Technology Assignment and License Agreement between Axys Pharmaceuticals, Inc. and Axys Advanced Technologies, Inc.
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This agreement, effective April 28, 2000, is between Axys Pharmaceuticals, Inc. and its subsidiary, Axys Advanced Technologies, Inc. Axys assigns certain proprietary technology, intellectual property, and business assets related to combinatorial chemistry to AAT. In return, AAT grants Axys a limited license to use this technology for its internal drug discovery and development. The agreement outlines the specific assets, patents, and contracts involved, and is part of a planned sale of AAT to Discovery Partners International, Inc. via a merger.
EX-10.6 4 ex10-6.txt EXHIBIT 10.6 1 EXHIBIT 10.6 TECHNOLOGY ASSIGNMENT AND LICENSE AGREEMENT THIS TECHNOLOGY ASSIGNMENT AND LICENSE AGREEMENT (the "AGREEMENT") is made and entered into effective as of April 28, 2000 (the "EFFECTIVE DATE") by and between AXYS PHARMACEUTICALS, INC., a Delaware corporation with offices at 180 Kimball Way, South San Francisco, CA 94080 ("AXYS"), and AXYS ADVANCED TECHNOLOGIES, INC., a Delaware corporation with offices at 180 Kimball Way, South San Francisco, CA 94080 ("AAT"). Each of Axys and AAT may be referred to herein individually as a "Party" and jointly as the "Parties." RECITALS WHEREAS, AAT is a wholly-owned subsidiary of Axys, and Axys is willing to assign to AAT all its right, title and interest in and to certain Axys proprietary technology, intellectual property and other business assets useful for the practice of combinatorial chemistry, and AAT is willing to grant to Axys a limited license under such technology and intellectual property solely for Axys' internal drug discovery, development and commercialization business activities, all on the terms set forth below; and WHEREAS, Axys intends, forthwith after entering into this Agreement, to sell AAT to Discovery Partners International, Inc. ("DPII") via a reverse triangular merger; NOW, THEREFORE, in consideration of the foregoing and the covenants and promises contained herein, the Parties hereby agree as follows: 1. DEFINITIONS 1.1 "AAT CONTRACTS" means the agreements set forth on Schedule 1.1 hereto. 1.2 "ADDITIONAL CHEMISTRY ASSETS" means the tangible assets owned by Axys that are being used by AAT as of the Effective Date and/or had heretofore been used in Axys' or AAT's combinatorial chemistry business and that were not previously assigned or otherwise transferred to AAT, all of which are rlisted in Schedule 1.2 attached hereto. 1.3 "AFFILIATE" means, with respect to a particular Party, another corporation, partnership or similar entity that controls, is controlled by or is under common control with such Party, but in any case, only for the duration of the period that such other corporation, partnership or similar entity controls, is controlled by or is under common control with such Party. For the purposes of the definition in this Section 1.3, the word "control" (including, with correlative meaning, the terms "controlled by" or "under the common control with") means the ownership of at least fifty percent (50%) of the voting stock (or voting or membership interest, if not a corporation) of such entity. For the purposes of clarification, it is the parties' intent that if a corporation, partnership or similar entity ceases to control, be controlled by or be under common control with a particular Party, such entity shall, at the time such control relationship ceases, cease to have any rights under this Agreement, including, without limitation, any license rights 1. 2 granted pursuant to this Agreement. Notwithstanding the foregoing, Axys and AAT shall be deemed not to be Affiliates of each other. 1.4 "ASSIGNED CONTRACTS" means the agreements set forth on Schedule 1.4 hereto, which are assigned to AAT by Axys pursuant to Section 2.1(c). 1.5 "ASSIGNED KNOW-HOW" means the Information that is Controlled by Axys as of the Effective Date, including, without limitation, the Information identified generally in Schedule 1.5 attached hereto, which is necessary to or used by AAT in its current combinatorial chemistry business, but excluding the Assigned Protocols and Licensed Technology. 1.6 "ASSIGNED PATENTS" means those patents and patent applications set forth in Schedule 1.6 hereto, and including any and all rights that are Controlled by Axys as of the Effective Date with respect to such patents and patent applications, including without limitation the rights to enforce and file divisional, continuation, continuation-in-part, substitution, reissue, reexamination, and extension and foreign equivalent applications thereof. 1.7 "ASSIGNED PROTOCOLS" means the Protocols Controlled by Axys that are set forth in Schedule 1.7 hereto, and all trade secret and other intellectual property rights in such Protocols that are Controlled by Axys as of the Effective Date. 1.8 "ASSIGNED SOFTWARE" means the computer software programs, in object code and, to the extent Controlled by Axys, source code forms, that are either owned by Axys or licensed to Axys and are described generally in Schedule 1.8 hereto, and all documentation for such programs in Axys' possession as of the Effective Date, and all copyright and other intellectual property rights in any of the foregoing that are Controlled by Axys as of the Effective Date. In addition, for purposes of Section 2.2 and Article 6, "Assigned Software" (and therefore also "Assigned Technology" and "Confidential Information") shall include the Post-Effective-Date computer software programs, in object code form, and all documentation for such programs (other than source code), and all copyright and other intellectual property rights, pertaining to the improved user interface which AAT currently proposes to develop between the Effective Date and December 31, 2000 for free delivery to counterparties under the AAT Contracts. 1.9 "ASSIGNED TECHNOLOGY" means the Assigned Patents, the Assigned Know-How, the Assigned Protocols, and the Assigned Software. 1.10 "COLLABORATION" means a collaboration agreement or similar agreement establishing a strategic alliance between Axys (or its Affiliate) and a third party corporate (or other business) entity, where the primary goal of such agreement is the collaborative discovery and/or development of drug candidates based on research directed at one or more particular targets or disease areas and where it is anticipated that the role of Axys (or its Affiliate): (a) will not involve only the provision of compounds and/or Protocols received under this Agreement or the Compound Purchase Agreement; and 2. 3 (b) will involve a significant application of other Axys (or its Affiliate's) technology or drug discovery expertise and/or significant efforts by Axys (or its Affiliate's) employees. 1.11 "COLLABORATION EXCEPTION" means use of combinatorial chemistry technology to design and synthesize compounds as part of a Collaboration and use of such compounds within the scope of such Collaboration. 1.12 "CONTROLLED" means, with respect to any material, Information or intellectual property right, that Axys owns or has a license to such material, Information or intellectual property right with the right to assign or license (as applicable) such material, Information or intellectual property right as provided herein without violating any agreement with a third party. 1.13 "INFORMATION" means information and data of any type and in any tangible or intangible form, including without limitation inventions, works of authorship, plans, designs, practices, methods, techniques, specifications, production technical operating procedures, standard operating procedures, protocols under development, formulations, software, formulae, knowledge, know-how, skill, experience, test data, analytical and quality control data, stability data, results of studies and patent and other legal information or descriptions. 1.14 "LICENSED GENERAL KNOW-HOW" means Information that is Controlled by Axys as of the Effective Date which is now being used by Axys in areas other than combinatorial chemistry, as well as being used in AAT's combinatorial chemistry business. 1.15 "LICENSED PATENTS" means those patents and patent applications (if any) that are Controlled by Axys as of the Effective Date (including divisional, continuation, continuation-in-part, substitution, reissue, reexamination, and extension and foreign equivalent applications thereof) and are now being used by Axys in areas other than combinatorial chemistry, as well as being used in AAT's combinatorial chemistry business. 1.16 "LICENSED SOFTWARE" means the computer software programs (if any), in object code and, to the extent Controlled by Axys, source code forms, that are Controlled by Axys (and including all documentation for such programs in Axys' possession as of the Effective Date, and all copyright and other intellectual property rights in any of the foregoing that are Controlled by Axys as of the Effective Date), and are now being used by Axys in areas other than combinatorial chemistry, as well as being used in AAT's combinatorial chemistry business. 1.17 "LICENSED TECHNOLOGY" means the Licensed Patents, the Licensed General Know-How and the Licensed Software. It is intended that the difference between items identified as Assigned Technology and the items assigned as Licensed Technology is that the patents, software, and Information within the Licensed Technology are those now being used by Axys in areas other than combinatorial chemistry, as well as being used in AAT's combinatorial chemistry business. 1.18 "LIMITATION" means that Axys (and its Affiliates and permitted sublicensees) shall be entitled to use the Assigned Technology and (within the combinatorial chemistry field of use) the Licensed Technology for, but only for, work performed by Axys and 3. 4 its Affiliates within their respective facilities (or, in the case of a permitted sublicense under Section 2.2, by the permitted sublicensee within the permitted sublicensee's facilities) as part of Axys' (or its Affiliates') internal research and/or development work in the area of drug discovery, development and commercialization or by Axys or its Affiliates and/or one of their Collaboration partners within the scope of the Collaboration Exception. It is understood and agreed the scope of the Limitation does not permit Axys (or its Affiliate or sublicensee) to transfer to any third party any library or collection of compounds created in connection with Axys' or a permitted sublicensee's use of the Assigned Technology or the Licensed Technology, except to a Collaboration partner in connection with the Collaboration Exception, or to the successor in interest of Axys pursuant to assignment of this Agreement under Section 7.4. Included within the Limitation are the restrictions on sublicensing included in Section 2.2 and the restrictions on use included in Section 2.3(b). It is understood that any drug or pharmaceutical or diagnostic compound developed based on the foregoing use may be commercialized for any and all prophylactic, therapeutic and diagnostic uses, with the further understanding that such commercial use is not as part of a library or collection of compounds sold or otherwise transferred to a third party for screening or other similar discovery uses. 1.19 "PROTOCOL" means a detailed set of combinatorial chemistry synthetic methods and standard operating procedures designed to be used for synthesizing a set of related compounds using combinatorial chemistry techniques. 2. TECHNOLOGY LICENSES AND ASSET TRANSFER 2.1 ASSIGNMENT OF ASSETS. (a) Axys hereby assigns to AAT all its right, title and interest in and to the Assigned Technology and the Additional Chemistry Assets. Axys assigns the Assigned Technology and the Additional Chemistry Assets to AAT, and AAT hereby accepts such assets as of the Effective Date, "AS IS" and "WHERE IS" and without any warranty and expressly subject to Sections 4.2 and 4.3. (b) The assignment of assets under subsection (a) is pursuant to an executed Bill of Sale, Assignment of Patents and Patent Applications, Assignment of Trademark Applications and Assignment of Copyrights, each in the form attached hereto as Schedule 2.1(b) and delivered by Axys to AAT simultaneously with the execution and delivery of this Agreement. Axys further agrees to undertake all additional actions and execute and deliver all additional documents and instruments reasonably requested by AAT from time to time to perfect AAT's title in and to the Assigned Technology and the Additional Chemistry Assets. (c) Effective as of and after the Effective Date, Axys hereby assigns to AAT all of Axys' rights, claims and benefits (except as otherwise provided in subsection (d)), and delegates all its obligations, responsibilities and liabilities under the Assigned Contracts, and AAT hereby assumes and agrees to perform all Axys' obligations, responsibilities and liabilities and agrees to accept all Axys' rights, claims and benefits (except as otherwise provided in subsection (d)), under the Assigned Contracts. If the counterparty's consent is required but not obtained, Axys shall enforce and receive all rights, claims and benefits in trust for AAT, and deliver over any cash or assets arising therefrom to AAT upon request. 4. 5 (d) The rights in the Assigned Technology assigned to AAT under Section 2.1(a) are expressly subject to any and all license rights that Axys has previously granted to third parties identified on Schedule 2.1(d), under the contracts specified on Schedule 2.1(d), with respect to such technology and intellectual property rights, to the extent and so long as such license rights remain in force. (e) All notebooks, documents, memoranda, reports, files, books, correspondence, lists and other written and graphic records relating to the combinatorial chemistry business, which Axys or its employees, agents or consultants prepared, used or constructed directly in the course of and pursuant to the conduct of Axys' combinatorial chemistry business prior to the Effective Date (collectively, "Business Materials") shall be AAT's exclusive property, and Axys hereby agrees to deliver all Business Materials promptly to AAT at AAT's request. 2.2 LICENSE GRANT TO AXYS. (a) AAT hereby grants to Axys and Axys' Affiliates the non-exclusive, world-wide, fully paid-up, irrevocable, perpetual, royalty-free license, with the limited right to grant sublicenses as provided below, to use, practice and commercially exploit the Assigned Technology within the scope of the Limitation and not otherwise. (b) Neither Axys nor its Affiliates may sublicense to third parties the rights licensed under this Section 2.2, except (i) to third party contractors for the performance of work, within the scope of the Limitation and not otherwise, paid for by Axys (or its Affiliate) and on Axys' (or its Affiliate's) behalf or (ii) to one or more Collaboration partners of Axys (or its Affiliate) for the performance of work pursuant to the applicable Collaboration within the Collaboration Exception, and not otherwise, in either case pursuant to appropriate written non-disclosure and limitation-of-use agreements. (c) The license rights under this Section 2.2 may be assigned to a successor in interest of Axys pursuant to assignment of this Agreement by Axys as permitted under Section 7.4, but may not otherwise be assigned. Axys and its Affiliates and permitted sublicensees shall not transfer to any third party any library or collection of compounds made by practicing the Assigned Technology as permitted hereunder except in connection with a Collaboration Exception or to the successor in interest of Axys pursuant to assignment of this Agreement under Section 7.4. 2.3 LICENSE GRANT TO AAT. (a) Axys hereby grants to AAT the non-exclusive (subject to subsection 2.3(b)), world-wide, fully-paid-up, irrevocable, perpetual, royalty-free, assignable, sublicensable license to use, practice and commercially exploit the Licensed Technology solely in the field of combinatorial chemistry and not otherwise. It is understood that Axys and its Affiliates retain the non-exclusive rights under the Licensed Technology within the field of combinatorial chemistry solely for use within the scope of the Limitation, and retain exclusively all rights to the Licensed Technology outside the field of combinatorial chemistry. 5. 6 (b) During the "Term," as such term is defined in that certain Non-Competition and Non-Disclosure Agreement of even date herewith between Axys and DPII, Axys agrees not to use, practice or commercially exploit the Licensed Technology in the field of combinatorial chemistry except within the scope of the Limitation. AAT agrees not to use, practice or commercially exploit the Licensed Technology except within the field of combinatorial chemistry. 2.4 USER INTERFACE TECHNOLOGY TRANSFER. At the same time as AAT delivers to the counterparties under the AAT Contracts the improved user interface program (and documentation) described in the last sentence of Section 1.8, it shall also deliver the items described in such last sentence of Section 1.8 to Axys (subject to Section 2.2 and Article 6). 2.5 COMPOUND TRANSFER. AAT covenants that it shall provide to Axys, promptly after its request, at least six micromoles of each compound produced by AAT prior to the Effective Date, without further charge, but excluding any compounds for which Axys has already received at least six micromoles prior to the Effective Date. Such compounds shall be included within the scope of the license rights granted to Axys under Section 2.2 hereof. The Parties agree that in the event that any such requested compounds are not available in the inventory of AAT, AAT will supply to Axys at least six micromoles of other compounds produced by AAT, such compounds to be selected by the good faith discussion of the Parties, such that AAT is not obligated to resynthesize any of the earlier-created compounds. 3. INTELLECTUAL PROPERTY MATTERS 3.1 INFRINGEMENT BY THIRD PARTIES. AAT shall have the sole and exclusive right to bring and control any action or proceeding with respect to infringement of any patents owned by AAT, including without limitation the Assigned Patents, at its own expense and by counsel of its own choice. 3.2 ALLEGATION OF INFRINGEMENT BY THIRD PARTIES. Each Party shall be solely responsible for responding to any claim or allegation of infringement made by a third party against such Party based on its post-Effective-Date actions or activities. 4. REPRESENTATIONS AND WARRANTIES 4.1 MUTUAL REPRESENTATIONS AND WARRANTIES. Each Party hereby represents and warrants to the other Party that, as of the Effective Date: (a) such Party is duly organized and validly existing under the laws of the state of its incorporation and has full corporate power and authority to enter into this Agreement and to carry out the provisions hereof; (b) such Party has taken all corporate action necessary to authorize the execution and delivery of this Agreement and the performance of its obligations under this Agreement; and such execution, delivery and/or performance does not violate any law, regulation, permit held by such Party, or contract to which such Party is a party; 6. 7 (c) this Agreement is a legal and valid obligation of such Party, binding upon such Party and enforceable against such Party in accordance with the terms of this Agreement, except as such enforcement may be limited by applicable bankruptcy, insolvency, reorganization, arrangement, moratorium or other similar laws affecting creditors' rights, and subject to general equity principles and to limitations on availability of equitable relief, including specific performance; and (d) it has the right to enter into this Agreement and to grant the rights granted herein. 4.2 DISCLAIMER. AAT hereby accepts and assumes title to all the Assigned Technology and the Additional Chemistry Assets, and a license to the Licensed Technology, "AS IS" and "WHERE IS" without any warranties of any kind, either express or implied. AXYS HEREBY DISCLAIMS ANY AND ALL WARRANTIES, EITHER EXPRESS OR IMPLIED, WITH RESPECT TO THE ADDITIONAL CHEMISTRY ASSETS, THE ASSIGNED TECHNOLOGY AND THE LICENSED TECHNOLOGY, INCLUDING WITHOUT LIMITATION ANY WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND NON-INFRINGEMENT. 4.3 EXPLANATION. It is understood that, in connection with the sale of AAT by Axys to DPII, Axys will make, in certain other agreements relating to such sale, certain representations, warranties and covenants for the benefit of DPII with respect to (among other things) the Assigned Contracts, the Assigned Technology, the Additional Chemistry Assets and the Licensed Technology, and grant DPII certain indemnification and other rights and remedies with respect to such representations, warranties and covenants. This Agreement's disclaimers, limitations, quitclaim provisions and "AS IS, WHERE IS" provisions are not intended to affect or diminish such representations, warranties, covenants, rights and remedies set forth in such other agreements, but merely to ensure that any liability of Axys to DPII after such sale shall arise primarily under and to the extent defined in such agreements between Axys and DPII instead of under this Agreement. Nonetheless, any liability of Axys to AAT under the express terms of this Agreement may also be enforced by AAT after a sale to DPII. 5. TERM AND TERMINATION 5.1 TERM. The Agreement shall commence on the Effective Date and continue in force thereafter indefinitely. 6. CONFIDENTIALITY 6.1 LIMITATIONS ON CONFIDENTIAL INFORMATION. As used herein, "Confidential Information" means (a) confidential and proprietary Information within the Assigned Technology that is or has been transferred or disclosed by Axys to AAT plus any confidential and proprietary Information that AAT may subsequently disclose to Axys hereunder and (b) the Compound Information as such term is defined in the Compound Purchase Agreement between the Parties of even date herewith. Axys understands that maintenance of the confidential nature of the Confidential Information may be important to AAT's future use, practice and commercial exploitation of the rights granted to AAT under this Agreement, and thus Axys agrees that it 7. 8 shall use reasonable efforts to preserve the confidentiality of such Confidential Information and not to publish it, or otherwise disclose it to third parties except under appropriate written confidentiality and limitation-of-use agreements for the purposes of exercising its limited sublicense rights under Section 2.2 of this Agreement or Sections 2.2, 2.3 and 4.1 of the Compound Purchase Agreement. 6.2 EXCEPTIONS. The obligations set forth in Section 6.1 shall not apply to any Information that Axys can demonstrate by competent written evidence: (a) is or becomes generally available to the public or otherwise part of the public domain other than through any act or omission of Axys in breach of this Agreement; (b) is independently developed by Axys or its Affiliate without using any of the Confidential Information or any other Information previously transferred by Axys to AAT; or (c) is disclosed to Axys by a third party that has no obligation not to disclose such Information to Axys. 6.3 PERMITTED DISCLOSURE. Notwithstanding the limitations in this Article 6, Axys may disclose Confidential Information to the extent such disclosure is reasonably necessary in the following instances, but solely for the limited purpose of such necessity: (a) filing or prosecuting patent applications which Axys is allowed to file or prosecute; (b) regulatory and tax filings; (c) defending litigation or (subject to AAT's prior written consent) prosecuting litigation; and (d) complying with applicable governmental laws or regulations or valid court orders. Notwithstanding the foregoing, in the event Axys is required to make a disclosure of the Confidential Information pursuant to subsections 6.3(a) - - (d), it will give reasonable advance notice to AAT of such disclosure and endeavor in good faith to secure confidential treatment of such information. In any event, the Parties agree to take all reasonable action to limit or avoid disclosure of Confidential Information hereunder. Further, the Parties agree to consult with one another on the provisions of this Agreement to be redacted in any filings made by a Party with the United States Securities and Exchange Commission or as otherwise required by law. 7. MISCELLANEOUS 7.1 GOVERNING LAW. This Agreement shall be governed by the laws of the State of California that apply to contracts negotiated, executed and performed within the State of California. 8. 9 7.2 ENTIRE AGREEMENT. This Agreement constitutes the entire, final and complete agreement and understanding between the Parties with respect to the subject matter hereof, and replaces and supersedes all prior discussions and agreements between the Parties with respect to such subject matter. In particular, but without limiting the foregoing, the Parties hereby agree that the Limited Technology and License Agreement, dated as of June, 1999, between the Parties is hereby terminated. No amendment, modification or waiver of any terms or conditions hereof shall be effective unless made in writing and signed by a duly authorized officer of each Party. 7.3 FURTHER AGREEMENTS. Each Party agrees to execute, acknowledge and deliver such further instruments and to do all such other acts as may be necessary or appropriate in order to carry out the purposes and intent of this Agreement. 7.4 SUCCESSORS AND ASSIGNS. This Agreement shall be binding upon each of the Parties, their successors and assigns. Axys shall not be entitled to assign the benefits of this Agreement to any Party without the prior post-Effective-Date written consent of AAT, which consent shall not be unreasonably withheld; provided, however, such consent shall not be required for an assignment to the successor in interest of Axys in connection with the merger, acquisition, or consolidation of Axys or the sale of all or substantially all of the assets of Axys. Any assignment in contravention of this Section 7.4 shall be null, void and of no effect. 7.5 HEADINGS. The headings of the several sections are inserted for convenience of reference only and are not intended to be a part of or to affect the meaning or interpretation of this Agreement. 7.6 NOTICE. All notices required or permitted to be given under this Agreement shall be in writing and shall be mailed by registered or certified mail, or delivered by a nationally recognized overnight courier, or delivered by hand to the address set forth in the first paragraph of this Agreement, to the attention of the party's President. All notices shall be deemed to have been given two (2) business days after such notice is mailed, as evidenced by the postmark at the point of mailing, or on the date of personal delivery, if not mailed. 7.7 COUNTERPARTS. This Agreement may be executed in counterparts, each of which shall be an original and all of which shall constitute together the same document. 7.8 SEVERABILITY. If a court of competent jurisdiction declares any provision of this Agreement invalid or unenforceable, or if any government or other agency having jurisdiction over either AAT or Axys deems any provision to be contrary to any laws, then that provision shall be severed and the remainder of the Agreement shall continue in full force and effect. The Parties further agree to negotiate in good faith with the intention of agreeing to and implementing an amendment to replace such void, invalid, unenforceable, or unlawful provision with a valid and enforceable provision that will achieve, to the extent possible, the economic, business and other purposes of such void, invalid, unenforceable or unlawful provision. 7.9 FURTHER AGREEMENT. Neither Party is obligated by this Agreement to enter into any further agreement of any kind with the other Party. 9. 10 7.10 INDEPENDENT CONTRACTORS. Each Party shall act solely as an independent contractor, and nothing in this Agreement shall be construed to give either Party the power or authority to act for, bind or commit the other Party in any way. Nothing herein shall be construed to create the relationship of partnership, principal and agent or joint venture between the Parties. IN WITNESS WHEREOF, the Parties have executed and delivered this Technology Assignment and License Agreement on the Effective Date. AXYS PHARMACEUTICALS, INC. By: /s/ William J. Newell ----------------------------- Name: William J. Newell ----------------------------- Title: Senior Vice President ----------------------------- AXYS ADVANCED TECHNOLOGIES, INC. By: /s/ William J. Newell ----------------------------- Name: William J. Newell ----------------------------- Title: Vice President and Secretary ----------------------------- [SIGNATURE PAGE TO TECHNOLOGY ASSIGNMENT AND LICENSE AGREEMENT] 10. 11 SCHEDULE 1.1 AAT CONTRACTS Combinatorial Chemistry Agreement with Daiichi Pharmaceutical Co., Ltd. dated June 30, 1999. Combinatorial Chemistry Agreement with Allergan, Inc. dated September 27, 1999 Combinatorial Chemistry Agreement with Elitra Pharmaceuticals Inc., dated September 30, 1999 Combinatorial Chemistry Agreement with Novartis Institute for Functional Genomics, Inc., dated December 8, 1999 Combinatorial Chemistry Agreement with L'Oreal Group, dated December 20, 1999 Combinatorial Chemistry Agreement with Monsanto, dated December 21, 1999 Combinatorial Chemistry Agreement with Cephalon, Inc., dated December 21, 1999 Combinatorial Chemistry Agreement with Bristol-Myers Squibb Company, dated December 31, 1999 1. 12 SCHEDULE 1.2 ADDITIONAL CHEMISTRY ASSETS (see attached) 1. 13 AXYS ADVANCED TECHNOLOGY FIXED ASSET DEPRECIATION ADDITIONS FROM 10/31/99 TO 3/31/2000
2. 14 AXYS ADVANCED TECHNOLOGY FIXED ASSET DEPRECIATION ADDITIONS FROM 10/31/99 TO 3/31/2000
3. 15 AXYS ADVANCED TECHNOLOGY FIXED ASSET DEPRECIATION ADDITIONS FROM 10/31/99 TO 3/31/2000
4. 16 AXYS ADVANCED TECHNOLOGY FIXED ASSET DEPRECIATION ADDITIONS FROM 10/31/99 TO 3/31/2000
5. 17 AXYS ADVANCED TECHNOLOGY FIXED ASSET DEPRECIATION ADDITIONS FROM 10/31/99 TO 3/31/2000
6. 18 AXYS ADVANCED TECHNOLOGY FIXED ASSET DEPRECIATION ADDITIONS FROM 10/31/99 TO 3/31/2000
AXYS ADVANCED TECHNOLOGY FIXED ASSET DEPRECIATION ADDITIONS FROM 10/31/99 TO 3/31/2000
7. 19 AXYS ADVANCED TECHNOLOGY FIXED ASSET DEPRECIATION ADDITIONS FROM 10/31/99 TO 3/31/2000
8. 20 AXYS ADVANCED TECHNOLOGY FIXED ASSET DEPRECIATION ADDITIONS FROM 10/31/99 TO 3/31/2000
AXYS ADVANCED TECHNOLOGY FIXED ASSET DEPRECIATION ADDITIONS FROM 10/31/99 TO 3/31/2000
9. 21 AXYS ADVANCED TECHNOLOGY FIXED ASSET DEPRECIATION ADDITIONS FROM 10/31/99 TO 3/31/2000
AXYS ADVANCED TECHNOLOGY FIXED ASSET DEPRECIATION ADDITIONS FROM 10/31/99 TO 3/31/2000
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19. 31 SCHEDULE 1.4 ASSIGNED CONTRACTS Research Agreement with Pharmacia & Upjohn dated February 29, 1996, as amended. Combinatorial Chemistry Agreement with Warner-Lambert Company dated May 15, 1998. Combinatorial Chemistry Agreement with Signal Pharmaceuticals, Inc. dated July 6, 1998. Combinatorial Chemistry Agreement with Rhone-Poulenc Rorer dated December 22, 1998. Combinatorial Chemistry Agreement with Protein Design Labs, Inc. dated December 28, 1998. Combinatorial Chemistry Agreement with Novalon Pharmaceutical Corporation dated June 28, 1999. 1. 32 SCHEDULE 1.5 GENERAL DESCRIPTION OF ASSIGNED KNOW-HOW All know-how pertaining to the protocols set forth in Schedule 1.7 1. 33 SCHEDULE 1.6 ASSIGNED PATENTS (see attached) 1. 34 PATENTS AND PATENT APPLICATIONS: 1. U.S. Patent No. 5,703,792 THREE DIMENSIONAL MEASUREMENT OF MOLECULAR DIVERSITY Issued 12/30/97 2. U.S. Patent No. 5,526,281 MACHINE LEARNING APPROACH TO MODELING BIOLOGICAL ACTIVITY FOR MOLECULAR DESIGN AND TO MODELING OTHER CHARACTERISTICS Issued 6/11/96 3. US. Patent No. 5,576,220 THIN FILM HPMP MATRIX SYSTEMS AND METHODS FOR CONSTRUCTION AND DISPLAYING LIGANDS Issued 11/19/96 4. U.S. Patent No. 5,585,275 PILOT APPARATUS FOR PEPTIDE SYNTHESIS AND SCREENING Issued 12/17/96 5. U.S. Patent No. 5,591,646 METHOD AND APPARATUS FOR PEPTIDE SYNTHESIS AND SCREENING Issued 1/7/97 6. U.S. Patent Application Serial No. 08/989,204 NOVEL SOLID-PHASE SYNTHESIS TECHNIQUES FOR PREPARING MULTIPLE ANALOGOUS COMPOUNDS Filed 12/11/97 7. U.S. Patent Application Serial No. 09/353,158 PROCESS FOR SYNTHESIS OF BENZOPYRAN DERIVATIVES Filed 7/14/99 8. U.S. Patent Application Serial No. 09/375,803 PROCESS FOR THE SYNTHESIS OF TRIAZOLOPYRIDIZINE COMPOUNDS Filed 8/17/99 9 . U.S. Patent Application Serial No. 09/435,517 PROCESS FOR THE SYNTHESIS OF QUINAZOLINONES Filed 11/8/99 10. U.S. Patent Application Serial No. 09/519,944 PROCESS FOR THE SYNTHESIS OF DIHYDROPYRIDONES Filed 3/7/00 11. U.S. Patent Application Serial No. 09/527,626 SOLID PHASE SYNTHESIS OF BENZODIAZEPINES DIONES Filed 3/16/00 12. U.S. Patent Application Serial No. 09/520,500 PROLINE DERIVATIVES AND SYNTHESIS THEREOF Filed 3/10/00 1. 35 13. U.S. Patent Application Serial No. 60/142,202 PROCESS FOR SYNTHESIZING OXADIAZOLES Filed 7/1/99 14. U.S. Patent Application Serial No. 60/142,163 INDOLE SYNTHESIS Filed 7/1/99 15. US. Patent Application Serial No. 60/147,451 SOLID PHASE SYNTHESIS OF HETEROCYCLES Filed 8/4/99 16. U.S. Patent Application Serial No. 60/148,169 SYNTHESIS OF PROTEASE SUBSTRATES Filed 8/10/99 17. U.S. Patent Application Serial No. 60/152,005 PROCESS FOR SYNTHESIZING ISOXAZOLIDINES Filed 9/1/99 18. U.S. Patent Application Serial No. 60/151,962 PROCESS FOR SYNTHESIZING ISOXAZOLINES AND ISOXAZOLES Filed 9/1/99 19. U.S. Patent Application Serial No. 60/168,836 PROCESS FOR THE SYNTHESIS OF PYRAZOLINES Filed 12/3/99 20. U.S. Patent Application Serial No. 60/189,067 QUINAZOLINE SYNTHESIS Filed 3/13/00 21. U.S. Patent Application Serial No. 60/191,886 PROCESS FOR THE SYNTHESIS OF PYRAZOLE DIONES Filed 3/23/00 22. U.S. Patent Application Serial No. 60/192,024 SYNTHESIS OF SOLID SUPPORTED DIHYROPRIDINES Filed 3/24/00 23. U.S. Patent Application Serial No. 60/196,061 PROCESS FOR SYNTHESIZING ISOQUINOLONE INTERMEDIATES Filed 4/10/00 2. 36 SCHEDULE 1.7 ASSIGNED PROTOCOLS (see attached) 1. 37 AAT Library Protocols 1996-Present - -------------------------------- Library Group - -------------------------------- AMB001 Combi - -------------------------------- AMB002 Combi - -------------------------------- AMB003 Combi - -------------------------------- AMB004 Combi - -------------------------------- AMB006 Combi - -------------------------------- AMB101 Combi - -------------------------------- AMB102 Combi - -------------------------------- AMB103 Combi - -------------------------------- BAB003 Combi - -------------------------------- BAB005 Combi - -------------------------------- BAB006 Combi - -------------------------------- BAB007 Combi - -------------------------------- BAB009 Combi - -------------------------------- BAB011 Combi - -------------------------------- BAB106 Combi - -------------------------------- BAB206 Combi - -------------------------------- BRZ015-018 Combi - -------------------------------- BR2019 Combi - -------------------------------- BR2020 Combi - -------------------------------- BRZ021 Combi - -------------------------------- BRZ022 Combi - -------------------------------- BRZ023 Combi - -------------------------------- BRZ024 Combi - -------------------------------- BRZ122 Combi - -------------------------------- BRZ123 Combi - -------------------------------- BRZ124 Combi - -------------------------------- BRZ223 Combi - -------------------------------- CP3 Combi - -------------------------------- CP4 Combi - -------------------------------- CP5 Combi - -------------------------------- CP6 Combi - -------------------------------- CP7 Combi - -------------------------------- CQL001 Combi - -------------------------------- CQL002 Combi - -------------------------------- CQL003 Combi - -------------------------------- CQL004 Combi - -------------------------------- CQL005 Combi - -------------------------------- CQL006 Combi - -------------------------------- CQL101 Combi - -------------------------------- CQL104 Combi - -------------------------------- CQL105 Combi - -------------------------------- CQL201 Combi - -------------------------------- CQL204 Combi - -------------------------------- CQL006 Combi - -------------------------------- DC7 Combi - -------------------------------- DC2 Combi - -------------------------------- DR1 Combi - -------------------------------- DR2 Combi - -------------------------------- DR3 Combi - -------------------------------- DR5 Combi - -------------------------------- 38 AAT Library Protocols 1996-Present - -------------------------------- DR6 Combi - -------------------------------- DR7 Combi - -------------------------------- DSC001 Combi - -------------------------------- DSC002 Combi - -------------------------------- DSC003 Combi - -------------------------------- DSC007 Combi - -------------------------------- DSC008 Combi - -------------------------------- DSC108 Combi - -------------------------------- EBK001 Combi - -------------------------------- FXW001 Combi - -------------------------------- FXW101 Combi - -------------------------------- HCH001 Combi - -------------------------------- HOE101 Combi - -------------------------------- UCP3 Combi - -------------------------------- UCP4 Combi - -------------------------------- UCP5 Combi - -------------------------------- UCP6 Combi - -------------------------------- UCP7 Combi - -------------------------------- UCP008 Combi - -------------------------------- UGB002 Combi - -------------------------------- UGB003 Combi - -------------------------------- UGB102 Combi - -------------------------------- UMD001 Combi - -------------------------------- UMD002 Combi - -------------------------------- KSY001 Combi - -------------------------------- KY1 Combi - -------------------------------- KY2 Combi - -------------------------------- KY3 Combi - -------------------------------- KY4 Combi - -------------------------------- KY5 Combi - -------------------------------- MDH1 Combi - -------------------------------- MDH2 Combi - -------------------------------- MDH003 Combi - -------------------------------- MDH019 Combi - -------------------------------- MDH020 Combi - -------------------------------- MDH021 Combi - -------------------------------- MDH11-14 Combi - -------------------------------- MDH11-15 Combi - -------------------------------- MDH24-10 Combi - -------------------------------- MJH002 Combi - -------------------------------- MJH101 Combi - -------------------------------- MJH201 Combi - -------------------------------- MJP001 Combi - -------------------------------- MJP002 Combi - -------------------------------- MJP004 Combi - -------------------------------- MJP104 Combi - -------------------------------- MJP204 Combi - -------------------------------- NAC001 Combi - -------------------------------- NAP001 Combi - -------------------------------- NAP101 Combi - -------------------------------- PPF001 Combi - -------------------------------- 39 AAT Library Protocols 1996-Present - -------------------------------- PPF002 Combi - -------------------------------- PPF003 Combi - -------------------------------- PPF004 Combi - -------------------------------- PPF005 Combi - -------------------------------- PPF006 Combi - -------------------------------- PPF009 Combi - -------------------------------- PPF010 Combi - -------------------------------- PPF019 Combi - -------------------------------- PPF020 Combi - -------------------------------- PPF11-18 Combi - -------------------------------- PPF120 Combi - -------------------------------- P21 Combi - -------------------------------- P22 Combi - -------------------------------- P25 Combi - -------------------------------- P26 Combi - -------------------------------- SPT001 Combi - -------------------------------- SPT002 Combi - -------------------------------- SPT003 Combi - -------------------------------- SPT004 Combi - -------------------------------- SPT102 Combi - -------------------------------- SPT103 Combi - -------------------------------- SPT104 Combi - -------------------------------- SPT105 Combi - -------------------------------- SPT201 Combi - -------------------------------- SXL1 Combi - -------------------------------- SXL2 Combi - -------------------------------- SXL3 Combi - -------------------------------- SXL4 Combi - -------------------------------- SXL5 Combi - -------------------------------- SXL6 Combi - -------------------------------- SXL7 Combi - -------------------------------- SXL9 Combi - -------------------------------- SXL010 Combi - -------------------------------- SXL011 Combi - -------------------------------- SXL012 Combi - -------------------------------- SXL013 Combi - -------------------------------- SXL101 Combi - -------------------------------- TAK001 Combi - -------------------------------- TAK101 Combi - -------------------------------- TGL001 Combi - -------------------------------- TGL101 Combi - -------------------------------- TPH001 Combi - -------------------------------- TPH002 Combi - -------------------------------- TPH003 Combi - -------------------------------- TPH101 Combi - -------------------------------- TPH102 Combi - -------------------------------- TPH201 Combi - -------------------------------- TPH202 Combi - -------------------------------- TRK001 Combi - -------------------------------- ARG501 DISCO - -------------------------------- ARG502 DISCO - -------------------------------- 40 AAT Library Protocols 1996-Present - -------------------------------- ARG503 DISCO - -------------------------------- ARG504 DISCO - -------------------------------- JES501 DISCO - -------------------------------- JIL401 DISCO - -------------------------------- JIL502 DISCO - -------------------------------- LIG-A01 DISCO - -------------------------------- 41 Production Technical Operating Procedures Rev. Code 8 Apr 1999 JMP
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45 SCHEDULE 1.8 ASSIGNED SOFTWARE NAMES OF SOFTWARE PROGRAMS 1. ICE PICK 2. COMPASS 3. HAMMERHAD 4. SIDEWINDER 5. MOLECULAR DOCKER 6. BAR CODING 7. COMBIGEN DESCRIPTIONS OF SELECTED SOFTWARE PROGRAMS ICEPICK is a system for computationally selecting diverse sets of molecules. It computes the dissimilarity of the surface-accessible features of two molecules, taking into account conformational flexibility. Then, the intrinsic diversity of an entire set of molecules is calculated from spanning tree over the pairwise dissimilarities. IcePick's dissimilarity measure is compared against traditional 2D topological approaches, and the spanning tree diversity measure is compared against commonly used variance techniques. COMPASS allows for the building of predictive models for interactive drug design in the absence of a known target protein structure, by removing major obstacles to accurate prediction and automatically selecting conformations and alignments of molecules without benefit of a characterized active site. The technique combines explicit representation of molecular shape and neural network learning methods to produce highly predictive models, even across chemically distinct classes of molecules. HAMMERHEAD can be successfully applied to dock a variety of ligands into their cognate proteins, and is used for screening large databases of flexible molecules for binding to a protein of known structure. It correctly docks flexible ligands, spending an average of a few seconds on each compound during a screen. Hammerhead is completely automated, including the elucidation of protein building sites, through the docking of molecules, to the final selection of compounds for assay. SIDEWINDER performs directed sidechain selection given a protein structure, ligand and binding hypothesis, and an array of potential sidechains. Sidewinder computes predicted sets of the best sidechains at each specified site. The software accurately generates sidechain conformations, attaches sidechains at the designated scaffold point, refines and prunes the sidechains, and finally refines and scores the entire ligand. 1. 46 MOLECULAR DOCKER aligns small molecules to a protein structure and estimates their binding affinity. The algorithm represents a protein's binding site in a way that is specifically sited to molecular docking applications. Initially, the protein's surface is coated with a collection of molecular fragments that potentially interact with the protein. Each probe, serves as a potential alignment point for atoms in a ligand, and is scored to represent that probe's affinity for the protein. Probes are then clustered by accumulating their affinities. High affinity clusters are identified as being the "stickiest" portions of the protein surface. The stickiest cluster is used as a computation binding pocket for docking. COMBIGEN is Axys' proprietary in-house program for the enumeration of library compound databases using a virtual chemistry approach. Presently Axys is in the process of converting from this software to Afferent Structure(TM) software from Afferent Systems, Inc. BARCODING SOFTWARE Axys' in-house intranet-based barcoding combines a straightforward error checking interface with a chemical tracking database. The interface minimizes the chances for operator error by taking barcoded input directly from the barcoding scanner, and further reduces the chances for error by requiring mutually corroborating input of catalog information and molecular weight, which is checked for consistency from a database. 2. 47 SCHEDULE 2.1(b) FORMS OF ASSIGNMENT 1. 48 BILL OF SALE This Bill of Sale dated as of April ___, 2000 is being made pursuant to that certain Technology Assignment and License Agreement (THE "TECHNOLOGY ASSIGNMENT AND LICENSE AGREEMENT") dated April ___, 2000 by and between Axys Pharmaceuticals, Inc., a Delaware corporation (the "COMPANY") and Axys Advanced Technologies, Inc., a Delaware corporation ("AAT"). NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Company hereby agree as follows: 1. Capitalized terms used herein but not defined herein shall have the meanings assigned such terms in the Technology Assignment and License Agreement. 2. Subject to the terms and conditions set forth in the Technology Assignment and License Agreement, the Company does hereby sell, transfer, assign and deliver to AAT, free and clear of all liens, claims, charges and other encumbrances of any nature whatsoever, for AAT and AAT's assigns to have and to hold forever, all of the Company's right, title and interest in and to the assets, properties, rights and contracts set forth below, as the same shall exist today, AS IS and WHERE IS (collectively, the "PURCHASED ASSETS"): (a) the tangible assets listed in Schedule 1.2 hereto; (b) any and all Information that is Controlled by the Company as of today, including, without limitation, the Information identified generally in Schedule 1.5 attached hereto, which is necessary to or used by AAT in its current combinatorial chemistry business, but excluding the Assigned Protocols and Licensed Technology; (c) the patents and patent applications set forth in Schedule 1.6 hereto, and including any and all rights that are Controlled by the Company as of today with respect to such patents and patent applications, including without limitation the rights to enforce and/or file any non-provisionals, divisionals, continuations, continuations-in-part, substitutions, reissues, reexaminations, extensions and foreign equivalents thereof. (d) all of the Protocols Controlled by the Company that are set forth in Schedule 1.7 hereto, and all trade secret and other intellectual property rights in such Protocols that are Controlled by the Company as of today; (e) all of the computer software programs, in object code and, to the extent Controlled by the Company, source code forms, that are either owned by the Company or licensed to the Company and are described generally in Schedule 1.8 hereto, and all documentation for such programs in the Company's possession as of today, and all copyright and other intellectual property rights in any of the foregoing that are Controlled by the Company as of today; 49 (f) notwithstanding the foregoing, all of the rights granted under subsections (b), (c), (d) and (e) above are expressly subject to any and all license rights that the Company has previously granted to third parties identified on Schedule 2.1(d) to the Technology Assignment and License Agreement, under the contracts specified in Schedule 2.1(d) to the Technology Assignment and License Agreement, with respect to such technology and intellectual property rights, to the extent and so long as such license rights remain in force; and (g) all of the Company's rights, claims and benefits (except as otherwise provided in subsection (h)) under the Assigned Contracts. 3. AAT hereby waives compliance by the Company with the provisions of the bulk transfer laws of any state. The Company covenants and agrees to pay and discharge when due all claims of creditors which could be asserted against AAT by reason of such noncompliance. 4. Notwithstanding any other provisions of this Bill of Sale to the contrary, nothing contained in this Bill of Sale shall in any way supersede, modify, replace, amend, change, rescind, waive, exceed, expand, enlarge or in any way affect the provisions, including warranties, covenants, agreements, conditions, representations or, in general any of rights and remedies, and any of the obligations and indemnifications of the Company or AAT set forth in the Technology Assignment and License Agreement nor shall this Bill of Sale expand or enlarge any remedies under the Technology Assignment and License Agreement including without limitation any limits on indemnification specified therein. This Bill of Sale is intended only to effect the transfer of certain property to be transferred pursuant to the Technology Assignment and License Agreement and shall be governed entirely in accordance with the terms and conditions of the Technology Assignment and License Agreement. 5. This Bill of Sale shall in all respects be construed in accordance with and governed by the laws of the State of California without giving effect to its conflicts-of-laws principles. [REMAINDER OF PAGE INTENTIONALLY LEFT BLANK] 50 IN WITNESS WHEREOF, the Company has caused this Bill of Sale to be executed and delivered on the date and year first written above. AXYS PHARMACEUTICALS, INC., a Delaware corporation By: _____________________________ Name: _____________________________ Title: _____________________________ [SIGNATURE PAGE TO BILL OF SALE] 51 SCHEDULE 1.2 ADDITIONAL CHEMISTRY ASSETS (see attached) See Schedule 1.2 to Technology Assignment and License Agreement. 52 SCHEDULE 1.5 GENERAL DESCRIPTION OF ASSIGNED KNOW-HOW All know-how pertaining to the protocols set forth in Schedule 1.7 53 SCHEDULE 1.6 ASSIGNED PATENTS (see attached) See Schedule 1.6 to Technology Assignment and License Agreement. 54 SCHEDULE 1.7 ASSIGNED PROTOCOLS (see attached) See Schedule 1.7 to Technology Assignment and License Agreement. 55 SCHEDULE 1.8 ASSIGNED SOFTWARE See Schedule 1.8 to Technology Assignment and License Agreement. 56 ASSIGNMENT OF PATENTS AND PATENT APPLICATIONS This Assignment of Patents and Patent Applications Agreement (the "ASSIGNMENT") dated as of April ___, 2000 (the "EFFECTIVE DATE"), is being made pursuant to that certain Technology Assignment and License Agreement (the "TECHNOLOGY ASSIGNMENT AND LICENSE AGREEMENT") dated April ___, 2000 by and between Axys Pharmaceuticals, Inc., a Delaware corporation with offices at 180 Kimball Way, South San Francisco, CA 94080 (the "b") and Axys Advanced Technologies, Inc., a Delaware corporation with offices at 180 Kimball Way, South San Francisco, CA 94080 (the "ASSIGNEE"). For good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Assignor makes the following assignment: 1. Assignment of Patent Rights to Assignee. a. Under and in accordance with the Technology Assignment and License Agreement, Assignor hereby assigns, transfers and conveys to the Assignee all of the Assignor's right, title and interest throughout the world in and to the patents and patent applications set forth in Schedule 1.6, which is attached to and made a part of this Assignment, and in and to any and all U.S., or foreign equivalents thereof, including without limitation any extensions, non-provisionals, continuations-in-part, divisionals, reissues and renewals thereof, and in and to any and all U.S. or foreign patents that are granted from such patent applications (collectively, the "ASSIGNED PATENTS"), and further, all rights and privileges pertaining to the Assigned Patents including, without limitation the right, if any, to sue or bring other actions (including, but not limited to, collection of damages) for past, present and future infringement thereof. The assignments described in this Section 1 may be hereinafter referred to as the "ASSIGNMENTS"). b. The Assignor agrees to assist the Assignee in every proper way, at the Assignee's expense, to evidence and perfect the Assignments and to apply for and obtain and from time to time enforce, maintain and defend the Assigned Patents in any and all countries that the Assignee may designate from time to time. The Assignor will execute all documents that the Assignee may request for such purposes. If the Assignee is unable for any reason whatsoever to secure the signature of a duly authorized officer of the Assignor to any document that the Assignor is required to execute pursuant to the foregoing, the Assignor hereby irrevocably designates and appoints the Assignee and its duly authorized officers and agents, with full power of substitution, as its agents and attorneys-in-fact to act for and in its behalf and instead of the Assignor, to execute and file any such document and to do all other lawfully permitted acts to further the purposes of the foregoing with the same legal force and effect as if executed by the Assignor. [REMAINDER OF PAGE INTENTIONALLY LEFT BLANK] 57 IN WITNESS WHEREOF, the Assignor has signed this Agreement effective as of the date first above written. AXYS PHARMACEUTICALS, INC., By: _____________________________ Name: _____________________________ Title: _____________________________ STATE OF CALIFORNIA ) ) ss COUNTY OF __________________) On ___________________, before me, ______________________, Notary Public, personally appeared ________________________________, personally known to me (or proved to me on the basis of satisfactory evidence) to be the person(s) whose name(s) is/are subscribed to the within instrument and acknowledged to me that he/she/they executed the same in his/her/their authorized capacity(ies), and that by his/her/their signature(s) on the instrument the person(s), or the entity upon behalf of which the person(s) acted, executed the instrument. WITNESS my hand and official seal. ____________________________________ Signature [SEAL] 58 SCHEDULE 1.6 Assigned Patents Issued or Filed ---------------- --------------- See Schedule 1.6 to Technology Assignment and License Agreement. 59 ASSIGNMENT OF TRADEMARKS AND SERVICEMARKS This Trademark and Servicemark Assignment (the "ASSIGNMENT") dated as of April ___, 2000 (the "EFFECTIVE DATE") is being made pursuant to that certain Technology Assignment and License Agreement (the "TECHNOLOGY ASSIGNMENT AND LICENSE AGREEMENT") dated April ___, 2000 by and between Axys Pharmaceuticals, Inc., a Delaware corporation with offices at 180 Kimball Way, South San Francisco, CA 94080 (the "ASSIGNOR") and Axys Advanced Technologies, Inc., a Delaware corporation with offices at 180 Kimball Way, South San Francisco, CA 94080 (the "ASSIGNEE"). WHEREAS, Assignor has adopted, used, is using and is the owner of all trademarks and servicemarks and trademark and servicemark registrations and applications for trademarks and servicemarks set forth in Exhibit A attached hereto, and all other rights appurtenant thereto, including, but not limited to, all common law rights, trade name rights and the right to recover for past infringement throughout the world (the "TRADEMARKS"); WHEREAS, Assignor has acquired goodwill associated with and symbolized by said Trademarks and has not abandoned the same; WHEREAS, Assignee is desirous of acquiring all rights, title and interest in and to the Trademarks throughout the world; and WHEREAS, Assignor is willing to assign to Assignee all rights, title and interest as Assignor may possess in and to the Trademarks throughout the world. NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Assignor makes the following assignment: 1. ASSIGNMENT. a. Assignor hereby assigns to Assignee all of Assignor's rights, title and interest in and to the Trademarks throughout the world, together with the goodwill symbolized by said Trademarks; said rights, title and interest include, without limitation, any and all causes of action heretofore accrued in Assignor's favor for infringement of the aforesaid rights, to have and to hold the same unto Assignee, its successors and assigns, for and during the existence of the rights and all renewals thereof. b. At any time, and from time to time hereafter, Assignor shall forthwith, upon Assignee's written request and at the Assignee's expense, take any and all steps to execute, acknowledge and deliver to Assignee any and all further instruments and assurances necessary or expedient in order to vest the aforesaid rights in Assignee and to facilitate Assignee's enjoyment and enforcement of said rights and causes of action. c. Assignor hereby constitutes and appoints Assignee as Assignor's true and lawful attorney in fact, with full power of substitution in Assignor's name and stead, to take any and all steps, including proceedings at law, in equity or otherwise, to execute, 60 acknowledge and deliver any and all instruments and assurances necessary or expedient in order to vest or perfect the aforesaid rights and causes of action more effectively in Assignee or to protect the same or to enforce any claim or right of any kind with respect thereto. This includes, but is not limited to, any rights with respect to the Trademarks that may have accrued in Assignor's favor from the respective date of first use of the Trademarks to the Effective Date of this Assignment. Assignor hereby declares that the foregoing power is coupled with an interest and as such is irrevocable. [REMAINDER OF PAGE INTENTIONALLY LEFT BLANK] 61 IN WITNESS WHEREOF, the Assignor has executed this Assignment as of the Effective Date first set forth above. AXYS PHARMACEUTICALS, INC. By: ___________________________ Name: ___________________________ Title: ___________________________ STATE OF CALIFORNIA ) ) ss COUNTY OF __________________) On ___________________, before me, ______________________, Notary Public, personally appeared ________________________________, personally known to me (or proved to me on the basis of satisfactory evidence) to be the person(s) whose name(s) is/are subscribed to the within instrument and acknowledged to me that he/she/they executed the same in his/her/their authorized capacity(ies), and that by his/her/their signature(s) on the instrument the person(s), or the entity upon behalf of which the person(s) acted, executed the instrument. WITNESS my hand and official seal. ____________________________________ Signature [SEAL] 62 EXHIBIT A 63 CONFIDENTIAL AND PROPRIETARY AXYS ADVANCE TECHNOLOGIES, INC INFORMATION PENDING SERVICE MARK APPLICATIONS COMBIMED: S.N.: 75/737109: Filed 6/23/99 COMBIMED CHEM: S.N.: 75/737111: Filed 6/23/99 COMBIPHARM: S.N.: 75/737116: Filed 6/23/99 Ref: CombiChemDockets\1_AAT.ddfoc2.doc 64 ASSIGNMENT OF COPYRIGHTS This Assignment of Copyrights (the "ASSIGNMENT") dated as of April __, 2000 (the "EFFECTIVE Date") is being made pursuant to that certain Technology Assignment and License Agreement (the "TECHNOLOGY ASSIGNMENT AND LICENSE AGREEMENT") dated April __, 2000 by and between Axys Pharmaceuticals, Inc., a Delaware corporation with offices at 180 Kimball Way, South San Francisco, CA 94080 (the "ASSIGNOR") and Axys Advanced Technologies, Inc., a Delaware corporation with offices at 180 Kimball Way, South San Francisco, CA 94080 (the "ASSIGNEE"). For good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, Assignor makes the following assignment: 1. Under and in accordance with the Technology Assignment and License Agreement, Assignor hereby assigns to Assignee all of Assignor's rights, title and interest in and to the works described in Schedules 1.7 and 1.8 attached hereto and incorporated herein by this reference (the "WORKS"); said rights, title and interest including, but not limited to, all copyrights, copyright applications, copyright registrations, copyrightable subject matter in the Works, rights of reproduction, distribution, performance and display, the right to prepare derivative works and any and all causes of action heretofore accrued in Assignor's favor for infringement of the aforesaid rights, to have and to hold the same unto Assignee, its successors and assigns, for and during the existence of the rights and all renewals and extensions thereof. 2. Assignor hereby assigns to Assignee and waives any and all moral or other rights Assignor may have in and to the Works or any portion thereof. 3. Assignor hereby constitutes and appoints Assignee as Assignor's true and lawful attorney-in-fact, with full power of substitution in Assignor's name and stead, to take any and all steps, including proceedings at law, in equity or otherwise, to execute, acknowledge and deliver any and all instruments and assurances necessary or expedient in order to vest or perfect the aforesaid rights and causes of action more effectively in Assignee or to protect the same or to enforce any claim or right of any kind with respect thereto. This includes, but is not limited to, any rights with respect to the Works that may have accrued in Assignor's favor from the respective date of creation of the Works to the date of this Assignment. Assignor hereby declares that the foregoing power is coupled with an interest and as such is irrevocable. [REMAINDER OF PAGE INTENTIONALLY LEFT BLANK] 65 IN WITNESS WHEREOF, Assignor has signed this Assignment effective as of the date first above written. AXYS PHARMACEUTICALS, INC. By: _____________________________ Name: _____________________________ Title: _____________________________ STATE OF CALIFORNIA ) ) ss COUNTY OF __________________) On ___________________, before me, ______________________, Notary Public, personally appeared ________________________________, personally known to me (or proved to me on the basis of satisfactory evidence) to be the person(s) whose name(s) is/are subscribed to the within instrument and acknowledged to me that he/she/they executed the same in his/her/their authorized capacity(ies), and that by his/her/their signature(s) on the instrument the person(s), or the entity upon behalf of which the person(s) acted, executed the instrument. WITNESS my hand and official seal. ____________________________________ Signature [SEAL] 66 SCHEDULE 1.7 ASSIGNED PROTOCOLS (see attached) See Schedule 1.7 to Technology Assignment and License Agreement. 67 SCHEDULE 1.8 ASSIGNED SOFTWARE See Schedule 1.8 to Technology Assignment and License Agreement. 68 SCHEDULE 2.1(d) LICENSES-OUT
69 Document Number: 310957
