Exhibit 10.1
LICENSE AGREEMENT
This License Agreement (the "Agreement"), effective as of October 27, 2006 (the
"Effective Date"), is entered into by and between Valentis, Inc., a Delaware
corporation having offices at 863A Mitten Road, Burlingame, California 94010
("Valentis") and Juvaris BioTherapeutics, Inc., a Delaware corporation having
offices at 6200 Stoneridge Mall Road, Suite 3F, Pleasanton, CA 94588
("Juvaris").
All references to Valentis and Juvaris 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 Juvaris wishes to
acquire a license under the Patent Rights and Know-How; and
B.
Valentis is willing to grant Juvaris 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 WHICH
MAY BE NECESSARY FOR THE PRACTICE OF THE PATENT
Rights solely as contemplated hereunder.
Know-How shall not include the Patent
Rights.
All Know-How shall be Confidential Information of Valentis.
1.4
"JUVARIS CUSTOMER" MEANS ANY PERSON OR ENTITY (A) FOR WHOM
JUVARIS, PURSUANT TO A WRITTEN AGREEMENT, UNDERTAKES PROCESS DEVELOPMENT AND (B)
WHO OTHERWISE ABIDES BY THE REQUIREMENTS OF SECTION 2.3.
1.5
"JUVARIS PARTNER" MEANS AN ENTITY WITH WHOM JUVARIS, PURSUANT TO A
WRITTEN AGREEMENT AND A BONA FIDE COLLABORATION OR LICENSE OF RIGHTS, SHARES
SUBSTANTIAL COST AND ECONOMIC RISK OF THE DEVELOPMENT, COMMERCIALIZATION OR
MARKETING OF A JUVARIS PRODUCT.
1.6
"JUVARIS EXPRESSION MATERIALS" MEANS THOSE COMPOSITIONS OF MATTER
OR ARTICLES OF MANUFACTURE CREATED BY JUVARIS THAT ARE SUITABLE FOR THE
MANUFACTURE OF A POLYNUCLEOTIDE.
1.7
"JUVARIS PRODUCTS" MEANS ANY PRODUCT OR MATERIAL RESULTING FROM
THE USE OF THE LICENSED TECHNOLOGY BY OR ON BEHALF OF: (I)