SUBLICENSE AGREEMENT
This revised SUBLICENSE AGREEMENT ("Sublicense" or "Agreement") is made and
entered into by BioDelivery Sciences International, Inc. and BioDelivery
Sciences, Inc. (jointly referred to herein as "BDS") and RetinaPharma, Inc.
f/k/a Warex Inc. ("RetinaPharma"), a Nevada corporation, as of this 10th day of
August, 2001.
WITNESSETH:
WHEREAS, BDS is developing and commercializing a cochleate delivery system
pursuant to patents, pending patent applications and proprietary and trade
secret information (herein the "BDS Technology"); and
WHEREAS, RetinaPharma is developing and commercializing technology
pursuant to a Sublicense Agreement dated January 4, 2001 with Tatton
Technologies, LLC ("Tatton") for the treatment of retinal disease and glaucoma
(the "Tatton Technology"); and
WHEREAS, BDS wishes to grant to RetinaPharma a Sublicense to the BDS
Technology for the delivery of antiapoptotic pharmaceutical and antiapoptotic
nutriceutical treatment for retinal disease and glaucoma.
NOW THEREFORE, for good and valuable consideration, in hand received,
including the mutual covenants and promises of the parties as set forth in this
Agreement, the parties mutually agree as follows:
1. SUBLICENSE. During the term of this Agreement, BDS hereby grants
RetinaPharma the exclusive worldwide right to commercialize, manufacture, sell,
market, apply, and utilize the BDS Technology for, but only for, the purposes
of delivery of antiapoptotic pharmaceutical and nutriceutical treatments
specifically utilizing the Tatton Technology under that certain Sublicense
between Tatton Technologies LLC and RetinaPharma dated January 4, 2001, as same
may be amended from time to time, for, and only for the purpose of treating
antiapoptotic pharmaceutical and nutriceutical treatment of retinal disease and
glaucoma in conjunction with the Tatton Technology (the "Designated Use").
During the term of this Agreement and for so long as RetinaPharma has not
violated the terms hereof, BDS shall not permit any other person or entity to
use or apply the BDS Technology, or any part thereof, for the Designated Use,
as defined herein, without the prior written permission of RetinaPharma which
may be withheld in the sole discretion of RetinaPharma. Other than the specific
restriction set forth in the preceding sentence, which is, by its terms,
specifically limited to the Designated Use as defined herein, BDS shall be
unrestricted in all uses and applications of its technology during and
following the term hereof. Further, BDS agrees to immediately notify
RetinaPharma of any use, infringement or claim threatened or asserted by any
third party relating to the BDS Technology used for the Designated Purpose and
will cooperate with RetinaPharma in the defense of such use, infringement or
claim as same relates to the Designated Use.
2. COMMERCIALIZATION. RetinaPharma agrees to exercise its reasonable
efforts to commercialize the BDS Technology for the Designated Use through
commercial sales, sublicenses, joint development agreements, and other
commercialization efforts as determined appropriate in the sole discretion and
judgment of RetinaPharma.
3. ROYALTY. RetinaPharma agrees to pay BDS a royalty equal to the
greater of the Base Royalty, as hereinafter defined or thirty percent (30%) of
all net pre-tax profits (the "Profits" as hereinafter defined) plus thirty
percent (30%) of all net proceeds, if any, from the sale, assignment or
sublicense of the BDS Technology for the Designated Use as permitted herein
earned by RetinaPharma from the sale of products incorporating the BDS
Technology. For purposes hereof, Profits, whether from the sale of products,
sublicenses, assignments or other disposition, shall be: (i) computed in a
consistent manner, in accordance with generally accepted accounting principles;
and (ii) make reasonable allocation of all costs and expenses including, but
not limited to development costs and overhead costs, among its various
activities (including those related to the BDS Technology and those which do not
relate to the BDS Technology but which relate to or support the development or
commercialization of RetinaPharma products which are reasonable anticipated to
utilize the BDS Technology) so that the allocation of such expenses and
royalties to the sale of products incorporating the BDS Technology are
reasonable in relationship to the overall business and activities being
conducted by RetinaPharma. Notwithstanding the foregoing, royalties due BDS
shall not be less than five percent (5%) of the gross proceeds realized by
RetinaPharma in connection with the marketing, sale, assignment or sublicense of
the BDS Technology (the "Gross Proceeds"). RetinaPharma shall pay all royalties
due hereunder, on or before the 10th day of each month. All royalty payments
shall be accompanied by a written report specifying Profits and Gross Proceeds.
BDS shall have the right to inspect the books and records of RetinaPharma at any
reasonable time during normal business hours.
4. SUBLICENSE AND ASSIGNMENT. RetinaPharma may sublicense or assign
the BDS Technology, or any part thereof, for the Designated Uses, in the
exercise of its discretion provided that the assignee or sub licensee is bound
by the terms of this Agreement which are applicable thereto and that the
appropriate royalty, as provided in Paragraph 3 above, is paid to BDS. Any
sublicense or assignment shall require the prior written approval of BDS, which
shall not be unreasonably withheld and which may provide reasonable protection
that any Royalties due BDS will be timely paid and imposing termination
provisions in the Sublicense or Assignment in the event of failure to timely pay
Royalties. In the event of a subsequent merger of any of the parties hereto,
this Agreement shall continue to be binding on and enforceable against the
successor to such party and to the other parties to this Agreement.
5. REPRESENTATIONS AND WARRANTIES OF BDS. BDS makes the following
representations and warranties to RetinaPharma, each of which shall survive the
closing of this Agreement:
a) BDS is the licensee of the BDS Technology, subject to no claims,
interests, or rights of any third party, which are inconsistent with or which
will be breached by virtue of this Agreement.
b) BDS has full right and authority to enter into this Agreement and
to perform its obligations hereunder.
c) BDS agrees to cooperate with RetinaPharma to defend the BDS
Technology for the Designated uses from infringement upon the rights thereof by
any third party.
d) The grant of this Sublicense does not require the prior approval
of any third party which has not been obtained and does not violate or breach
any agreement, license, or other obligations to which BDS is a party or to
which the BDS Technology is subject.
6. REPRESENTATIONS AND WARRANTIES OF RETINAPHARMA. RetinaPharma makes the
following representations and warranties to BDS, each of which shall survive
the closing:
a) RetinaPharma has full right and authority to enter into this
Agreement and to perform its obligations hereunder.
b) The execution of this Agreement by RetinaPharma will not breach any
agreement to which RetinaPharma is a party.
c) Entering into and carrying out of this Agreement by RetinaPharma
does not require the consent or approval of any party, which has not given such
consent or approval.
d) RetinaPharma will exercise reasonable efforts and good faith to
commercialize the BDS Technology for Designated Uses.
7. NON-FRUSTRATION. Neither party to this Agreement shall commit any act
or take any action that would frustrate or hamper the rights of the other party
under this Agreement. Each party shall act in good faith and engage in fair
dealing when taking any action under or related to this Agreement.
8. TERM. This Agreement shall continue in effect for so long as
RetinaPharma is using the BDS Technology for the Designated Uses. In the event
of a
material breach of this Agreement, the non-breaching party may terminate this
Agreement providing the material default is not cured by the breaching party
within 30 days written notice specifying the event of default and the intention
to terminate. RetinaPharma may terminate this Agreement upon 30 days written
notice provided that it is current in the payment of all Royalties pursuant to
paragraph 3 above.
9. ARBITRATION. Any dispute arising under this Agreement shall be
resolved solely by binding arbitration before the American Arbitration
Association located in St. Louis, Missouri. The finding of the arbitrators shall
be final and binding and shall constitute the sole and exclusive means for
resolving any dispute under this Agreement. The rules of the American
Arbitration Association shall be binding upon said arbitration. The
determination of arbitrators may be reduced to a final judgment in any court of
competent jurisdiction.
10. MISCELLANEOUS.
(i) This Agreement constitutes the entire understanding of the
parties and shall not be amended or otherwise altered, except in writing, and
executed by the parties hereto. This Agreement supersedes and replaces any and
all prior oral and written agreements regarding the subject matter hereof.
(ii) RetinaPharma and BDS each acknowledges that certain of their
shareholders including, but not limited to the Xxxxxxx Capital Group and its
affiliates, are stockholders and/or members of management of BDS and
RetinaPharma (the "Overlapping and Conflicted Interest"). Such Overlapping and
Conflicted Interest has been the subject of full disclosure and BDS and
RetinaPharma have each had the opportunity to ask questions and obtain further
information regarding the Overlapping and Conflicted Interest. RetinaPharma and
BDS, by virtue of the execution of this Agreement, expressly waived the
Overlapping and Conflicted Interest and any conflicts of interest, which may
result therefrom. By execution of this Agreement, BDS and RetinaPharma each
waive said Overlapping and Conflicted Interest and the resulting conflicts of
interest as a defect or defense with regard to this Agreement or the subject
matter hereof.
(iii) This Agreement shall not be construed more stringently against
either party, regardless of which party may have served as the draftsman.
(iv) This Agreement and the resolution of any dispute shall be
governed by the laws of the State of Missouri.
(v) This Agreement has been prepared by Xxxxxx X. Xxxxxx, Xxxxxx &
Xxxxx, PA, which has, in the past, and may, in the future, provide advice or
consultation to BDS, RetinaPharma and Xxxxxxx Capital Group and their
affiliates ("Disclosed Relationships"). Further, Xx. Xxxxxx has disclosed that
entities or Trusts affiliated with members of his family are stockholders of
BDS and RetinaPharma.
Xx. Xxxxxx has advised BDS and RetinaPharma and Tatton that he
represented and gave advise to no party to this Agreement,
including but not limited to, BDS, RetinaPharma, Tatton nor
Xxxxxxx Capital Group in the preparation of this Agreement and
that each party was advised of their right to consult with
independent legal counsel. BDS and RetinaPharma, by execution of
this Agreement, each expressly waive and release Xx. Xxxxxx and
Xxxxxx & Xxxxx, PA from any and all conflicts of interest related
to or resulting from the Disclosed Relationships or otherwise
related to this Agreement or the subject matter hereof.
IN WITNESS WHEREOF, the parties have set their hand and seal on the day and
year first above written.
BioDelivery Sciences International,Inc.
By: /s/ XXXXXXX XXXXXXX
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Xxxxxxx Xxxxxxx
President
BioDelivery Sciences International, Inc.
By: /s/ XXXXXX X. XXXXXXXX SrEx VP.
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Xxxxxx X. Xxxxxxxx,
Senior Executive President
RetinaPharma, Inc.
By: /s/ XXXXX X. X'XXXXXXX
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Xxxxx X. X'Xxxxxxx, Xx., MD
Chief Executive Officer
