EXHIBIT 10.53
NOTE:
Portions of this document marked "***" have been omitted and filed
separately with the Securities and Exchange Commission pursuant to a request for
confidential treatment of the omitted and separately filed portions.
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "Agreement") is entered into as of January 26, 2006
(the "Effective Date") by and between AVI BioPharma, Inc., an Oregon corporation
having its principal place of business at One SW Columbia, Suite 1105, Portland,
Oregon 97258, and Chiron Corporation, a Delaware corporation having its
principal place of business at 4560 Horton Street, Emeryville, California 94608,
U.S.A. ("Chiron").
BACKGROUND
WHEREAS, Chiron has developed certain intellectual property rights with respect
to HCV (as hereinafter defined) which relate to the HCV genome and encoded
proteins;
WHEREAS, Licensee (as hereinafter defined) is engaged in research and
development of antisense compounds for the treatment of HCV infection and
desires to commercialize such compounds, which activities may fall within the
scope of the Chiron Patent Rights (as hereinafter defined) as well as under
Licensee's own issued and pending patents;
WHEREAS, Licensee wishes to obtain a license under the Chiron Patent Rights for
such purposes;
WHEREAS, Chiron is willing to grant, and has offered to grant Licensee, a
license under the Chiron Patent Rights for a negotiable fully paid-up, one-time
fee; and
WHEREAS, as an alternative to the arrangement whereby Licensee would secure a
license under the Chiron Patent Rights for a fully paid up one time fee,
Licensee wishes to enter into an arrangement pursuant to which Licensee shall
provide consideration for the license under Chiron Patent Rights by paying to
Chiron milestone and royalty payments, which payments represent Chiron's
interest in the value contributed by the licensure of Chiron Patent Rights to
Licensee's program(s) for the research, development and commercialization of
Identified Products (as hereinafter defined).
NOW, THEREFORE, in consideration of the above premises and the mutual covenants
contained herein, the parties hereto agree as follows:
1.
DEFINITIONS
For the purposes of this Agreement, the following definitions shall apply, and
the terms defined herein in plural shall include the singular and vice-versa:
1.1.
"AFFILIATE" MEANS, WITH RESPECT TO A PARTY HERETO, ANY CORPORATION,
PARTNERSHIP, JOINT VENTURE OR OTHER BUSINESS ARRANGEMENT WHICH IS CONTROLLED BY,
CONTROLLING OR UNDER COMMON CONTROL WITH SUCH PARTY, AND SHALL INCLUDE ANY
DIRECT OR INDIRECT BENEFICIAL OWNERSHIP
OF MORE THAN FIFTY PERCENT (50%) OF THE VOTING STOCK OR PARTICIPATING PROFIT
INTEREST OF SUCH CORPORATION OR OTHER BUSINESS ENTITY.
WITHOUT LIMITING THE
GENERALITY OF THE FOREGOING, THE AFFILIATES OF CHIRON EXPRESSLY EXCLUDE NOVARTIS
A.G, A SWISS CORPORATION, AND ANY AFFILIATE THEREOF NOT OTHERWISE AN AFFILIATE
OF CHIRON (COLLECTIVELY, "NOVARTIS") UNLESS AND UNTIL SUCH TIME AS NOVARTIS
EXERCISES ITS RIGHTS TO CONTROL CHIRON IN ACCORDANCE WITH THE TERMS AND
CONDITIONS OF THE NOVEMBER 20, 1994 GOVERNANCE AGREEMENT BETWEEN CHIRON AND
NOVARTIS' PREDECESSOR IN INTEREST, CIBA-GEIGY LIMITED.
1.2.
"CHIRON PATENT RIGHTS" MEANS THE PATENTS OR PATENT APPLICATIONS
OWNED BY CHIRON LISTED IN EXHIBIT A ATTACHED HERETO, TOGETHER WITH ALL PATENTS
ISSUING THEREON,