UNITED
STATES
SECURITIES AND EXCHANGE COMMISSION
WASHINGTON, D.C. 20549
FORM 8-K
CURRENT REPORT
Pursuant to Section 13 or 15(d) of the Securities Exchange Act of 1934
| Date of Report (Date of Earliest Event Reported): |
September 8, 2017
|
Marina Biotech, Inc.
(Exact name of registrant as specified in its charter)
| Delaware | 000-13789 | 11-2658569 | ||
|
(State
or other jurisdiction
of incorporation) |
(Commission
File Number) |
(I.R.S.
Employer
Identification No.) |
|
17870
Castleton Street, Suite 250
City of Industry, CA |
91748 | |
| (Address of principal executive offices) | (Zip Code) |
| Registrant’s telephone number, including area code: | 626-964-5788 |
N/A
Former name or former address, if changed since last report
Check the appropriate box below if the Form 8-K filing is intended to simultaneously satisfy the filing obligation of the registrant under any of the following provisions:
| [ ] | Written communications pursuant to Rule 425 under the Securities Act (17 CFR 230.425) |
| [ ] | Soliciting material pursuant to Rule 14a-12 under the Exchange Act (17 CFR 240.14a-12) |
| [ ] | Pre-commencement communications pursuant to Rule 14d-2(b) under the Exchange Act (17 CFR 240.14d-2(b)) |
| [ ] | Pre-commencement communications pursuant to Rule 13e-4(c) under the Exchange Act (17 CFR 240.13e-4(c)) |
Indicate by check mark whether the registrant is an emerging growth company as defined in Rule 405 of the Securities Act of 1933 (§230.405 of this chapter) or Rule 12b-2 of the Securities Exchange Act of 1934 (§240.12b-2 of this chapter).
Emerging growth company [ ]
If an emerging growth company, indicate by check mark if the registrant has elected not to use the extended transition period for complying with any new or revised financial accounting standards provided pursuant to Section 13(a) of the Exchange Act. [ ]
Item 1.01 Entry into a Material Definitive Agreement.
On September 8, 2017, Marina Biotech, Inc. (the “Company”) entered into an Intellectual Property Purchase Agreement (the “IP Purchase Agreement”) with Novosom Verwaltungsgesellschaft mbH (“Novosom”) pursuant to which the Company sold to Novosom substantially all of the Company’s intellectual property estate relating to the Company’s Smarticles delivery technology (the “Smarticles IP”). The Company previously acquired such Smarticles IP from Novosom pursuant to that certain Asset Purchase Agreement dated July 27, 2010 between the Company and Novosom (the “Original Purchase Agreement”). Following the date of the Original Purchase Agreement, the Company has entered into certain agreements with third parties pursuant to which the Company provided to such third parties certain licenses and rights with respect to the Smarticles IP (the “License Agreements”).
As per the IP Purchase Agreement, Novosom shall pay to the Company $1.00 in cash, and thereafter the Company shall no longer be responsible for the ongoing costs of maintaining the Smarticles IP. In addition, the parties agreed that the Company would retain rights to any future payments that may be due to it from licensees pursuant to the License Agreements, including milestone and royalty payments, if any (the “License Payments”), and Novosom agreed to relinquish any rights that it may have under the Original Purchase Agreement to any portion of the License Payments (which portion is equal to 30% of the value of each upfront (or combined) payment actually received in respect of the license of the Smarticles IP or related products or the disposition of the Smarticles IP by the Company, up to $3.3 million). For the avoidance of doubt, Novosom would be permitted to provide licenses with respect to the Smarticles IP following the closing date under the IP Purchase Agreement, subject to any restrictions contained in the License Agreements.
The foregoing description of the IP Purchase Agreement and the transactions contemplated thereby does not purport to be complete and is qualified in its entirety by reference to the full text of the IP Purchase Agreement, a copy of which is filed as Exhibit 10.1 to this Current Report on Form 8-K and is incorporated by reference herein.
Item 2.01 Completion of Acquisition or Disposition of Assets.
On September 8, 2017, the Company and Novosom entered into[, and consummated the transactions contemplated by,] the IP Purchase Agreement. The disclosures set forth in Item 1.01 of this current Report on Form 8-K are hereby incorporated by reference into this Item 2.01.
Item 9.01 Financial Statements and Exhibits.
| Exhibit No. | Description |
| 10.1 | Intellectual Property Purchase Agreement dated as of September 8, 2017 by and between Marina Biotech, Inc. and Novosom Verwaltungsgesellschaft mbH. |
SIGNATURES
Pursuant to the requirements of the Securities Exchange Act of 1934, as amended, the Registrant has duly caused this report to be signed on its behalf by the undersigned hereunto duly authorized.
| Marina Biotech, Inc. | ||
| September 14, 2017 | By: | /s/ Joseph W. Ramelli |
| Name: | Joseph W. Ramelli | |
| Title: | Chief Executive Officer | |
EXHIBIT INDEX
| Exhibit No. | Description |
| 10.1 | Intellectual Property Purchase Agreement dated as of September 8, 2017 by and between Marina Biotech, Inc. and Novosom Verwaltungsgesellschaft mbH. |
Page | 1
Intellectual Property Purchase Agreement
for the SMARTICLES Asset
This Intellectual Property Purchase Agreement (the “ Agreement ”) is entered as of September 8 th , 2017 (the “Effective Date” ) by and between Marina Biotech Inc., 17870 Castleton Street, Suite 250, City of Industry, CA 91748, hereinafter “ Marina ” and Novosom Verwaltungsgesellschaft mbH, Weinbergweg 23, D-06120 Halle, Germany, registered under HRB 14769 at the trade court of Stendal; hereinafter “ Novosom ”, each referred to as a “ Party ” and collectively as the “ Parties ”.
| WHEREAS , | Marina and Novosom ( in form of its predecessor Novosom AG) have entered into an Asset Purchase Agreement on July 27th 2010, wherein Marina acquired an intellectual property estate. A current list of that intellectual property is attached in Exhibit 0.1 hereto and is the “ Intellectual Property ” of this Agreement. |
| WHEREAS, | Marina has, in a period between July 27 th , 2010 and the Effective Date or the instant Agreement, licensed the Smarticles Technology, to licensees and having a scope as listed in Exhibit 0.2 hereto (hereinafter the “ Marina Licenses ”). |
| WHEREAS , | Marina has an ongoing payment obligation towards Novosom resulting from said Asset Purchase Agreement (the “ Marina Obligation ”). The Marina Obligation is payable in cash or stock at the sole discretion of Marina at a rate of 30% from any licensing income based on the Smarticles Technology or payable in full upon any sale of the Smarticles Technology. |
| WHEREAS, | Marina has changed its business focus away from delivery technologies and Novosom is interested in acquiring the Intellectual Property. |
NOW, THEREFORE , the Parties hereby enter into this Agreement to sell the Intellectual Property from Marina back to Novosom, to terminate the Asset Purchase Agreement and to regulate existing and future payment obligations.
| 1. | Status of Intellectual Property |
| 1.1. | Marina confirms that Exhibit 0.1 is a correct and complete list of the Intellectual Property to be sold and that Exhibit 0.1 reflects the correct status of all national or regional applications. |
| 1.2. | Marina confirms that the Intellectual Property listed in Exhibit 0.1 is in good standing, that no other fees than those listed in Exhibit 0.3 are due on or before Dec 31 st , 2017. |
| Page | 2 |
| 2. | Licenses issued by Marina and historic payments |
| 2.1. | Marina confirms that the Marina Licenses listed in Exhibit 0.2 represent a complete list of all licenses that relate to the Smarticles Technology and were issued by Marina; that no such license has been cancelled or withdrawn and that the scope of said licenses is properly described. |
| 2.2. | Novosom confirms that certain payments under section 2.04(b) of the Asset Purchase Agreement have been received. However, Novosom claims outstanding payments for use of the Intellectual Property by Marina before the Effective Date at least as listed in Exhibit 0.4. |
| 2.3. | Marina confirms that the list of outstanding payments in Exhibit 0.4 is correct and complete and that any outstanding payments will be made within 30 days, but no later than October 30 th , 2017. |
| 3. | Purchase Price and Other Conditions |
| 3.1. | As consideration for the acquired Intellectual Property, Novosom shall pay to Marina 1$ (One US Dollar). |
| 3.2. | Entering into this Agreement terminates the Asset Purchase Agreement between the Parties. |
| 3.3. | Entering into this Agreement shall cease the payment obligations of Marina under section 2.04 (b) of the Asset Purchase Agreement arising after the Effective Date. For clarity, the payment obligations according to section 2.3 of the instant Agreement will remain. |
| 4. | Consummation of the Purchase and Further Assistance |
| 4.1. | Novosom, by entering into this Agreement will have all rights on the Intellectual Property as an owner would have. |
| 4.2. | Marina confirms that the sale of the Intellectual Property to Novosom is complete and exclusive. Marina does not retain any rights or ownership of the Intellectual Property or of parts thereof. Marina as of the Effective Date, will neither use, have used, maintain, have maintained or license the Intellectual Property or parts thereof and Marina confirms that no further licenses have been issued between August 1 st , 2017 and the Effective Date. |
| 4.3. | This Agreement is entered under the condition precedent that both Parties sign a separate patent assignment essentially in the form as shown in Exhibit 1.0. |
| 5. | Confidentiality |
| 5.1. | The terms and conditions described in this Agreement (“ Confidential Information ”) shall be confidential and shall not be disclosed to any third party. Either Party may disclose any Confidential Information to such employees, professional advisers, banks, funding bodies, shareholders, consultants, and/or officers of itself and its affiliates as are reasonably necessary to advise on this agreement, or to facilitate the transactions provided for in this agreement, provided the disclosing party procures that the people to whom the information is disclosed keep it confidential as if they were that party. |
| Page | 3 |
| 6. | Miscellaneous |
| 6.1. | If individual binding sections of this Agreement are wholly or in part invalid, the other binding sections shall retain their validity. The ineffective sections shall be deemed replaced by the provision the Parties would have agreed had they been aware of the invalidity of the section concerned. |
| 6.2. | Insofar as permissible, exclusive jurisdiction for all disputes arising from and in connection with this Agreement shall be the Court of Jurisdiction in Halle/S., Germany. The laws of Germany shall apply exclusively, ousting its provisions concerning private international law. |
| IN WITNESS WHEREOF , the Parties hereto have caused this Agreement to be executed as of the date first written above by their duly authorized representatives. |
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| Page | 4 |
| Marina Biotech Inc | Date: | September 8, 2017 |
| /s/ Joseph W. Ramelli | ||
| Authorized Representative | ||
| Novosom Verwaltungsgesellschaft mbH | Date: | September 8, 2017 |
| /s/ Steffen Panzner | ||
| Authorized Representative |