OTHERWISE EXPLOIT AND DISTRIBUTE LICENSED
PRODUCTS, (II) PRACTICE ANY METHOD, PROCESS OR PROCEDURE INCLUDED WITHIN THE
LICENSED PATENTS; AND TO HAVE ANY OF THE FOREGOING PERFORMED ON ITS BEHALF BY A
THIRD PARTY.
2.2
SUBLICENSES.
SUPERGEN MAY GRANT AND AUTHORIZE SUBLICENSES WITHIN
THE SCOPE OF THE LICENSE GRANTED TO SUPERGEN PURSUANT TO THIS AGREEMENT,
PROVIDED EACH SUCH SUBLICENSEE SHALL AGREE IN WRITING TO BE BOUND BY TERMS AND
CONDITIONS NOT INCONSISTENT WITH THE TERMS AND CONDITIONS HEREOF.
SUPERGEN
SHALL NOTIFY LICENSOR IN WRITING OF THE GRANT OF ANY SUCH SUBLICENSE, WHICH
NOTICE SHALL IDENTIFY THE SUBLICENSEE.
THE IDENTITY OF ALL SUBLICENSEES SHALL
BE CONFIDENTIAL INFORMATION (AS DEFINED BELOW) OF SUPERGEN.
2.3
FUTURE LICENSES.
LICENSOR AGREES THAT SHOULD LICENSOR BE OFFERED
ANY OPTION OR OPPORTUNITY TO LICENSE TECHNOLOGY WITHIN THE FIELD, LICENSOR WILL
COMMUNICATE WITH SUPERGEN REGARDING SUCH OPTION OR OPPORTUNITY TO LICENSE.
ANY
TECHNOLOGY LICENSED BY LICENSOR AND AGREED TO BY SUPERGEN DURING THE TERM OF
THIS AGREEMENT WITHIN THE FIELD WILL BE INCORPORATED INTO THIS AGREEMENT.
LICENSOR AND SUPERGEN WILL UPDATE EXHIBIT 1 OF THIS AGREEMENT AS APPROPRIATE TO
REFLECT INCORPORATION OF SUCH TECHNOLOGY.
ARTICLE 3
PAYMENTS AND REPORTS
3.1
EQUITY INVESTMENTS, LICENSE AND MAINTENANCE FEES.
AS
CONSIDERATION FOR THE RIGHTS AND LICENSES GRANTED BY LICENSOR TO SUPERGEN
HEREUNDER, SUPERGEN AGREES TO MAKE AN EQUITY INVESTMENT IN LICENSOR AND PAY THE
FOLLOWING AMOUNTS AT THE FOLLOWING TIMES:
-3-
3.1.1
INITIAL EQUITY INVESTMENT.
WITHIN TEN (10) DAYS OF THE EFFECTIVE
DATE, SUPERGEN SHALL PAY TO LICENSOR SIX HUNDRED THOUSAND U.S. DOLLARS
($600,000) FOR THE PURCHASE OF 150,000 SHARES OF LICENSOR COMMON STOCK (THE
"LICENSOR SHARES").
IN CONNECTION WITH SUCH PURCHASE SUPERGEN WILL EXECUTE AN
INVESTMENT REPRESENTATION STATEMENT IN THE FORM SET FORTH AS EXHIBIT 4.
WITHIN
120 DAYS LICENSOR WILL FILE A REGISTRATION STATEMENT PROVIDING FOR THE
REGISTRATION OF THE RESALE OF ALL 150,000 SHARES BY SUPERGEN, ALL AS SET FORTH
MORE FULLY IN THE REGISTRATION RIGHTS AGREEMENT ATTACHED AS EXHIBIT 5.
SUPERGEN
AGREES TO SELL NO MORE THAN 75,000 OF THE LICENSOR SHARES UNTIL THE ONE YEAR
ANNIVERSARY OF THIS AGREEMENT.
SUPERGEN AGREES TO SELL NO MORE THAN THIRTY
THOUSAND (30,000) SHARES OF LICENSOR SHARES PER TRADING DAY, FOR SO LONG AS
SUPERGEN HOLDS SUCH SHARES.
3.1.2
ANNUAL LICENSE FEE.
ON OR ABOUT EACH ANNUAL ANNIVERSARY OF THE
EFFECTIVE DATE, SUPERGEN WILL PAY TO LICENSOR TWO HUNDRED THOUSAND U.S. DOLLARS
($200,000) IN CASH OR SUPERGEN COMMON STOCK WITH PIGGYBACK REGISTRATION RIGHTS
THEREFOR.
PAYMENTS UNDER THIS SECTION 3.1.2 WILL CONTINUE UNTIL THE FIRST
FILING OF AN INVESTIGATIONAL NEW DRUG ("IND") APPLICATION IN THE UNITED STATES
FOR A CLINICAL INDICATION UTILIZING THE LICENSED PATENTS.
3.1.3
MILESTONE PAYMENTS.
(A)
PHASE III.
UPON COMMENCEMENT OF THE FIRST PHASE III TRIAL IN THE
UNITED STATES, EUROPE OR JAPAN BY SUPERGEN FOR THE FIRST THERAPEUTIC CLINICAL
CANDIDATE COVERED UNDER THE LICENSED PATENTS, NOT NECESSARILY RESTRICTED TO
CANCER INDICATIONS, SUPERGEN WILL PAY TO LICENSOR THE SUM OF ONE MILLION FIVE
HUNDRED THOUSAND U.S. DOLLARS ($1,500,000) IN CASH OR SUPERGEN STOCK ALONG WITH
PIGGYBACK REGISTRATION RIGHTS