LICENSE AGREEMENT
By and Among
MAXIM PHARMACEUTICALS, INC.
and
PROFESSIONAL PHARMACEUTICAL, INC.
and
XXXXX X. XXXX, D.D.S.
and
B. XXXXXX XXXXX, X.XX.
Dated as of November 6, 1998
LICENSE AGREEMENT
This LICENSE AGREEMENT (the "Agreement") is entered into as of November
6, 1998 (the "Effective Date") by and among MAXIM PHARMACEUTICALS, INC., a
Delaware corporation, with its principal place of business at 0000 Xxxxxxxxxx
Xxxxxx Xxxx, Xxx Xxxxx, Xxxxxxxxxx 00000-0000 ("Maxim"), PROFESSIONAL
PHARMACEUTICAL, INC., a New Mexico corporation, with its principal place of
business at 00000 Xxxxxxxx X.X., Xxxxx X, Xxxxxxxxxxx, Xxx Xxxxxx 00000 ("PPI"),
and Xxxxx X. Xxxx, D.D.S. and B. Xxxxxx Xxxxx, X.Xx., individuals residing in
New Mexico (together, the "Inventors").
WITNESSETH:
WHEREAS, PPI owns, or possesses licenses under, certain patents, patent
applications, know-how and other intellectual property relating to histamine and
analogs of histamine; and
WHEREAS, Maxim desires to receive, and PPI is willing to grant to
Maxim, an exclusive license under such patents, patent applications, know-how
and other intellectual property on the terms and subject to the conditions set
forth herein.
NOW, THEREFORE, in consideration of the foregoing, of the mutual
covenants and undertakings contained herein and of other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
Parties, intending to be legally bound, hereby agree as follows:
ARTICLE 1
DEFINITIONS
In addition to the other terms defined elsewhere herein, the following
terms shall have the following meanings when used herein (any term defined in
the singular shall have the same meaning when used in the plural and vice versa,
unless stated otherwise):
1.1 "AFFILIATE" of any specified Person means any other Person that
directly, or indirectly through one or more intermediaries, controls, is
controlled by, or is under common control with the specified Person, where
"control" means the direct or indirect ownership or control by the specified
Person of fifty percent (50%) or more of the stock or other equity interests of
such Person entitled to vote for the election of the Board of Directors or
similar governing body of such Person.
1.2 "FIRST PRODUCT" means the first Product to receive U.S. Product
Approval.
1.3 "KNOW-HOW" means data, formulae, processes, methodologies,
biological materials, chemical compounds, specifications and other proprietary
information.
1.4 "LOSSES" means losses, liabilities, suits, claims, costs, expenses
(including reasonable attorneys' fees), penalties, fines, judgments and/or
damages (including personal injury or property damages but excluding indirect,
incidental, special or consequential damages).
1.5 "NET PRODUCT REVENUES" means the total of the gross invoice prices from
revenues (including product sales, royalties from sublicenses, and/or proceeds
from the sale, grant or sublicense of marketing rights) derived from the
Products by Maxim and its Affiliates, less the sum of the following deductions
where applicable: (i) cash, trade, or quantity discounts allowed and taken; (ii)
sales, use, tariff, import/export duties or other excise taxes imposed upon
particular sales; (iii) transportation and transportation shipping charges; (iv)
allowances or credits to customers because of rejections or returns, to the
extent allowed and taken; and (v) uncollectible receivables; provided, however,
that:
(a) "Net Product Revenues" shall exclude revenues derived from
transactions between Maxim and its Affiliates;
(b) "Net Product Revenues" shall exclude revenues from contract
research and equity investments, including transactions in
which Maxim or any of its Affiliates receives funding from
Third Parties to assist in the development and
commercialization of Products; and
(c) In the event that any Product is sold as part of an
integrated system in which such Product is combined with a
product/products which is/are not Products, then "Net
Product Revenues" attributable to such Product shall equal
the pro rata share of the total sales price of the
integrated system attributable to such Product, calculated
based on the relative stand-alone sales prices of each
individual product included within the integrated system. If
such products are not routinely sold separately and
therefore do not have a stand-alone sales price, then the
"Net Product Revenues" attributable to such Product included
within the integrated system shall be calculated based upon
some other equitable allocation methodology.
1.6 "PARTY" means Maxim, PPI, or any Inventor, and "PARTIES" means
Maxim, PPI, and the Inventors.
1.7 "PATENT RIGHTS" means patents and patent applications, including
any patents issuing on such patent applications and any reissues,
reexaminations, renewals, extensions, divisionals, continuations and
continuations-in-part of the foregoing.
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1.8 "PERSON" means a natural person, a corporation, a partnership, a
limited liability company, a trust, a joint venture, any governmental authority
or any other entity or organization.
1.9 "PPI KNOW-HOW" means the Know-How relating to histamine and
analogs of histamine which, as of the date hereof, is owned by PPI or licensed
to PPI with the right to sublicense.
1.10 "PPI PATENT RIGHTS" means the Patent Rights set forth on Schedule
1.10 attached hereto and all other Patent Rights owned by PPI, in whole or in
part, or licensed to PPI with the right to sublicense, that claim priority from
or have common priority with such listed Patent Rights.
1.11 "PRODUCT" means any topical antiviral or topical healing product
containing histamine or analogs of histamine as an active agent, the
manufacture, use or sale of which is covered, in whole or in part, by any Valid
Claim of any patent included in the PPI Patent Rights.
1.12 "PRODUCT APPROVAL" with respect to a Product and country, means
approval to market such Product in such country by the governmental authority of
competent jurisdiction.
1.13 "TERRITORY" means all countries of the world.
1.14 "THIRD PARTY" means any Person that is not a Party to this
Agreement.
1.15 "TRADEMARK" means the "VIRAGEL" trademark registered in the name
of PPI as described more fully in Schedule 1.15 attached hereto.
1.16 "U.S. PRODUCT APPROVAL" with respect to a Product means approval
to market such Product in the United States by the U.S. Food and Drug
Administration (the "FDA").
1.17 "VALID CLAIM" means a claim of an issued and unexpired patent
that has not been (a) held permanently revoked, unenforceable or invalid by a
decision of a court or governmental agency of competent jurisdiction over such
claim, which decision is unappealable or unappealed within the time allowed for
appeal or (b) admitted to be invalid or unenforceable through disclaimers,
consent decrees or otherwise.
ARTICLE 2
PROPRIETARY RIGHTS
2.1 LICENSE GRANT. As of the date hereof, and subject to the terms and
conditions hereof, PPI hereby grants to Maxim and its Affiliates, and Maxim
hereby accepts on behalf of itself and its Affiliates, a sole and exclusive
license under the PPI Patent Rights and PPI Know-How to make, have made, use,
import, offer for sale, sell and/or have sold products and to otherwise practice
the inventions claimed in the PPI
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Patent Rights and the PPI Know-How in the Territory. The foregoing license grant
shall include the right of Maxim and its Affiliates to grant sublicenses to any
Third Party.
2.2 TRADEMARK LICENSE GRANT. As of the date hereof, and subject to the
terms and conditions hereof, PPI hereby grants to Maxim and its Affiliates, and
Maxim hereby accepts on behalf of itself and its Affiliates, an exclusive
license to use the Trademark. The Parties agree that the foregoing license shall
not impose or be construed to impose any obligation upon Maxim or any of its
Affiliates to use the Trademark in connection with the sale of Products or for
any other purpose.
2.3 FUTURE PROPRIETARY RIGHTS. Each of PPI and the Inventors hereby
solely and exclusively licenses to Maxim all intellectual property relating to
histamine and analogs of histamine, including any improvements or modifications
to the PPI Patent Rights and PPI Know-How, developed, conceived or reduced to
practice by PPI or the Inventors at any time following the date hereof, whether
in the form of Patent Rights or Know-How, under the terms outlined in this
Agreement. PPI shall not permit any Person to perform work on its behalf in
connection with histamine or analogs of histamine unless that Person first has
signed a written agreement assigning to Maxim all of that Person's right, title
and interest in and to all Patent Rights and Know-How, developed, conceived or
reduced to practice by such Person in connection with histamine or analogs of
histamine. PPI shall cause its employees and agents to execute and deliver, and
each of the Inventors shall execute and deliver, any documents reasonably
requested by Maxim to carry out the provisions of this Section 2.3.
2.4 DISCLOSURE AND DELIVERY OF REPRODUCIBLE PATENT RIGHTS AND
KNOW-HOW. Promptly upon execution of this Agreement, PPI shall disclose and
deliver to Maxim copies of the reproducible PPI Patent Rights and PPI Know-How
at the address specified by Maxim and in the manner mutually agreed upon by
Maxim and PPI. Thereafter, on a regular basis or upon the request of Maxim, each
of PPI and the Inventors shall disclose and deliver to Maxim copies of all
reproducible Patent Rights and Know-How relating to histamine and analogs of
histamine developed, conceived or reduced to practice by PPI or the Inventors at
any time following the date hereof at such address as may be specified by Maxim
and in such manner as shall be mutually agreed upon by the Parties.
2.5 REGULATORY APPROVALS. Maxim shall be responsible for obtaining
Product Approvals for all Products and shall be responsible for all expenses
relating thereto. Maxim shall prepare and file in its own name any necessary
applications for such Product Approval in any country in the Territory. Maxim
shall own all right, title and interest in and to all such applications and any
Products Approvals issuing therefrom. Maxim shall notify PPI of receipt of U.S.
and any other Product Approval for a Product within ten business days after
receipt of Product Approval for such Product.
2.6 PUBLICATION RIGHTS. The Parties hereby confirm that Maxim shall
have the sole right and discretion to prepare and publish scientific articles,
abstracts, presentations, and any other materials of any nature whatsoever
relating to the PPI Patent Rights, the PPI Know-How, and/or all intellectual
property relating to histamine and analogs of histamine, including any
improvements or modifications to the PPI Patent Rights and PPI
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Know-How, developed, conceived or reduced to practice by PPI or the Inventors at
any time following the date hereof. PPI and the Inventors shall have no right to
publish any scientific article, abstract, or presentation, or any other material
of any nature whatsoever, relating to the PPI Patent Rights, the PPI Know-How,
and/or all intellectual property relating to histamine and analogs of histamine,
including any improvements or modifications to the PPI Patent Rights and PPI
Know-How, developed, conceived or reduced to practice by PPI or the Inventors at
any time following the date hereof. Each of PPI and the Inventors shall maintain
the confidentiality of all such information in accordance with Article 7 of this
Agreement, and shall ensure that each of its employees and agents complies with
the foregoing obligation.
ARTICLE 3
FINANCIAL TERMS
3.1 CONSIDERATION. As consideration for the licenses and other rights
granted by PPI in Article 2 above, Maxim shall pay to PPI:
(a) A payment of $300,000 within five business days following
the execution of this Agreement;
(b) A payment of $100,000 per year commencing on the second
anniversary of the Effective Date and continuing through the
anniversary of the Effective Date occurring immediately
prior to the receipt of U.S. Product Approval for the First
Product;
(c) A payment of $150,000 upon Maxim's receipt of U.S. Product
Approval for the First Product; and
(d) A royalty equal to 2% of the Net Product Revenues received
by Maxim and its Affiliates, payable on a quarterly basis
commencing with the quarter in which occurs the first
commercial sale of any Product.
3.2 TRAVEL EXPENSES. In the event that, at any time during the term of
this Agreement, Maxim requests that PPI provide technical assistance to Maxim in
connection with the licenses and other rights granted hereunder and any PPI
employees or agents are required to travel at the request of Maxim for the
purpose of providing such technical assistance, Maxim shall reimburse PPI for
all reasonable travel and lodging expenses incurred by such PPI employees or
agents for such travel.
3.3 ROYALTY REPORTS. On or before 30 days after the end of each
calendar quarter commencing with the quarter in which occurs the first
commercial sale of any Product, Maxim shall deliver to PPI a true and
accurate written report showing the following as they apply to the calendar
quarter immediately preceding the date of such report:
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(a) The quantities of Product sales of which have been
invoiced by Maxim and its Affiliates during the
immediately preceding calendar quarter; the amount
of royalties received by Maxim and its Affiliates
during the immediately preceding calendar quarter
from sublicenses in connection with Products; and
the amount of proceeds received by Maxim and its
Affiliates during the immediately preceding
calendar quarter from the sale of marketing rights
in connection with Products;
(b) The computation of the Net Product Revenues
attributable to such Products (including a
detailed accounting of any allowed deductions from
the invoiced amounts to arrive at Net Product
Revenues); and
(c) The U.S. Dollar value of the amount of royalties,
if any, due under Section 3.1(d) above on the Net
Product Revenues attributable to such Products.
If no royalties are due, it shall be so reported. The correctness and
completeness of each such royalty report shall be certified in writing by the
Chief Financial Officer of Maxim. On or before the date which is 60 days after
the end of the calendar quarter in which this Agreement expires or is
terminated, Maxim shall provide to PPI a written report that complies in all
respects with this Section 3.3. If any allowed deductions to arrive at Net
Product Revenues related to a calendar quarter are incurred or identified
subsequent to the payment of royalties for said quarter, such deductions shall
be applied against the royalty payment due for the calendar quarter said
deductions are incurred or identified.
3.4 PAYMENT PROCEDURES.
(a) Maxim shall pay to PPI all amounts due under Section
3.1(d) above within 30 days of the end of each calendar quarter, with respect to
Net Product Revenues generated during such calendar quarter, together with a
written report setting forth the calculation of the amount payable to PPI.
(b) All payments due to PPI hereunder shall be paid to PPI in
U.S. Dollars by check drawn on a U.S. bank, or by such other method mutually
agreed upon by PPI and Maxim, in each case at the expense of the payor, for
value no later than the due date thereof, to the address of PPI specified in
Section 9.5, or to such other address as PPI shall designate in writing within a
reasonable period of time prior to such due date:
3.5 LATE PAYMENT. If Maxim fails to pay any payment required under
this Agreement on or before the due date therefor, then Maxim shall pay annually
compounded interest on such amount at an annual rate equal to the lowest prime
rate as published by The Wall Street Journal on or nearest to such due date plus
three percent (3%), which interest shall accrue from the date the payment not
timely made became due until the date such payment is paid in full.
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3.6 APPLICATION OF PAYMENTS. Any payments received by PPI shall be
applied first to the satisfaction of the oldest of any unpaid, accrued interest
charges and, following payment of all such interest charges, to the satisfaction
of the oldest of any unpaid fees or other amounts due hereunder.
3.7 BOOKS AND RECORDS. Maxim shall keep full, true and accurate books
of account containing all particulars and reasonable supporting documentation
that may be necessary for the purpose of determining the amounts payable to PPI
hereunder. All such books of account and reasonable supporting documentation
shall be located at the principal place of business of Maxim and shall be open
for inspection for such purpose by PPI or any independent certified public
accountant retained by PPI, at a time mutually acceptable to Maxim and PPI
during normal business hours but no more frequently than twice each calendar
year for five years following the end of the calendar year to which they pertain
(and access shall not be denied thereafter if reasonably available).
ARTICLE 4
PATENT PROSECUTION, MAINTENANCE AND ENFORCEMENT
4.1 PROSECUTION AND MAINTENANCE.
(a) Maxim, at its cost and expense, shall have the sole
right and discretion to prosecute any patent applications included in
the PPI Patent Rights and to maintain any patents issuing therefrom
and any other patents included in the PPI Patent Rights. Maxim shall
provide PPI with copies of all material correspondence relating to
such prosecution and maintenance, and, prior to making any filing in
connection therewith, shall provide a draft of such filing to PPI at
least 15 days prior to the date of such filing so as to allow for
review and comment by PPI (but PPI shall be deemed to have waived such
right if it does not provide any comments to Maxim within 14 days of
PPI's receipt of such draft).
(b) Maxim shall advise PPI in writing at least 30 days
prior to any abandonment by Maxim in any jurisdiction of any patent
application or any patent included in the PPI Patent Rights, and,
in such event, PPI shall have the right to prosecute such patent
application or maintain such patent, at PPI's cost and expense, in
such jurisdiction.
4.2 ENFORCEMENT AND DEFENSE.
(a) PPI shall act in good faith to inform Maxim of any
infringement of which it becomes aware by any Third Party of any PPI Patent
Rights. Maxim shall have the right in its sole discretion to determine when to
take legal action, at its cost and expense, to enforce such Patent Rights
against infringement by Third Parties. Any amounts awarded to Maxim in
connection with such enforcement action shall be applied first to reimburse
Maxim for the reasonable out-of-pocket costs and expenses (including reasonable
attorneys' fees) payable by Maxim in such action and the balance shall be
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divided between Maxim and PPI, with PPI receiving 2% and Maxim retaining 98% of
the amount of such balance.
(b) In the event that Maxim, upon receiving notice of an
alleged infringement by a Third Party of any PPI Patent Rights, does not take
legal action to enforce such PPI Patent Rights within 180 days of receiving such
notice, then PPI shall have the option to take legal action to enforce such
Patent Rights at PPI's cost and expense. Any amounts awarded to PPI in
connection with such enforcement action shall be applied first to reimburse PPI
for the reasonable out-of-pocket costs and expenses (including reasonable
attorneys' fees) payable by PPI in such action and the balance shall be divided
between the Parties, with Maxim receiving 50% and PPI retaining 50% of the
amount of such balance.
(c) If a Third Party commences an action challenging any PPI
Patent Rights, Maxim, at its cost and expense, shall defend such Patent Rights
against such challenge using reasonable legal and business judgment. In the
event that Maxim does not, on a timely basis, commence to defend such Patent
Rights against such challenge, then PPI, at PPI's cost and expense, may commence
to defend such Patent Rights against such challenge.
(d) Each of Maxim and PPI shall cooperate fully with the other
in any action brought by either Maxim or PPI to enforce any PPI Patent Rights
against infringement by Third Parties or in any defense by the other Party of
such Patent Rights against challenge by Third Parties and shall provide all
assistance reasonably requested by the other party in carrying on such action or
defense. Maxim or PPI, at its cost and expense, shall have the right to join in
any such action or defense of the other party. In no event shall any enforcement
action or defense be settled by PPI without the prior written consent of Maxim.
4.3 PRODUCT LABELING: Maxim shall include on the labeling and/or
packaging of Products sold commercially references to PPI Patent Rights to the
extent required to provide the level of protection for such rights standard in
the pharmaceutical industry.
ARTICLE 5
REPRESENTATIONS AND WARRANTIES
5.1 REPRESENTATIONS AND WARRANTIES OF MAXIM. Maxim represents and
warrants to PPI and the Inventors that:
(a) Maxim has the full corporate right, power and
authority to execute, deliver and perform this
Agreement and to consummate the transactions
contemplated hereby;
(b) The execution, delivery and performance of this
Agreement and the consummation of the transactions
contemplated hereby have
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been duly authorized by all necessary corporate
action on the part of Maxim;
(c) This Agreement has been duly executed and
delivered by an authorized officer of Maxim, and
is a legal, valid and binding obligation of Maxim
enforceable against it in accordance with its
terms, except as enforcement may be limited by
general principles of equity (regardless of
whether such enforceability is considered in a
proceeding at law or in equity) and the effect of
applicable bankruptcy, insolvency, moratorium and
other similar laws of general application relating
to or affecting creditors' rights generally,
including, without limitation, the effect of
statutory or other laws regarding fraudulent
conveyances and preferential transfers;
(d) Maxim's execution, delivery and performance of
this Agreement shall not constitute a breach or
default under any contract or agreement to which
Maxim is a party or by which it is bound or
otherwise violate the rights of any Third Party;
and
(e) No consent, approval or authorization of or from
any governmental entity or any other Person not a
Party to this Agreement, whether prescribed by
law, regulation, contract or agreement, is
required for Maxim's execution, delivery and
performance of this Agreement or consummation of
the transactions contemplated hereby.
5.2 REPRESENTATIONS AND WARRANTIES OF PPI AND THE INVENTORS. Each of
PPI and the Inventors represents and warrants to Maxim that:
(a) PPI has the full corporate right, power and
authority to execute, deliver and perform this
Agreement and to consummate the transactions
contemplated hereby;
(b) The execution, delivery and performance of this
Agreement and the consummation of the transactions
contemplated hereby have been duly authorized by
all necessary corporate action on the part of PPI;
(c) This Agreement has been duly executed and
delivered by an authorized officer of PPI, and is
a legal, valid and binding obligation of PPI
enforceable against it in accordance with its
terms, except as enforcement may be limited by
general principles of equity (regardless of
whether such enforceability is considered in a
proceeding at law or in equity) and the effect of
applicable bankruptcy, insolvency, moratorium and
other similar laws of general application relating
to or affecting creditors' rights
9
generally, including, without limitation, the
effect of statutory or other laws regarding
fraudulent conveyances and preferential transfers;
(d) Such Party's execution, delivery and performance
of this Agreement shall not constitute a breach or
default under any contract or agreement to which
such Party is a party or by which it is bound or
otherwise violate the rights of any Third Party;
(e) No consent, approval or authorization of or from
any governmental entity or any other Person not a
Party to this Agreement, whether prescribed by
law, regulation, contract or agreement, is
required for such Party's execution, delivery and
performance of this Agreement or consummation of
the transactions contemplated hereby;
(f) PPI owns, or has the right to use, all of the PPI
Patent Rights and PPI Know-How and has the full
power and right to grant to Maxim and its
Affiliates the license set forth in Section 2.1
above, and PPI owns, or has the right to use, the
Trademark and has the full power and right to
grant to Maxim and its Affiliates the license set
forth in Section 2.2 above;
(g) Such Party has not granted to any Third Party any
license or right to use any of the PPI Patent
Rights or PPI Know-How; and
(h) Such Party has not received any notice from any
Third Party that the practice of the PPI Patent
Rights or PPI Know-How infringes and, to the best
of PPI's knowledge, the practice of the PPI Patent
Rights and PPI Know-How does not infringe, any
patent or other proprietary rights of any Third
Party. To the best of such Party's knowledge, the
PPI Patent Rights are valid and enforceable.
ARTICLE 6
INDEMNIFICATION
6.1 INDEMNITY.
(a) PPI shall not be liable to Maxim or any other
Person for, and Maxim shall indemnify and hold
harmless PPI, and its respective directors,
officers, employees and agents (collectively, the
"PPI Indemnitees"), from and against any Losses
that are incurred by the PPI Indemnitees arising
out of or resulting from (i) any
misrepresentation, breach of warranty, or
nonfulfillment or nonperformance of any agreement
on the part of Maxim under this Agreement or any
noncompliance on the part of Maxim with applicable
law, or (ii) any product liability claim arising
out of the sale by Maxim of Product.
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(b) Maxim shall not be liable to PPI or any other
Person for, and PPI shall indemnify and hold
harmless Maxim, and its respective directors,
officers, employees and agents (collectively, the
"Maxim Indemnitees"), from and against any Losses
that are incurred by the Maxim Indemnitees arising
out of or resulting from (i) any
misrepresentation, breach of warranty, or
nonfulfillment or nonperformance of any agreement
on the part of PPI under this Agreement or any
noncompliance on the part of PPI with applicable
law, or (ii) the practice or use by PPI or the
Inventors of the PPI Patent Rights and the PPI
Know-How.
6.2 PROCEDURE. Any PPI Indemnitee or Maxim Indemnitee, as the case may
be, shall notify Maxim or PPI (the "Indemnifying Party") promptly in writing of
an indemnifiable claim or cause of action under Section 6.1 upon receiving
notice or being informed of the existence thereof. The Indemnifying Party shall
assume, at its cost and expense, the sole defense of such claim or cause of
action through counsel selected by the Indemnifying Party and reasonably
acceptable to the other Party. The Indemnifying Party shall maintain control of
such defense, including any decision as to settlement; provided that, in the
event that the Indemnifying Party does not maintain control of such defense on a
timely basis, then, without prejudice to any other rights and remedies available
to the other Party under this Agreement, the other Party may take over such
defense with counsel of its choosing, at the Indemnifying Party's cost and
expense. The other party may, at its option and expense, participate in the
Indemnifying Party's defense, and if the other Party so participates, the
parties shall cooperate with one another in such defense. The Indemnifying Party
shall bear the total costs of any court award or settlement of such claim or
cause of action and all other costs, fees and expenses related to the resolution
thereof (including reasonable attorneys' fees except for attorneys' fees for
which the other Party is responsible in the event that the other Party
participates in the Indemnifying Party's defense of such claim or cause of
action).
ARTICLE 7
CONFIDENTIALITY
7.1 CONFIDENTIALITY OBLIGATION. Each of the Parties (the "Receiving
Party") shall keep strictly confidential any information disclosed by any other
Party (the "Disclosing Party") or otherwise made available to the Receiving
Party concerning the PPI Patent Rights and PPI Know-How or the Disclosing
Party's performance of this Agreement or otherwise concerning the business,
operations, trade secrets or other proprietary information of the Disclosing
Party (whether in written media or otherwise) ("Confidential Information"),
using at least the same degree of care that it uses to protect its own
confidential or proprietary information. "Confidential Information" shall not
include information: (a) which is or becomes generally available to the public
other than as a result of disclosure thereof by the Receiving Party; (b) which
is lawfully received by the Receiving Party on a nonconfidential basis from a
Third Party that is not itself under any obligation of confidentiality or
nondisclosure to the Disclosing Party or any other Person with respect to such
information; (c) which is independently developed by the Receiving Party; or (d)
which was in the Receiving Party's possession prior to receipt from the
Disclosing Party.
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7.2 NONDISCLOSURE OF CONFIDENTIAL INFORMATION. The Receiving Party
shall use Confidential Information solely for the purposes of this Agreement and
the transactions contemplated hereby and shall not disclose or disseminate any
Confidential Information to any Person at any time, except for disclosure to
those of its directors, officers, employees, accountants, attorneys, advisers
and agents whose duties reasonably require them to have access to such
Confidential Information, provided that such directors, officers, employees,
accountants, attorneys, advisers and agents are bound to maintain the
confidentiality of such Confidential Information to the same extent as if they
were Parties hereto.
7.3 EXCEPTION. The foregoing confidentiality and nondisclosure
obligations shall not apply to information which is required to be publicly
disclosed by law or by regulation; provided, however, that, in such event, the
Receiving Party provides the Disclosing Party with prompt advance notice of such
disclosure so that the Disclosing Party has the opportunity if it so desires to
seek a protective order or other appropriate remedy.
7.4 SURVIVAL. The confidentiality and nondisclosure obligations of
this Article 7 shall survive the expiration or termination of this Agreement and
remain in effect for a period of seven years following the expiration or
termination of this Agreement.
ARTICLE 8
TERM AND TERMINATION
8.1 TERM. This Agreement shall commence as of the date hereof and
shall continue in full force and effect, unless terminated sooner in accordance
with Section 8.2 below, until the later of:
(a) The expiration date of the last Valid Claim of the
PPI Patent Rights; or
(b) 15 years from the date of the first commercial
sale of the last Product with respect to which
sales have commenced subsequent to the receipt of
U.S. Product Approval.
8.2 TERMINATION RIGHTS OF PPI AND MAXIM. Each of Maxim and PPI shall
have the right to terminate this Agreement in the event of the material breach
by the other Party of, or the failure of the other Party to perform, any of its
material obligations hereunder and the failure to remedy such material breach or
nonperformance within 60 days following the receipt of written notice of such
material breach or nonperformance from the nonbreaching Party. Such termination
shall be immediately effective upon the receipt by the breaching or
nonperforming Party of written notice of termination from the nonbreaching
Party.
8.3 EFFECTS OF TERMINATION. Upon the termination of this Agreement:
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(a) The licenses granted by PPI to Maxim and its
Affiliates hereunder shall terminate immediately,
along with any sublicenses granted by Maxim and
its Affiliates under the PPI Patent Rights and PPI
Know-How to any Third Parties; and
(b) The manufacture, use and sale of Products shall
cease immediately, provided, however, that sales
of any Product inventory that remains unsold as of
the date of termination may proceed as long as
such sales are completed within six months of the
date of termination and PPI receives its
percentage share of the Net Product Revenues from
sales in accordance with the terms and conditions
of this Agreement.
8.4 SURVIVAL. All rights granted to and obligations undertaken by the
Parties hereunder shall terminate immediately upon the expiration or termination
of this Agreement except for the following, which shall survive according to
their terms:
(a) The obligation of Maxim to pay to PPI any and all
payments accrued under Article 3;
(b) The right of PPI to inspect the books and records
of Maxim as provided in Section 3.7;
(c) The indemnification obligations of Article 6;
(d) The confidentiality and nondisclosure obligations
of Article 7;
(e) The obligations of PPI and Maxim under Section
8.3; and
(f) The provisions of Sections 9.2, 9.3, 9.5, 9.14 and
9.15 below.
In addition, expiration or termination of this Agreement shall not affect the
remedies of any Party otherwise available at law or in equity in relation to any
rights accrued under this Agreement prior to expiration or termination.
ARTICLE 9
MISCELLANEOUS
9.1 RELATIONSHIP OF THE PARTIES. Nothing in this Agreement is intended
or shall be deemed to constitute a partnership, agency or joint venture
relationship between or among the Parties hereto.
9.2 APPLICABLE LAW. This Agreement shall be governed by the laws of
the State of California applicable to contracts made and to be performed
entirely within such jurisdiction and without giving effect to the choice or
conflict of laws rules or principles of the State of California or of any other
jurisdiction.
13
9.3 CONSENT TO JURISDICTION. Each of the Parties irrevocably submits
to the exclusive jurisdiction of the courts of the State of California and of
any United States federal court sitting in the State of California in any action
or proceeding arising out of or relating to this Agreement, and irrevocably
agrees that all claims in respect of such action or proceeding shall be heard
and determined in any such California or United States federal court. Each Party
further agrees that service of any process, summons, notice or document by
registered mail to the address of such Party set forth in Section 9.5 below
shall be effective service of process for any action or proceeding brought
against such Party in any such court. Each Party hereby irrevocably and
unconditionally waives any objection to the laying of venue of any action or
proceeding arising out of or relating to this Agreement in any such court and
further irrevocably and unconditionally waives and agrees not to plead or claim
in any such court that any such action or proceeding brought in any such court
has been brought in any inconvenient forum. Each Party further agrees that a
final, nonappealable judgement in any such action or proceeding shall be
conclusive and may be enforced in any other jurisdictions by suit on the
judgment or in any other manner provided by law.
9.4 COUNTERPARTS. This Agreement may be executed in any number of
counterparts and may be executed by facsimile. All counterparts shall
collectively constitute one and the same Agreement.
9.5 NOTICES. In any case where any notice or other communication is
required or permitted to be given hereunder, such notice or communication shall
be in writing and deemed to have been duly given and delivered (a) if delivered
in person, on the date of such delivery, (b) if sent by confirmed facsimile
transmission (with answer back received), on the date of such facsimile
transmission, or (c) if sent by overnight express or registered or certified
mail (with return receipt requested), on the date of receipt of such mail, and
shall be sent to the following address (or such other address as any Party may
designate from time to time in writing):
If to Maxim:
Maxim Pharmaceuticals, Inc.
0000 Xxxxxxxxxx Xxxxxx Xxxx, Xxxxx 000
Xxx Xxxxx, Xxxxxxxxxx 00000-0000
Telephone: 000-000-0000
Telefax: 000-000-0000
Attention: Finance Department
Copy to:
Xxxxxx & Xxxxxx
000 Xxxxxxx Xxxxxx, X.X.
Xxxxxxxxxx, X.X. 00000-0000
Telephone: 000-000-0000
Telefax: 202-942-5999
Attention: Xxxxx Xxxxxxxx
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If to PPI
(prior to or on December 15, 1998):
Professional Pharmaceutical, Inc.
00000 Xxxxxxxx X.X., Xxxxx X
Xxxxxxxxxxx, Xxx Xxxxxx 00000
Telephone: 000-000-0000
Telefax: 505-291-0730
Attention: Xxxxx X. Xxxx, D.D.S.
(after December 15, 1998):
Professional Pharmaceutical, Inc.
0000 Xxxx Xxxx XX
Xxxxx X
Xxxxxxxxxxx, Xxx Xxxxxx 00000
Telephone: 000-000-0000
Telefax: 505-291-0730
Attention: Xxxxx X. Xxxx, D.D.S.
Copy to :
Xxxxx X. Xxxx, D.D.S.
0000 Xxxx X.X., Xxx. 0000
Xxxxxxxxxxx, Xxx Xxxxxx 00000
Telephone: 000-000-0000
Telefax: 505-291-0730
If to the Inventors:
(on or prior to December 15, 1998)
Xxxxx Xxxx, D.D.S.
00000 Xxxxxxxx X.X., Xxxxx X
Xxxxxxxxxxx, Xxx Xxxxxx 00000
Telephone: 000-000-0000
Telefax: 000-000-0000
15
(after December 15, 1998)
Xxxxx X. Xxxx, D.D.S.
0000 Xxxx Xxxx XX
Xxxxx X
Xxxxxxxxxxx, Xxx Xxxxxx 00000
Telephone: 000-000-0000
Telefax: 505-291-0730
B. Xxxxxx Xxxxx, X.Xx.
00000 Xxxxxxxxxx Xx. X.X.
Xxxxxxxxxxx, Xxx Xxxxxx 00000
Telephone: 000-000-0000
9.6 FORCE MAJEURE. If any circumstance beyond the reasonable control
of any Party occurs which delays or renders impossible the performance of that
Party's obligations under this Agreement on the dates herein provided, such
obligation shall be postponed for such time as such performance necessarily has
had to be suspended or delayed on account thereof, provided such Party shall
notify the other Parties in writing as soon as practicable, but in no event more
than ten days after the occurrence of such force majeure. In such event, the
Parties shall meet promptly to determine an equitable solution to the effects of
any such event, provided that such Party who fails because of force majeure to
perform its obligations hereunder shall upon the cessation of the force majeure
take all reasonable steps within its power to resume with the least possible
delay compliance with its obligations. Events of force majeure shall include,
without limitation, war, revolution, invasion, insurrection, riots, mob
violence, sabotage or other civil disorders, acts of God, limitations imposed by
exchange control regulations or foreign investment regulations or similar
regulations, laws, regulations or rules of any government or governmental
agency, and any inordinate and unanticipated delays in the regulatory review or
governmental approval process that are within the control of such government or
governmental agency.
9.7 BINDING EFFECT; ASSIGNMENT. This Agreement shall not be assigned,
in whole or in part, by any Party without the prior written consent of the other
Parties, and any attempted assignment without such consent shall be null and
void. This Agreement shall inure to the benefit of and be binding upon each of
the Parties hereto and their respective successors and permitted assigns.
9.8 ENTIRE AGREEMENT. The terms and conditions herein contained
constitute the entire agreement between the Parties relating to the subject
matter of this Agreement and shall supersede all previous communications between
or among the Parties with respect to the subject matter of this Agreement. None
of the Parties has entered into this Agreement in reliance upon any
representation, warranty, covenant or undertaking of the other Parties that is
not set out or referred to in this Agreement.
9.9 RECITALS AND SCHEDULES. The recitals set forth at the start of
this Agreement along with the Schedules attached to this Agreement and the terms
and
16
conditions incorporated in such recitals and Schedules shall be deemed
integral parts of this Agreement and all references in this Agreement to this
Agreement shall encompass such recitals and Schedules and the terms and
conditions incorporated in such recitals and Schedules.
9.10 AMENDMENT. This Agreement may be varied, amended or extended only
by the written agreement of the Parties through their duly authorized officers
or representatives, specifically referring to this Agreement.
9.11 SEVERABILITY. In the event that any provision of this Agreement
is held to be illegal, invalid or unenforceable in a final, unappealable order
or judgment (each such provision, an "invalid provision"), then the Parties
promptly shall negotiate in good faith a lawful, valid and enforceable provision
that is as similar to the invalid provision as may be possible without giving
effect to the benefits and burdens accruing to the Parties hereunder and the
remaining provisions of this Agreement shall remain binding on the Parties
hereto.
9.12 HEADINGS. The descriptive headings of the several articles and
sections of this Agreement are inserted for convenience only and do not
constitute a part of this Agreement.
9.13 NO WAIVER OF RIGHTS. No failure or delay on the part of any Party
in the exercise of any power or right hereunder shall operate as a waiver
thereof. No single or partial exercise of any right or power hereunder shall
operate as a waiver of such right or of any other right or power. The waiver by
any Party of a breach of any provision of this Agreement shall not operate or be
construed as a waiver of any other or subsequent breach hereunder.
9.14 REMEDIES CUMULATIVE; SPECIFIC PERFORMANCE. All rights and
remedies granted to the Parties under this Agreement are cumulative and in
addition to, and not in lieu of, any other rights or remedies otherwise
available to each of the Parties at law or in equity. The Parties agree that any
breach by any Party of, or failure of any Party to perform, any obligation under
this Agreement shall constitute immediate and irreparable damage to the other
Parties which cannot be fully and adequately compensated in money damages and
that, in the event of such breach or failure, each of the other Parties shall be
entitled to injunctive relief and specific performance in addition to any other
remedies to which it may be entitled at law or in equity.
9.15 CONFIDENTIALITY OF AGREEMENT. Each Party shall maintain the
confidentiality of this Agreement and all provisions of this Agreement and,
without the prior consent of the other Parties, no Party shall make any press
release or other public announcement of or otherwise disclose this Agreement or
any of its provisions to any Third Party (a) other than to its directors,
officers and employees and attorneys, accountants, investment bankers and other
professional advisers whose duties reasonably require familiarity with this
Agreement, provided that such Persons are bound to maintain the confidentiality
of this Agreement and (b) except for such disclosures as may be required by
applicable law or by regulation, in which case the disclosing Party shall
17
provide each of the other Parties with prompt advance notice of such disclosure
so that each of the other Parties has the opportunity if it so desires to seek a
protective order or other appropriate remedy.
9.16 USAGE. Wherever any provision of this Agreement uses the term
"including" (or "includes"), such term shall be deemed to mean "including
without limitation" and "including but not limited to" (or "includes without
limitation" and "includes but is not limited to") regardless of whether the
words "without limitation" or "but not limited to" actually follow the term
"including" (or "includes").
18
IN WITNESS WHEREOF, the Parties hereto have caused this Agreement to be
executed by their duly authorized officers as of the date first above written.
MAXIM PHARMACEUTICALS, INC.
By: /S/ XXXXX X. XXXXXXXXX
----------------------
Xxxxx X. Xxxxxxxxx
Chief Executive Officer
PROFESSIONAL PHARMACEUTICAL, INC.
By: /S/ XXXXX X. XXXX, D.D.S.
-------------------------
Xxxxx X. Xxxx, D.D.S.
Officer
INVENTORS
By: /S/ XXXXX X. XXXX, D.D.S.
-------------------------
Xxxxx X. Xxxx, D.D.S.
By: /S/ B. XXXXXX XXXXX
-------------------------
B. Xxxxxx Xxxxx, X.Xx.
19
Schedule 1.10
PPI Patent Rights
(a) U.S. Patent Numbers:
5,294,440
5,679,337
5,716,610
(b) Any patent applications, reissues, reexaminations, renewals,
extensions, divisionals, continuations and continuations-in-part
related to the U.S. Patents listed in (a) above.
(c) Any international patent or patent applications related to the U.S.
Patents listed above in (a) or encompassed by (b).
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Schedule 1.15
Trademark
Xxxx: Vira-Gel
Serial Number: 75-086061
International Class: 3 -- Cosmetics and Cleaning
Goods/Services: Cosmetic preparations for the treatment of lesions,
namely cold sores.
Xxxx: Vira-Gel
Reg. No.: 1,677,312
International Class: 5 -- Pharmaceuticals
Goods/Services: Pharmaceutical preparations for the treatment of cold
sores.
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