use, damages, profits, and awards of whatever nature recoverable for such infringement; and



	5.9.3
	in
any such suit, with the prior written permission of UNIVERSITY, such permission not to be unreasonably withheld, to settle any claim or suit for declaratory judgment involving
Patent Rights. 





Nothing
in this Paragraph 5.9 shall be construed as limiting any rights granted to or retained by either UNIVERSITY or LICENSEE under this Article. 


        5.10 In
the event that LICENSEE recovers damages (excluding those set for willful infringement) in any action brought under this Article, LICENSEE shall pay to UNIVERSITY an
earned royalty on such recovery (excluding recovery for willful infringement and after deducting all expenses and fees incurred by LICENSEE in prosecuting or defending such suit), the amount of such
royalty to be equal to that specified in section 3.2.2 and to be payable as specified under paragraph 3.8. 


        5.11 Nothing
contained within this Article or this Agreement shall be construed to obligate UNIVERSITY or LICENSEE to bring any suit or to enforce any rights under this
Agreement. Additionally, nothing contained within this Article or this Agreement shall be construed to limit the ability of UNIVERSITY or LICENSEE to bring any suit or to enforce any rights under this
Agreement. 


 
 

ARTICLE 6    
    
    Term and Termination    
    


        6.1   This
Agreement shall be in effect when fully executed by the parties. This Agreement shall have the term of ten years from the Effective Date hereof or until the
expiration of the last-to-expire patent licensed under this Agreement, whichever comes later in time. 


        6.2   LICENSEE
may terminate this Agreement or grant of rights hereunder, at any time, upon ninety (90) days prior written notice to UNIVERSITY. 



        6.3   Upon
termination of this Agreement under Sections 6.5, 6.6 or 6.7, LICENSEE shall immediately cease use of the rights granted herein, and all Licensed Product under the
control of LICENSEE and/or sublicensee(s) shall be fully and completely destroyed by LICENSEE using appropriate chemical and/or mechanical methods, excepting Licensed Product stock held by
sublicensee(s) that remains in compliance with the terms and conditions of this Agreement. 


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        6.4   Termination
of the Agreement granted hereunder for any reason by either party shall not relieve the parties of any obligation accruing prior to such termination. 


        6.5   If
LICENSEE should fail to perform or should violate any term of this Agreement [+] then UNIVERSITY may give written notice of the default and,
if LICENSEE fails to correct the default and implement action to cure such default within ninety (90) days, then UNIVERSITY shall have the right to cancel or terminate this Agreement. 



        6.6   This
Agreement, or any exclusive sublicense agreement hereunder, will terminate automatically if LICENSEE or any exclusive sublicensee: 




	6.6.1
	terminates
its incorporation, except as provided in Article 9; or



	6.6.2
	ceases
the commercial sale of Licensed Products or performance of Licensed Method; or



	6.6.3
	liquidates
a substantial portion of its assets relating to the sale of Licensed Products or the performance of Licensed Method except as provided in Article 9; or



	6.6.4
	becomes
insolvent; or



	6.6.5
	makes
an assignment of any rights under this Agreement (other than a security interest) for the benefit of creditors. 







        6.7   UNIVERSITY
shall have the right, at its sole discretion, to terminate this Agreement or any sublicense agreements hereunder if, during the term of this Agreement,
LICENSEE or an exclusive sublicensee: 




	6.7.1
	files
a petition of bankruptcy; or



	6.7.2
	notifies
UNIVERSITY of its intention to file a petition of bankruptcy; or



	6.7.3
	notifies
UNIVERSITY of its intention to have a petition of bankruptcy filed against it; or



	6.7.4
	notifies
UNIVERSITY that a third party has filed or intends to file an involuntary petition of bankruptcy against it. 





Notice
of termination under this section shall be given by UNIVERSITY to LICENSEE in writing. Termination of this Agreement under this section is effective upon LICENSEE'S receipt of the written
notice from UNIVERSITY. 


 
 

ARTICLE 7    
    
    Due Diligence    
    


        7.1   LICENSEE,
upon execution of this Agreement, shall use reasonable and prudent business standards to diligently proceed to produce Licensed Products and to perform
Licensed Method and shall use reasonable and prudent business standards to earnestly and diligently endeavor to sell and offer for sale Licensed Products or to perform Licensed Method. LICENSEE shall
use reasonable and prudent business standards to diligently endeavor to fill the market demands for Licensed Products and Licensed Method within the Field of Use and in the Territory after LICENSEE
has begun commercial sales of Licensed Product. 


        7.2   LICENSEE
shall use reasonable and prudent business standards to diligently endeavor to obtain all necessary governmental approvals for the manufacture, use, marketing,
sale, and distribution of Licensed Products and/or performance of Licensed Method. 


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        7.3   LICENSEE
shall: 




	7.3.1
	spend
an aggregate of not less than [+] for the development of Licensed Products and Licensed Method during the first [+] from the
Effective Date of this Agreement;



	7.3.2(a)
	[+]



	(b)
	[+]



	7.3.3(a)
	[+]



	(b)
	[+]



	7.3.4
	[+]








If
LICENSEE is unable or unwilling to perform any of the provisions of this Paragraph 7.3, then UNIVERSITY has the right and option to terminate this Agreement upon ninety (90) days
written notice to LICENSEE. This right, if exercised by UNIVERSITY, supercedes the rights granted to LICENSEE in Article 2. 


 
 

ARTICLE 8    
    
    Notices    
    


        Any royalty or fee payment, notice, or other communication required or permitted to be made or to be given to either party under this Agreement shall be
sufficiently made or given on the date of receipt if sent to such party by certified first class U.S. mail, postage prepaid, return receipt requested, addressed to that party at its address set
forth below. 


        If
to UNIVERSITY: 




Rita
C. Manak, Ph.D., Director

Office of Technology Transfer

The University of Arizona

Main Gate 515

888 N. Euclid Avenue

Tucson, Arizona 85721-0158 





        If
to LICENSEE: 




John
S. Lazo

Chief Executive Officer

ProlX Pharmaceuticals, Inc.

P.O. Box 10146

Pittsburgh, PA 15232 





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ARTICLE 9    
    
    Assignment    
    


        This Agreement may be assigned by UNIVERSITY. This Agreement shall not be assigned by LICENSEE except (a) with the prior written consent of UNIVERSITY,
which consent shall not be unreasonably withheld; or (b) as part of a sale or transfer of substantially the entire business of LICENSEE relating to operations which concern this Agreement. 


 
 

ARTICLE 10    
    
    No Warranties    
    


        10.1 EXCEPT
AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT, UNIVERSITY MAKES NO REPRESENTATIONS AND EXTENDS NO WARRANTIES OF ANY KIND, EITHER EXPRESS OR IMPLIED,
INCLUDING, BUT NOT LIMITED TO, WARRANTY OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE, AND VALIDITY OF PATENTED RIGHTS CLAIMS, ISSUED OR PENDING. IT IS AGREED THAT LICENSEE ACCEPTS LICENSED
PRODUCTS AND LICENSED METHODS ON AN "AS IS" BASIS. 


        10.2 NOTHING
IN THIS AGREEMENT, EITHER EXPRESS OR IMPLIED, OBLIGATES UNIVERSITY EITHER TO BRING OR TO PROSECUTE ACTIONS OR SUITS AGAINST THIRD PARTIES FOR PATENT
INFRINGEMENT OR TO FURNISH ANY KNOW-HOW OR TRADE SECRETS NOT PROVIDED AS PART OF UNIVERSITY'S PATENT RIGHTS. 


        10.3 IN
NO EVENT SHALL UNIVERSITY BE LIABLE FOR ANY INCIDENTAL, SPECIAL, OR CONSEQUENTIAL DAMAGES RESULTING FROM THE EXERCISE OF THIS LICENSE OR THE USE OF THE TECHNOLOGY OR
LICENSED PRODUCTS. 


        10.4 NO
WARRANTY OR REPRESENTATION IS MADE THAT ANYTHING MADE, USED, OR SOLD UNDER THE TERMS OF THIS AGREEMENT WILL BE FREE FROM INFRINGEMENT OF ANY THIRD PARTY PATENTS. 


        10.5 THIS
AGREEMENT DOES NOT CONFER BY IMPLICATION, ESTOPPEL, OR OTHERWISE ANY LICENSE OR RIGHTS TO ANY OTHER PATENT OF UNIVERSITY OTHER THAN PATENT RIGHTS AS EXPRESSLY
STATED HEREIN, REGARDLESS OF WHETHER SUCH PATENTS ARE DOMINANT OR SUBORDINATE TO PATENT RIGHTS. UNIVERSITY REPRESENTS THAT AS OF THE EFFECTIVE DATE, IT IS NEITHER THE OWNER NOR THE ASSIGNEE OF ANY
PATENT(S) OR PATENT APPLICATION(S) WHICH INCLUDES CLAIMS WHICH ARE DOMINANT TO PATENT RIGHTS. UNIVERSITY FURTHER REPRESENTS THAT, AS OF THE EFFECTIVE DATE, IT IS THE OWNER OF THE PATENT RIGHTS AND, AS
OF THE EFFECTIVE DATE OF THIS AGREEMENT, IS AWARE OF NO PRIOR ART OR ACTIVITY THAT WOULD RENDER INVALID OR UNENFORCEABLE ANY PATENT ISSUING ON THE PATENT RIGHTS. 


 
 

ARTICLE 11    
    
    Indemnification    
    


        11.1 LICENSEE
shall indemnify, hold harmless and defend UNIVERSITY, its officers, employees, and agents, the sponsors of the research that led to Technology, and the
inventors of the Technology leading to patents and patent applications in Patent Rights and their employers, against any and all claims, suits, losses, damage, costs, fees, and expenses resulting from
or arising out of the exercise of this Agreement or any sublicense. This indemnification includes, but is not limited to, any product liability. Further, such indemnification by LICENSEE shall exclude
claims, losses, damage costs, fees and expenses arising from the gross negligence or willful misconduct of UNIVERSITY, its officers, 


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employees,
agents, the sponsors of the research that led to the Technology and the Inventor of the Technology leading to the patents and patent applications in Patent Rights, and their employees. 


        11.2 At
least thirty (30) days prior to the earlier of commercialization by LICENSEE of a Licensed Product or Licensed Method or clinical testing of a Licensed
Product or Licensed Method (where insurance coverage is not being provided to LICENSEE and UNIVERSITY by a governmental body or other entity), LICENSEE, at its sole cost and expense, shall insure its
activities in connection with the work under this Agreement and obtain, keep in force, and maintain insurance as follows, or an equivalent program of self insurance: 




	11.2.1
	Comprehensive
or commercial general liability insurance (contractual liability included) with its minimum limits as follows:



	•
	Each
Occurrence $1,000,000



	•
	Products/Completed
Operations Aggregate $5,000,000



	•
	Personal
and Advertising Injury $1,000,000



	•
	General
Aggregate (commercial form only) $5,000,000



	11.2.2
	The
coverage and limits specified above do not in any way limit the liability of the LICENSEE under this Agreement. The LICENSEE shall furnish UNIVERSITY with certificates of
insurance showing compliance with all requirements. Such certificates must:



	•
	Provide
for thirty (30) day advance written notice to UNIVERSITY of any modification.



	•
	Indicate
that UNIVERSITY has been endorsed as an additional Insured under the coverage specified above.



	•
	Include
a provision that the coverage will be primary and will not relate to nor will be excess over any valid and collectable insurance or program of
self-insurance carried or maintained by UNIVERSITY. 





        11.3 UNIVERSITY
shall notify LICENSEE in writing of any claim or suit brought against UNIVERSITY in respect of which UNIVERSITY intends to invoke the provisions of this
Article. LICENSEE shall keep UNIVERSITY informed on a current basis of its defense of any claims under this Article. 


 
 

ARTICLE 12    
    
    Confidentiality    
    


        12.1 LICENSEE
and UNIVERSITY each agree to safeguard confidential data supplied to it by the other party and relating to UNIVERSITY'S Patent Rights against disclosure to
others with the same degree of care as it exercises with its own data of a similar nature. LICENSEE shall not use such data, except to perform its obligations under this Agreement, and shall not
disclose such data to others (except to its employees, agents, or consultants who are bound to LICENSEE by a like obligation of confidentiality) without the express written permission of UNIVERSITY,
except that the LICENSEE is not prevented from using or disclosing any of the data that: 




	12.1.1
	LICENSEE
can demonstrate by written records was previously known to it; or



	12.1.2
	is
now or becomes in the future public knowledge other than through acts or omissions of the LICENSEE; or



	12.1.3
	is
lawfully obtained by LICENSEE from sources independent of UNIVERSITY; or 






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	12.1.4
	is
independently developed by LICENSEE as shown by written documentation. 





The
secrecy obligations of LICENSEE under these terms shall remain in effect for five (5) years after the termination date of this Agreement. 



	12.2
	The
obligations of confidentiality and limited use hereunder apply to any confidential information of UNIVERSITY provided to LICENSEE relating to the subject matter of this
Agreement, whether supplied under this Agreement or previously. 



 
 

ARTICLE 13    
    
    Miscellaneous    
    


        13.1 This
Agreement is subject to and shall be construed and enforced in accordance with the laws of the State of Arizona, but the scope and validity of any patent or patent
application shall be governed by the applicable laws of the country where the patent or patent application is filed. 


        13.2 This
Agreement embodies the entire understanding of the parties, and there are no other agreements or understandings, either express or implied, between the parties
relating to the subject matter hereof. No amendment or modification of this Agreement shall be valid or binding upon the parties unless made in writing and signed on behalf of each of the parties by
their respective duly authorized officers or agents. The letter of intent dated December 1, 1997 and fully executed on December 5, 1997 is hereby terminated. 



        13.3 The
headings of the several Articles are inserted for convenience of reference only and are not intended to be a part of or affect the meaning or interpretation of this
Agreement. 


        13.4 LICENSEE
shall ensure that any products or services sold in the United States will be manufactured substantially within the United States. 


        13.5 LICENSEE
shall notify UNIVERSITY if LICENSEE becomes aware that this Agreement is subject to any U.S. or foreign government reporting or approval requirement, LICENSEE
shall make all necessary filings and pay all costs including, but not limited to, fees, penalties, and all other out-of-pocket costs associated with such reporting or approval
process. 


        13.6 LICENSEE
shall observe all applicable United States and foreign laws with respect to the transfer of Licensed Products or Licensed Method and related technical data to
foreign countries, including, without limitation, the Export Administration Regulations. 


        13.7 In
case any of the provisions contained in this Agreement is held to be invalid, illegal, or unenforceable in any respect, that invalidity, illegality, or
unenforceability will not affect any other provisions of this Agreement, and this Agreement will be construed as if the invalid, illegal, or unenforceable provisions had never been contained in it. 



        13.8 The
parties agree to be bound by applicable state and federal rules governing equal employment opportunity and nondiscrimination. 


        13.9 The
parties agree that should a dispute arise between them, in any manner, concerning this Agreement, and said dispute involves the sum of Thirty Thousand Dollars
($30,000) or less in money damages only, exclusive of interest or cost of attorney's fees, the parties will submit the matter to binding arbitration pursuant to the Arizona Supreme Court Rules for
Compulsory Arbitration and the decision of the arbitrator(s) shall be final and binding upon the parties. 



        13.10 The
parties recognize that the performance by the UNIVERSITY may be dependent upon the appropriation of funds by the State Legislature of Arizona. Should the
Legislature fail to appropriate the necessary funds, the UNIVERSITY may cancel this agreement without further duty or 


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obligation.
The UNIVERSITY agrees to notify LICENSEE as soon as reasonably possible after the unavailability of said funds comes to the UNIVERSITY'S attention. 


        13.11 This
Agreement is subject to the provisions of A.R.S. § 38-511. The UNIVERSITY may cancel this Agreement by written notice to the parties if
any person substantially involved in obtaining, drafting, or procuring this Agreement for or on behalf of the UNIVERSITY becomes an employee or consultant in any.capacity of LICENSEE. 


        13.12 The
failure of any party hereto at any time or times to require performance of any provisions of this Agreement shall in no manner affect its right to enforce such
provision at a later time. 


IN
WITNESS WHEREOF, each party hereto has executed this Agreement in duplicate originals by their respective and duly authorized officers on the day and year below written. 



	ARIZONA BOARD OF REGENTS	 	ProlX PHARMACEUTICALS, INC.
	                    on behalf of	 	 	 
	THE UNIVERSITY OF ARIZONA	 	(LICENSEE)
	

By	
 	
/s/ Richard Powell
	
 	

By	

/s/ John S. Lazo

	 	 	(Signature)	 	 	(Signature)
	

Name	
 	

 	
 	

Name	

John S. Lazo
	 	 	
 (Printed)	 	 	
 (Printed)
	

Title:	
 	

Vice President for Research
	
 	

Title	

CEO

	

Date:	
 	

6/3/99
	
 	

Date	

May 27, 1999

	

I have read this Agreement and accept and will abide by the terms and conditions of this Agreement	
 	

 	

 
	

/s/ Garth Powis
	
 	

 	

 
	Garth Powis	 	 	 
	

June 2nd 1999
	
 	

 	

 
	Date	 	 	 	 	 





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QuickLinks


EXCLUSIVE LICENSE AGREEMENT between THE UNIVERSITY OF ARIZONA and ProlX PHARMACEUTICALS, INC. Agreement Number 97-0268

ARTICLE 1 Definitions

ARTICLE 2 Grant

ARTICLE 3 Fees and Royalties

ARTICLE 4 Reports and Inspections

ARTICLE 5 Infringement


ARTICLE 6 Term and Termination

ARTICLE 7 Due Diligence

ARTICLE 8 Notices

ARTICLE 9 Assignment

ARTICLE 10 No Warranties

ARTICLE 11 Indemnification

ARTICLE 12 Confidentiality

ARTICLE 13 Miscellaneous