Exhibit 10.1
LICENSE AGREEMENT
This License Agreement (the "Agreement"), effective as of October 23, 2006 (the
"Effective Date"), is entered into by and between Vical, Inc., a Delaware
corporation having offices at 863A Mitten Road, Burlingame, California 94010
("Valentis") and Vical Incorporated, a Delaware corporation having offices at
10309 Pacific Center Court ("Vical").
All references to Valentis and Vical in
this Agreement shall include their Affiliates (as defined below).
BACKGROUND
A.
Valentis is the owner or exclusive licensee of certain Patent
Rights and Know-How (as such terms are defined below), and Vical wishes to
acquire a license under the Patent Rights and Know-How; and
B.
Valentis is willing to grant Vical such a license, on the terms
and conditions set forth below.
NOW, THEREFORE, in consideration of the promises and the mutual covenants
hereinafter recited, the parties agree as follows:
ARTICLE 1.
DEFINITIONS
In this Agreement, the following terms shall have the meanings set forth in this
Article.
1.1
"AFFILIATE" MEANS ANY COMPANY, CORPORATION, DIVISION OR OTHER
ENTITY WHICH IS DIRECTLY OR INDIRECTLY CONTROLLING, CONTROLLED BY OR UNDER
COMMON CONTROL WITH A PARTY HERETO.
FOR THE PURPOSE OF THIS AGREEMENT, WITH
RESPECT TO ANY COMPANY, CORPORATION, DIVISION OR OTHER ENTITY, "CONTROL" SHALL
MEAN THE DIRECT OR INDIRECT OWNERSHIP OF AT LEAST FIFTY PERCENT (50%) OF THE
OUTSTANDING SHARES OR OTHER VOTING RIGHTS OF THE SUBJECT COMPANY, CORPORATION OR
OTHER ENTITY TO ELECT DIRECTORS.
1.2
"CONFIDENTIAL INFORMATION" MEANS (A) ANY PROPRIETARY OR
CONFIDENTIAL INFORMATION OR MATERIAL IN TANGIBLE FORM DISCLOSED HEREUNDER THAT
IS MARKED AS "CONFIDENTIAL" AT THE TIME IT IS DELIVERED TO THE RECEIVING PARTY,
OR (B) PROPRIETARY OR CONFIDENTIAL INFORMATION DISCLOSED ORALLY HEREUNDER WHICH
IS IDENTIFIED AS CONFIDENTIAL OR PROPRIETARY WHEN DISCLOSED AND SUCH DISCLOSURE
OF CONFIDENTIAL INFORMATION IS CONFIRMED IN WRITING WITHIN THIRTY (30) DAYS BY
THE DISCLOSING PARTY.
1.3
"KNOW-HOW" MEANS UNPATENTED AND/OR UNPATENTABLE TECHNICAL
INFORMATION, INCLUDING IDEAS, CONCEPTS, INVENTIONS, DISCOVERIES, DATA, DESIGNS,
FORMULAS, SPECIFICATIONS, PROCEDURES FOR EXPERIMENTS AND TESTS AND OTHER
PROTOCOLS, RESULTS OF EXPERIMENTATION AND TESTING, FERMENTATION AND PURIFICATION
TECHNIQUES, AND ASSAY PROTOCOLS OWNED BY VALENTIS AS OF THE EFFECTIVE DATE AND
VICAL AFTER THE EFFECTIVE DATE WHICH MAY BE NECESSARY FOR THE PRACTICE OF THE
VALENTIS PATENT RIGHTS SOLELY AS CONTEMPLATED HEREUNDER.
KNOW-HOW SHALL NOT
INCLUDE THE VALENTIS PATENT RIGHTS.
ALL KNOW-HOW SHALL BE CONFIDENTIAL
INFORMATION OF VALENTIS.
1.4
"VICAL PRODUCTS" MEANS ANY PRODUCT OR MATERIAL RESULTING FROM
VICAL'S USE OF THE LICENSED TECHNOLOGY.
1.5
"LICENSED TECHNOLOGY" MEANS THE PATENT RIGHTS AND THE KNOW-HOW.
1.6
"PATENT RIGHTS" MEANS THE PATENT APPLICATIONS AND PATENTS
EXPRESSLY LISTED IN EXHIBIT A ("PATENTS").
1.7
"THIRD PARTY" MEANS ANY PERSON OR ENTITY OTHER THAN VICAL OR
VALENTIS.
ARTICLE 2.
LICENSE
2.1
GRANT TO VICAL.
SUBJECT TO THE TERMS AND CONDITIONS OF THIS
AGREEMENT, VALENTIS HEREBY GRANTS TO VICAL FOR THE SUM OF ONE HUNDRED EIGHTY
FIVE THOUSAND DOLLARS ($185,000.00) PAYABLE IN GOOD US FUNDS UPON THE EFFECTIVE
DATE, A NON-EXCLUSIVE, WORLDWIDE, ROYALTY-FREE, FULLY PAID UP LICENSE UNDER THE
LICENSED TECHNOLOGY, WITHOUT THE RIGHT TO GRANT SUBLICENSES EXCEPT TO