Exhibit 10.5
Confidential Treatment has been requested
for portions of this document marked with asterisks.
LICENSE AGREEMENT
This Agreement, effective as of August 10, 1998 (the "Effective Date"), is
by and between:
New York University (hereinafter "NYU"), 550 First Avenue, New York, N.Y.
10016
AND
Mindset Limited (hereinafter "CORPORATION"), a corporation organized and
existing under the laws of the British Virgin Islands, having an office at 1
Beit Eshel St., Old Katamon, Jerusalem 93227, ISRAEL.
RECITALS
WHEREAS, Dr. Miguel A. Pappolla (hereinafter "the SAMSF Scientist") of The
South Alabama Medical Science Foundation ("SAMSF") and/or Dr. Blas Frangione and
Dr. Jorge Ghiso (hereinafter "the NYU Scientists") have made certain inventions
relating to use of melatonin and melatonin analogs in the prevention or
treatment of amyloid-related disorders and in the use of melatonin analogs as
anti-oxidants, all as more particularly described in pending U.S. patent
applications owned by SAMSF and/or NYU, identified in annexed Appendix I and
forming an integral part hereof (hereinafter "the Pre-Existing Inventions");
WHEREAS, by a Research and License Agreement made as of the tenth day of
August 1998 between SAMSF and Corporation (the "SAMSF Agreement"), SAMSF has
agreed to undertake the Research Project (as hereinafter defined);
WHEREAS, subject to the terms and conditions hereinafter set forth, NYU is
willing to grant to CORPORATION and CORPORATION is willing to accept from NYU
the License (as hereinafter defined);
NOW, THEREFORE, in consideration of the mutual promises and agreements
contained herein, the parties hereto hereby agree as follows:
1. Definitions
a. "Calendar Year" shall mean any consecutive period of twelve months
commencing on the first day of January of any year.
b. "Corporation Entity" shall mean any company or other legal entity which
controls, or is controlled by, or is under common control with, CORPORATION;
control means the holding of twenty five and one tenth percent (25.1%) or more
of (i) the capital and/or (ii) the voting rights and/or (iii) the right to elect
or appoint directors.
c. "Date of First Commercial Sale" shall have the meaning set forth in
Section 6.a. hereof.
Confidential Treatment has been requested
for portions of this document marked with asterisks.
d. "Field" shall mean research, development and testing within
pharmaceutical, biotechnological and diagnostic development programs in the
field of Alzheimer's Disease and other central nervous system and
neurodegenerative diseases, and in the field of all other possible utilities for
melatonin analogs.
e. "License" shall mean the exclusive worldwide license to practice NYU's
share in the University Research Technology (as hereinafter defined) for the
development, manufacture, use and sale of the Licensed Products (as hereinafter
defined).
f. "Licensed Products" shall mean all products, drugs, diagnostic reagents,
diagnostic methods, therapeutic agents and therapeutic methods covered by a
claim of any unexpired UNIVERSITY Patents (as hereinafter defined) which has not
been disclaimed or held invalid by a court of competent jurisdiction from which
no appeal has been or can be taken.
g. "Net Sales" shall mean the total amount invoiced in connection with
sales of the Licensed