foia request & response ltr · 2018-02-21 · approval shall not be unreasonably withheld or...

11
February 01 2018 US Securities & Exchange Commission Office of FOIA and Privacy Act Operations 100 F Street, NE Mail Stop 5100 Washington, DC 20549-5100 Dear FOIA Office: Rece,veo FEB O 1 2018 Under the Freedom of Information Act (FOIA), please send a copy of the following: A copy of: Exhibit: 10.25 to the form S-1/A filed by QUARK BIOTECH INC on April 16, 2007 In the event confidential treatment has not expired provide the specific date for which confidential treatment is still in effect. I do not need a copy of the order. We authorize up to $61.00 in processing fees. Thank You, Paul D'Souza Editor - Deals Clarivate Analytics Friars House, 160 Blackfriars Road London, UK SEl 8EZ Phone:+44-2074334789 Managing Editor - Deals 14

Upload: others

Post on 04-Apr-2020

11 views

Category:

Documents


0 download

TRANSCRIPT

Page 1: FOIA Request & Response Ltr · 2018-02-21 · approval shall not be unreasonably withheld or delaycdl Should QBI decide that it does not desire to continue the Patent Adivities in

February 01 2018

US Securities & Exchange Commission Office of FOIA and Privacy Act Operations

100 F Street, NE Mail Stop 5100

Washington, DC 20549-5100

Dear FOIA Office:

Rece,veo FEB O 1 2018

Under the Freedom of Information Act (FOIA), please send a copy of the following: A copy of:

Exhibit: 10.25 to the form S-1/A filed by QUARK BIOTECH INC on April 16, 2007 In the event

confidential treatment has not expired provide the specific date for which confidential

treatment is still in effect. I do not need a copy of the order. We authorize up to $61.00 in

processing fees.

Thank You,

Paul D'Souza Editor - Deals

Clarivate Analytics Friars House, 160 Blackfriars Road London, UK SEl 8EZ

Phone:+44-2074334789 Managing Editor - Deals

14

Page 2: FOIA Request & Response Ltr · 2018-02-21 · approval shall not be unreasonably withheld or delaycdl Should QBI decide that it does not desire to continue the Patent Adivities in

UNITED STATESSECURITIES AND EXCHANGE COMMISSION

STATION PLACE100 F STREET, NE

WASHINGTON, DC 20549-2465

Office of FOIA ServicesFebruary 16, 2018

Mr. Paul D'SouzaClarivate AnalyticsFriars House, 160 Blackfriars RoadSouthwark, London SE18EZUnited Kingdom

RE: Freedom of Information Act (FOIA), 5 U.S.C. § 552Request No. 18-02242-E

Dear Mr. D’Souza:

This letter is in response to your request, dated and received in this office on February 1, 2018, for access to Exhibit 10.25 to Form S-1/A filed by Quark Biotech, Inc. (now known as Quark Pharmaceuticals, Inc.) on April 16, 2007.

The search for responsive records has resulted in the retrieval of 9 pages of records that pertain to Exhibit 10.25. They are being provided to you in their entirety with this letter.

As shown on the enclosed invoice, the processing fee is $30.50 in accordance with our fee schedule. You may use our new Online Payment option to pay by debit or credit card. If paying by mail, checks or money orders should be made payable to the SEC and a copy of the invoice should be mailed to our new payment address: Enterprise Services Center, HQ Bldg, Room 181, AMZ-341, 6500 South MacArthur Boulevard, Oklahoma City, OK, 73169. Please refer to the following link for detailed instructions on how to remit payments. http://www.sec.gov/about/offices/ofm.htm

If you have any questions, please contact me at [email protected] or (202) 551-3149. You may also contact me at [email protected] or (202) 551-7900. You also have the right to seek assistance from Dave Henshall as a FOIA Public Liaison or contact the Office of Government Information Services (OGIS) for dispute resolution services. OGIS can be reached at 1-877-684-6448 or Archives.gov or via e-mail at [email protected].

Sincerely,

Curtis NeilsonFOIA Research Specialist

Enclosures

Page 3: FOIA Request & Response Ltr · 2018-02-21 · approval shall not be unreasonably withheld or delaycdl Should QBI decide that it does not desire to continue the Patent Adivities in

[] =CERTAIN CO~FIDK\TlAI. I\FOR'\'IATIO:'. CONTAI~ED I'.'I THIS UOCUMF.:\"T, \-URKJm HY

BRACKETS, IS FILED WITH THE SECURJTI.ES A~D EXCHA."'\GE co,nnssIO~ PURSUA:\T TO Ruu: 406 OF THE SECLRJTIF.S ACT (ff 1933, AS AME:\DED.

Exhibit 10.25

A.\1E)J'D.\1E'.\JT TO CQIJ ,ABO RATION AGREEMEI\T

This Amendment to the Collaboration Agreement ("Amendl)lcnt") is made as of .\1ay 25, 2006 ("Effectiye Date") by and between Quark Biotech, Inc., a private limited company incorporated under the laws of California with a principal office at 6540 Kaiser Drive, Fremont, California 94555 (hereinafter "Quark") and QBI Enterprises Ltd., a private company incorporated under the laws of tht:: State of Israel with a principal office at Weizmann Science Park, P.O. Box 4071, "t\es Ziona 70400, Israel (together hereinafter "QBl"), and Atugcn AG, a company incorporated under the laws of Germany with a registered office at Rohcrt-Rosslc­Strasse 10, D-13125 Berlin, Gcrmany("A.tugcn").

RECITALS

WHEREAS, QBI and Atugen are parties to a Collaboration Agreement dated December 6, 2004 ("Agreement'');

WHEREAS. Quark and Atugcn have filed patent applications for inventions arising from their collaboration pursuant to the Agreement both before and after December 6, 2004;

WI IEREAS, QBI and Atugen desire that all such patent applications be jointly owned, consistent with and subject to the terms of the Agreement;

NOW, THEREFORE, the parties wish to amend the Agreement as set forth herein.

AGREE\1ENT

In consideration of the mutual promises, covenants and conditions redtcd herein and for good and valuable consideration, the parties agree as follows:

l. Capitalized Terms. Capitalized terms not defined herein have the meaning given to them in the Agreement.

2. Q:uark Assignment to Atugen. Quark, while retaining for itself an equal, undivided right, title and interest, has assigned to Atugen an equal, undivided right, title and interest in and to all Patent Rights to the patent applications listed at the end of this Paragraph 2 ('"QI3J Patents"). A copy of the assignment document is attached

1

Page 4: FOIA Request & Response Ltr · 2018-02-21 · approval shall not be unreasonably withheld or delaycdl Should QBI decide that it does not desire to continue the Patent Adivities in

hereto as Exhibit A. Quark at its sole cost will promptly take steps to record or otherwise make of record Atugen' s undivided right, title and interest in the QBI Patents. Quark agrees that it will. at its sole expense, execute all documents reasonably necessary to effectuate the foregoing assignment.

Country

[USA

USA

USA

USA

USA

USA

PCT

Application

60/604,668

60/609,786

60/638,659

60/664,236

60/688,943

11/207, 119

PCT/US200 5/029236

Filing Date

Aug. 25. 2004

Sept. 14, 2004

Dec.22.2004

March 22, 2005

June 8, 2005

-Aug. 16, 2005

Aug. 16, 2005]

J. Atugen_Assignment tu Ol!ark. Atugen, while retaining unto itself an equal, undivided right, title and interest, has assigned to Quark (with Quark acknowledging that such patent rights will be abandoned by Atugen under paragraph 6 hereunder) an equal, undivided right, title and interest in an to all Patent Rights to the patent applications listed at the end of this Paragraph 3 (''Atug~!! Patents"). A copy of the assignment is attached hereto as F.xhihit B. Quark at its sole cost will at an appropriate time take steps tu record or otherwise make of record Quark's undivided right, title and interest in such Atugen Patents. Atugen agrees that it will, at Quark's sole expensc:, execute all additional documents reasonably necessary to effectuate the foregoing assignment.

2 [ J ~° CERTAl'-1 CO',IFl[)l..::,OTIAI ll\FOR\.1ATIO~ CONTAl',IFD II\ THIS UOCUv!EI\T, MARKl..:U BY RRACKETS. IS FILE[) WITH

TIil.: SECURITIES A',!U EXCHA',!GF COM'.vt!SSION Pt.:RSCANT TO RLLE 406 OF THE SECURITIFS ACT OF 1933, AS

A'-'ll..:'-IDEO.

Page 5: FOIA Request & Response Ltr · 2018-02-21 · approval shall not be unreasonably withheld or delaycdl Should QBI decide that it does not desire to continue the Patent Adivities in

4.

Country Application Filing Date

[EP 04019405.2 Aug.16, 2004

USA 60/601.983 Aug. 17. 2004

PCT PCT/EP2005/ Aug. 16, 2005 008891

·----USA l l/204,022 Aug. 16, 2005]

5. Atugcn Grant to OBI. ln order to effectuate the intent of the parties that the licenses from Atugcn to QBl under the Agreement include the QBI Patents and Atugen Patents (with QBI acknowledging that the Atugen Patents will he abandoned by Atugen under paragraph 6 hereunder), Sections 6.2.1 and 6.2.2 of the Agreement arc amended to insert "and the QBI Patents and the Atugcn Patents" after "Joint Program IP".

6. OBI Graµt. tQ Atugcn. In order to effectuate the intent of the parties that the licenses from QBI to Atugcn under the Agreement include the QBI Patents and Atugcn Patents (with Atugcn acknowledging that the Atugen Patents will be abandoned hy Atugen under paragraph 6 hereunder), Sections 6.1. l and 6.1.2 of the Agreement are amended to insert "and the QBI Patents and the Atugen Patents" after "Joint Program IP''.

7. Ahandonmcnt of Atugen Pat~nts. Atugcn will aflinnatively abandon, and take all reasonahlc steps necessary to prevent all the Atugen Patents from hcing published by any patent office throughout the world.

8. Prosecution of OBI Patent~. QBI wi11 he responsible [at its sole cost] for prosecuting and maintaining the QBI Patents, and QB£ will handle all post grant proceedings in relation to the QBI Patents (such as reissues, reexaminations and interferences, if any) (collectively, ''the Patent Activities"). QBI will keep Atugen informed concerning the Patent Activities by, among other things, supplying Atugen with copies of all substantive documents related to the Patent Activities, and will consult with Atugcn in relation thereto. QR I shall furnish such documents and consult with Atugcn in sufficient time (at least two weeks) before any action by

3

----

I ] -- CFRTJ\IN CONFIDENTIAL !;>;FORMATI0:-1 COl'-TANF.O II', THIS DOCl!MEf\T, MARKE[) 8Y BRAC'Kl:TS, IS FIIF.D WITH

THF. SFCl:RITIFS At-;D EXCHAMiE C'0'.1.1'.'v!ISSION PL:RSI..:A'.'-T TO RUI.F. 406 OF THE SECLRITIES AC f OF 1933, AS

AMF(';DFD.

Page 6: FOIA Request & Response Ltr · 2018-02-21 · approval shall not be unreasonably withheld or delaycdl Should QBI decide that it does not desire to continue the Patent Adivities in

QBI is due, to allow Atugen to provide comments on the Patent Activity under consideration, which comments QBT shall consider in good faith. QBI will not [reduce the scope of any claim in the QBI Patents without the prior written approval of Atugen, which approval shall not be unreasonably withheld or delaycdl Should QBI decide that it does not desire to continue the Patent Adivities in relation to a QBI Patent in any country, or in relation to any pending claim, then QBl shall promptly inform Atugcn and Atugcn, at its sole option and cost, will have right to continue the Patent Activities in relation to any such QRT Patent or claim. In the event that Atugen takes over control of the Patent Activities under the preceding provisions, fQBI shall assil:,'11 to Atugen QBl's undivided right, title and interest in and to the relevant QBI Patent or claim.]

9. Pursuit qf Specific Patent _Claims. QBl, in consultation with Atugen, will pursue claims in the QB! Patents to (a) l compositions of matter including specifically REDD 141 and (h) [the use of such compositions of matter in the field of cancer].

I 0. lnvcntorship. The determination of any disputes regarding inventorship of the QBl Patents will first he brought to QBI's U.S. patent counsel, [John P. White. Esq., of Cooper & Dunham LLP] and Atugen's U.S. patent counsel, f Paul M. Booth, Esq., of Proskauer Rose LLP], or such other counsel as each party may designate for itself for such determination. If such counsel cannot reach a mutual invcntorship detennination, inventorship will he determined hy a third party C.S. patent attorney, mutually agreed to hy the parties and having no conflict of interest regarding either of the parties, unless the respective party agrees to waive such conl1ict, with the cost of such third party determination to he paid for by QBL

l l. [ Effoctive Date of Obligation to Assign. The parties agree that there existed. on or about April 1. 1004, a mutual obligation to jointly assign, to the parties. the patent rights described in the QBI Patents and the Atugcn Patents and that this mutual obligation existed on or about April l, 2004 based on the fact that the parties by then had begun to collaborate, notwithstanding that the Agreement, which fi.)rma)izcd the collaboration. was not signed until December 6, 2004].

12 .. Countemarts. This Amendment may be executed in one or more counterparts, t::ach of which shall be deemed and original and all of which together shall constitute one instrument.

4 [] = CERIAII\ CO'-IFIDF.~TIJ\L ll\FOR'-1All0l\ CONTAl'-IED II\ I 111S UOCUMF.NT. :vtARKl.:D BY URACKcTS, IS FII.F.O WITH

THE SECURITIES A'-1D l:XCHANGE COMMISSION Pl:RSUA:\T TO Ruu: 406 OF THE SECURrrILS /\CT 01' 1933, AS

AME'.'JDED.

Page 7: FOIA Request & Response Ltr · 2018-02-21 · approval shall not be unreasonably withheld or delaycdl Should QBI decide that it does not desire to continue the Patent Adivities in

13. Effect of ~_n::i_i;ndmcnt. This Amendment is effective as of the Effective Date ahove. Except for the explicit amendments herein, the terms of the Agreement shall not be modified hy this Amendment.

l 3. Disclaimer of Liability. The parties, Atugcn on the one hand, and QBI on the other, hereby irrevocably waive any and all claims, demands, or causes of action whatsoever in law or in equity that each may have against the other in relation to the preparation, filing and prosecution to date of the Atugen and QBI Patents.

IN WITl\ESS WHEREOF, the parties have caused this Amendment to be duly executed and delivered by their authorized representatives as of the Effective Date.

/s/ T. Christely, is/ K. Giese (signatures)

T. Christely / Dr. K. Giese CEO ! CSO, VP Research

Date: May 22, 2006

OBI Quark B.iotceh, Inc./081 Enterprise~ J,td.

Isl Daniel Zurr (signatw-e)

Dr. Daniel Zurr CEO

Date: May 25, 2006

5 l j = CF.RTAI~ COI\FIDE:--.ITIAL l:-:F0!0,1ATIO~ C'ONTAl~ED I1' TJIIS OOCUMF.I\T, :vtARKED BY URACKl.::TS, IS FILED WITH

TIIE SFCURITIFS Al';D EXCIIAMil.: C0\1\11SSIOI\ Pl:RSl/A~T TO RULi.: 406 OF THF. SECURITIES /\.CT OF 1933, AS

AME'JOFO.

Page 8: FOIA Request & Response Ltr · 2018-02-21 · approval shall not be unreasonably withheld or delaycdl Should QBI decide that it does not desire to continue the Patent Adivities in

Assignment # I

WHEREAS, QUARK BIOTECH, Inc., a corporation having principal place of business at 6540 Kaiser Drive, Fremont, California, 94555, USA, ("Quark"), is the owner of record of all right, title and interest in and to the patent applications listed in Appendix 1 hereto (the "Patent Rights"); and

WHEREAS, atugen AG., a corporation having a principal place of business at Robert Ri>ssle-Str. 10, D-13125 Hedin, Germany, ("Atugen"), is entitled to own an equal, undivided right and interest in and to the Patent Rights as a tenant in common, subject to the exdusive rights in certain fields granted to Quark and its affiliate, QBI Enterprises, Ltd., pursuant to a December 6, 2004 Agreement.

~OW, THEREFORE, in consideration of good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, Quark, while retaining unto itself an equal, undivided right and interest in and to the Patent Rights, hereby assigns and transfers as a tenant in common to Atugcn and its successors and assigns, an equal, undivided right and interest in and to the Patent Rights, as well as all other patent rights that may be based thereon or claim priority thereof, including all renewals, di visions, substitutes, reissues, continuations, reissues or extensions thereof: and every priority right that is or may he predicated upon or arise from the Patent Rights, to the full end of the terms, including any extensions, thereof.

Quark hereby authorizes and requests that any and all appropriate governmental authorities issue all documents evidencing joint ownership of an equal, undivided interest, as tenants in common, in and to the Patent Rights by each of Quark and Atugen, and their lawful successor and assigns.

Atugen represents and warrants that it has not, and will not, exercise or convey any right assigned to it herein in any manner which is inconsistent with the December 6, 2004 Agreement.

Quark (Assignor}

By: /s/ R. Skalitcr _______ _ Rami Skalitcr

Title: Executive Vice P.r=es=i-==d=cn=t-=--------

Date: January 19, 2006

EXHIBIT A

6

AJugcn (Assignee) hereby ~.~ccpts this Assignment

By: Isl T. Christely. /s/ K Oicsc T. Christely K. Giese

Title: -~EQ __ __;c=:s.:....::· o::;__ __

Date: January , 2006

( ] = Cm T'Alt\ CO"'FIDEI\TIAL 1'.'JFORMA JlON C'ONT AII\F.D II\ TJIIS UOCL 'AF.NT, MARKED UY BRACKETS. IS Fll.F.D WITH

Till: SJ..:CURITIF.S A'.'JD EXCHA'.'JGE COMMJSSIO!\I PURSIJA'-IT TO RLLE 406 OF THF SECURITIES AC! OF 1933, AS

/\Ml.:NULD.

Page 9: FOIA Request & Response Ltr · 2018-02-21 · approval shall not be unreasonably withheld or delaycdl Should QBI decide that it does not desire to continue the Patent Adivities in

Country [USA uSA USA USA USA USA PCT

Appendix 1 To ASSIGNMENT #1

Applicatio_n_N_o_. __ _ 60/604.668 60/609,786 601638,659 60/664,236 60/688,943

----

-+-----) J/207,119

PCT /U S2005i'029236 -------'---

7

Filing Date August 25, 2004

September 14, 2004 December 22. 2004 --

March 22. 2005 ----June 8, 2005

-----· A~gust 16, 2005 August 16, 2005]

l J = CERTAIN CONFIDE1'1TlAL INFOR\1ATION COJ\iTA11'iED IN THIS OOCl/MFNT, MARKEIJ BY BRACKETS, IS flLED WITH

THE SECURITIES Al\D EXCHANGE COMMISSION PlJRSt;A~T TO RCLE 406 OF THE SECCRJTIES ACT OF 1933, AS

AMENDED.

Page 10: FOIA Request & Response Ltr · 2018-02-21 · approval shall not be unreasonably withheld or delaycdl Should QBI decide that it does not desire to continue the Patent Adivities in

A§signmcnt #2

WHEREAS, atugcn AG., a corporation having a principal place of business at Rubert Rosslc-Str. I 0, D-13125, Berlin, Germany, ("Atugcn"), is the owner of record of all right, title and interest in and to the patent applications listed in Appendix l hereto (the "Paknt Rights"); and

WHEREAS, QUARK BIOTECH, Inc., a corporation having principal place of business at 6540 Kaiser Drive, Fremont, California, 94555, USA, ("Quark"), is entitled to own an equal, undivided right and interest in and to the Patent Rights as a tenant in common, subject to the exclusive rights in the field of oncology granted to Atugen pursuant to a December 6, 2004 Agreement.

NOW, THEREFORE, in consideration of good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, Atugcn, while retaining unto itself an equal, undivided right and interest in and to the Patent Rights, hereby assigns and transfers as a tenant in common to Quark and its successors and assigns, an equal, undivided right and interest in and to the Patent Rights, as well as all other patent rights that may be based thereon or claim priority thereof, including all renewals, divisions, substitutes, reissues, continuations, reissues or extensions thereot~ and every priority right that is or may he predicated upon or arise from the Patent Rights, to the full end of the terms, including any extensions, thereof.

Atugen hereby authorizes and requests that any and all appropriate governmental authorities issue all documents evidencing joint ownership of an equal, undivided interest, as tenants in common, in and to the Patent Rights by each of Atugen and Quark, and their lawful successor and assigns.

Quark represents and warrants that it has not, and will not. exercise or convey any right assigned to it herein in any manner which is inconsistent with the December 6, 2004 Agreement.

Atugen (Assignor)

By: /s/ T. Christe]y, Isl K. Giese T. Christcly K. Giese

Title: CEO CSO -'--'--==-.:.:;_-----==--='--------

Date: J anY.arJ..y _ ___,_,_,,,2C-'!0--""0--""6 ______ _

EXHIBIT B

8

Quark (Assignee) hereby accepts this Assignment

By: /s/ R. Skalitcr Rami Skaliter

Title: Executive Vice President

Date: January 19, 2006

[] -- CERTAIN COJ\FIDENTIAL INFORMATION C'ONTAINEO 1-:-l THIS DOCUMENT, \1ARKED BY BRACKETS, JS FILED WlTH THE S!.:Cl!RITIES AI\D EXCHANGE COMMISSION PL RSL:ANT TO RlJLE 406 OF THE SECURITIFS ACT OF 1933, AS

AMEt-:Dl.:D.

Page 11: FOIA Request & Response Ltr · 2018-02-21 · approval shall not be unreasonably withheld or delaycdl Should QBI decide that it does not desire to continue the Patent Adivities in

o3o5o6 v3;IIN

Country [EP

USA PCT USA

Appendix 1 To ASSLGNMENT #2

--------Application No. Filing Date

04019405.2 August 16, 2004 60/601,983 August 17, 2004

PCTIEP2005/008891 August 16, 2005 _L_ ____ l 1_/2_0~J022 August 16, 2005]

9 L] =CERTAIN CONrlDE!'-ITl.>\L l'HORMAflUN CONlAl!';ED IN THIS DOCL:\.fENT. MARKED BY BRACKETS. IS fll.F.D WllH

THE SECURlTIES J\ND EXOIANGI.: CO\.'IMISSION Pl:RS!JANT TO RULE 406 OF lHF. SEC'IJRITll.:S ACT OF l 933, AS

AME!';DED.