Exhibit 10.4
------------
LICENSE AGREEMENT
THIS AGREEMENT, made and entered into this 20th day of October, 1991 (the
Effective Date) and amended as of the 10th day of August, 1993 by and between
the University of Kentucky Research Foundation, a corporation duly organized and
existing under the laws of the Commonwealth of Kentucky and having its principal
office at Lexington, Kentucky, U.S.A. (hereinafter referred to as UKRF), and
Control Delivery Systems, Inc., a corporation duly organized under the laws of
Delaware and having its principal office at Hamden, Connecticut, USA, successor
by merger to Control Delivery Systems, Inc., a Kentucky corporation (hereinafter
referred to as LICENSEE).
WITNESSETH
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WHEREAS, UKRF is the owner of certain "Patent Rights" (as later defined
herein) relating to sustained release drug delivery devices, and has the right
to grant licenses under said Patent Rights; and
WHEREAS, UKRF desires to have the Patent Rights utilized in the public
interest and is willing to grant a 1icense thereunder; and
WHEREAS, LICENSEE. has represented to UKRF, to induce UKRF to enter into
this Agreement, that it shall commit itself to a program of exploiting the
Patent Rights to the end that public utilization shall result therefrom; and
WHEREAS, LICENSEE desires to obtain a license under the Patent Rights upon
the terms and conditions hereinafter set forth.
NOW, THEREFORE, in consideration of the premises and the mutual covenants
contained herein, the parties hereto agree as follows:
Article 1 - Definitions
-------------------------
For the purposes of this Agreement, the following words and phrases shall
have the following meanings:
1.1 "Affiliate" shall mean any corporation, or other entity controlling,
controlled by or under common control with an entity. For such purpose
"control" shall mean the ownership, directly or indirectly, of 50% or more
of the voting stock of a corporate entity, or of 50% or more of the
beneficial interest of an entity other than a corporation.
1.2 "LICENSEE" shall mean control Deliver Systems, Inc., a Delaware
corporation, and any subsidiary of Control Delivery Systems Inc.
1.3 "Subsidiary" shall mean any corporation, company or other entity more than
fifty percent (50%) of whose voting stock is owned or controlled directly
or indirectly by Control Delivery Systems, Inc.
1.4 "Patent Rights" shall mean United States Patent Application Serial Number
07/658,695 and any corresponding Foreign Patent Applications and any
continuations, continuations-in-part, divisions, reissues or extensions of
the foregoing and any patents issuing from any of the foregoing.
1.5 "Licensed Product(s)" shall mean a sustained release drug delivery system
the manufacture, use or sale of which would, in the absence of a license,
infringe a claim contained in the Patent Rights.
1.6 "Licensed Process(es)" shall mean the process or processes of using a
Licensed Product which use would, in the absence of a license, infringe a
claim contained in the Patent Rights.
Article 2 - Grant
-----------------
2.1 UKRF hereby grants to LICENSEE an exclusive worldwide right and license to
make, have made, use, lease and sell the Licensed Product(s) or Licensed
Process(es) under the Patent Rights to the full end of the tern or terms
for which the Patent Rights are granted unless sooner terminated as
hereinafter provided.
2.2 In order to establish a period of exclusivity for LICENSEE, UKRF hereby
agrees that it shall not grant any other license to make, have made, use,
lease and sell the Licensed Product(s) and/or Licensed Process(es) during
the period of time commencing with the Effective Date of this Agreement and
terminating with the full end of the tern or terms for which the Patent
Rights are issued, unless sooner terminated as hereinafter provided.
2.3 LICENSEE shall have the right to sublicense worldwide any of the rights,
privileges and license granted hereunder.
2
[*]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETED ASTERISKS HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
2.4 LICENSEE agrees that any sublicenses granted by it shall be subject to the
terms and conditions of this Agreement. LICENSEE further agrees to attach
copies of this Agreement to all sublicense agreements.
2.5 LICENSEE agrees to forward to UKRF a copy of any and all fully executed
sublicense agreements, and further agrees to forward to UKRF annually a
copy of such reports received by LICENSEE from its sublicensees during the
preceding twelve (12) month period under the sublicenses as shall be
pertinent to a royalty accounting under said sublicense agreements.
Article 3 - Due Diligence
-------------------------
LICENSEE shall use its best efforts, to the extent commercially reasonable,
to exploit commercially the Licensed Product(s) and/or Licensed Process(es).
LICENSEE shall not be deemed to have violated the requirement of this Article 3
by sublicensing or assigning this License or any rights thereunder to one or
more sublicensees or assignees to exploit the Patent Rights.
Article 4 - Royalties
---------------------
4.1 For the rights, privileges and license granted hereunder, LICENSEE shall
pay to UKRF in the manner hereinafter provided to the end of the term of
the Patent Rights or until this Agreement shall be terminated as
hereinafter provided:
(a) A license issue fee of $5,000.00 Dollars, which said license issue fee
shall be deemed earned and due immediately upon the execution of this
Agreement, and receipt of which is hereby acknowledged.
(b) A royalty in an amount of [*] of the Net Sales Price of
the Licensed Product(s) or Licensed Process(es) used, leased or sold
by or for LICENSEE or its sublicensees in the United States.
(c) A royalty in an amount of [*] of the Net Sales Price of
the Licensed Product(s) or Licensed Process(es) used, leased or sold
by or for LICENSEE or its sublicensees outside of the United States.
4.2 As used herein, the phrase "Net Sales Price" shall mean the amount invoiced
for sale, lease and other disposition of the Licensed Product(s) or
Licensed Process(es) by Licensee or its sublicensees (but not amounts
invoiced to Affiliates of LICENSEE or its sublicensees) less the sum of the
following (to the extent not already reflected in the amount invoiced):
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(a) Discounts, uncollectible debt and wholesale chargebacks allowed and
taken in amounts customary in the trade;
(b) Import, export, excise, sales or use taxes, tariffs or duties directly
imposed and with reference to particular sales;
(c) Outbound transportation prepaid or allowed;
(d) Amounts allowed or credited on returns or retroactive price
reductions; and
(e) Royalties; fees or cost of drug acquisition paid to holders of
licenses or patents for drugs used in connection with the Licensed
Product or Licensed Process(es).
No deductions shall be made for commissions paid to individuals, whether
they be with independent sales agencies or regularly employed by LICENSEE
or its sublicensees and on its or their payroll, or for cost of
collections. Licensed Product(s) or Licensed Process(es) shall be
considered "sold" only when billed out or invoiced to a third party and not
to Affiliates of LICENSEE or its sublicensees.
4.3 No multiple royalties shall be payable because the Licensed Product(s) or
Licensed Process(es), its manufacture, lease or sale are or shall be
covered by more than one patent application or patent licensed under this
Agreement, and no additional royalty shall be payable as to a Licensed
Process to the extent such process is performed using units of Licensed
Product for which a royalty is paid.
4.4 Royalty payments shall be paid in United States dollars in Lexington,
Kentucky, or at such other place as UKRF may reasonably designate
consistent with the laws and regulations controlling in any foreign
country. If the law or regulation of any country shall at any time operate
to prohibit the transfer of funds therefrom to UKRF, LICENSEE shall notify
UKRF to such effect and shall have the right to pay or cause to be paid
royalties hereunder on account of its sales and the sales of its Affiliates
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and sublicensees in such country by depositing local currency, if LICENSEE
or its sublicensee were paid in local currency, to the account of UKRF in
an interest-bearing account at the prevailing commercial interest rate in a
bank in such country (which account and bank are reasonably acceptable to
UKRF). LICENSEE shall thereafter cooperate with UKRF in UKRF's efforts to
obtain the lawful release of said funds to UKRF, but shall have no further
responsibility therefor.
Any withholding taxes which LICENSEE or any sublicensee shall be required
by law to withhold on remittance of the royalty payments shall be deducted
from such royalties paid to UKRF. LICENSEE shall furnish UKRF proof of
payment of such taxes. If any currency conversion shall be required in
connection with the payment of royalties hereunder, such conversion shall
be made by using the average monthly conversion rate for the currency
computed based on the conversion rates for such currency published in the
Wall Street Journal for the last month of the accounting period to which
such royalty payments relate.
4.5 If at any tine during the term of this Agreement, one or more competitors
introduce in any country a product that competes with a Licensed Product
and uses a control delivery system substantially similar to that used in
the Licensed Products, seen the parties shall promptly negotiate an
equitable adjustment to the royalty rate on Net Sales of such Licensed
Product in that country. In determining the appropriate royalty adjustment
under this Section 4.5, the parties shall take into account the extent to
which royalties have been adjusted as to the same Licensed Product in the
same country pursuant to the provisions of Section 8.9.
Article 5 - Records and Reports
-------------------------------
5.1 LICENSEE shall keep full, true and accurate books of account containing all
particulars that may be necessary for the purpose of showing the amount
payable to UKRF by way of royalty as aforesaid. Said books of account shall
be kept at LICENSEE's principal place of business or the principal place of
business of the appropriate Division of LICENSEE to which this Agreement
relates. Said books and the supporting date shall be open upon reasonable
advance notice, for five years following the end of the calendar year to
which they pertain, to the inspection of the UKRF Internal Audit Division
and/or an independent certified public accountant retained by UKRF and/or a
certified public accountant employed by UKRF, for the purpose of verifying
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LICENSEE's royalty statement or compliance in other respects with this
Agreement, provided that such audits shall not be conducted more frequently
than annually and shall be conducted in a manner that does not unreasonably
interfere with LICENSEE's business. Those auditing shall agree to hold the
information confidential consistent with applicable law.
5.2 During the terms of this Agreement and for so long thereafter as is
required to report royalties payable hereunder, LICENSEE or its
sublicensees shall deliver to UKRF within 60 days after March 31, June 30,
September 30, and December 31 of each year a report, showing total xxxxxxxx
for each Licensed Product, deductions from Net Sales, total royalties due
and any credits permissible pursuant to this Agreement. Simultaneously with
the delivery of each such report, LICENSEE shall pay or cause to be paid to
UKRF the royalty payments due under this Agreement for the period covered
by such report. If no royalties are due, it shall be so reported.
Article 6 - Patent Rights and Prosecution
-----------------------------------------
6.1 UKRF shall maintain during the term of this Agreement the United States
Patent Rights as set forth herein. The prosecution and maintenance of all
United States Patent Rights and Applications shall be the primary
responsibility of UKRF; provided, however, LICENSEE shall have reasonable
opportunities to advise UKRF and shall cooperate with UKRF in such
prosecution and/or maintenance, and provided further that LICENSEE, or any
sublicensee may, but shall not be obligated to, prosecute and maintain the
United States Patent Rights and applications with the consent of UKRF,
provided that the costs of any such prosecution and maintenance may be
deducted by LICENSEE from royalties due hereunder.
6.2 Payment of all fees and costs relating to the prosecution and maintenance
of the existing United States Patent Rights set forth herein or additional
domestic filings under the Patent Rights shall be responsibility of UKRF.
6.3 LICENSEE shall have the right, at LICENSEE's expense, to select countries
for the filing, soliciting and prosecution of foreign patent applications
relating to the Patent Rights. Such foreign patent applications shall be
filed in the name of UKRF and patent ownership shall remain with UKRF.
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6.4 UKRF shall at all times during the life of Patent Rights provide LICENSEE
in a timely manner with copies of all material notices and correspondence
from governmental departments, agencies and courts pertaining to matters
covered in such patents or patent applications, including but not limited
to notices of tax and maintenance payments due.
6.5 In the event UKRF shall at any time while this Agreement is in effect be
compelled by applicable law to issue licenses to other licensees for the
Licensed Products under the Patent Rights, UKRF shall inform LICENSEE of
the order compelling any such licenses and shall renegotiate the terms of
this Agreement covering royalties and other payments required thereunder
only with respect to the country or countries wherein such compulsory
licenses have been ordered so that the renegotiated royalty and payment
terms shall be no less favorable to LICENSEE than those granted to any
third party under any such compulsory license.
Article 7 - Termination
-----------------------
7.1 If LICENSEE shall become bankrupt or insolvent, or shall file a petition in
bankruptcy, or if the business of LICENSEE shall be placed in the hands of
a receiver, assignee or trustee for the benefit of creditors, whether by
the voluntary act of LICENSEE or otherwise, this Agreement shall
automatically terminate.
7.2 Should LICENSEE fail in its payment to UKRF of royalties due in accordance
with the terms of this Agreement, UKRF shall have the right to serve notice
upon LICENSEE by certified mail at the address designated in Article 13
hereof, of its intention to terminate this Agreement within thirty (30)
days after receipt of said notice of termination unless LICENSEE shall pay
to UKRF, within the thirty (30) day period, if LICENSEE shall not have paid
all such royalties due and payable, the rights, privileges and license
granted hereunder shall thereupon immediately terminate.
7.3 Upon any material breach of default of this Agreement by LICENSEE, other
than those occurrences set out in Paragraphs 7.1 and 7.2 hereinabove, which
shall always take precedence in that order over any material breach or
default referred to in this Paragraph 7.3, UKRF shall have the right to
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terminate this Agreement and the rights, privileges and license granted
hereunder by ninety (90) days' notice by certified mail to LICENSEE. Such
termination shall become effective unless LICENSEE shall have cured any
such breach or default prior to the expiration of the ninety (90) day
period from receipt of UKRF's notice of termination.
7.4 LICENSEE shall have the right to terminate this Agreement at any time on
three (3) months' notice by certified mail to UKRF.
7.5 UKRF shall also deliver any notices hereunder to any sublicensee to whom
LICENSEE notifies UKRF to deliver such notices.
7.6 Upon termination of this Agreement for any reason, nothing herein shall be
construed to release either party from any obligation that matured prior to
the effective date of such termination. LICENSEE and/or any sublicensee
thereof may, however, after the effective date of such termination, sell
all Licensed Products, and complete Licensed Products in the process of
manufacture at the time of such termination and sell the same, provided
that LICENSEE shall pay to UKRF the royalties thereon and shall submit the
reports on the sales of Licensed Products as required by Article 5 hereof.
Article 8 - Infringement
------------------------
8.1 LICENSEE and UKRF shall promptly inform the other in writing of any alleged
infringement of which it shall have notice by a third party of any patents
within the Patent Rights and provide such other with any available
information relating to such alleged infringement.
8.2 During the term of this Agreement, UKRF shall have the right, but shall not
be obligated, to prosecute at its own expense any such infringement of the
Patent Rights and, in the furtherance of such right, LICENSEE hereby agrees
that UKRF may join LICENSEE as a party plaintiff in any such suit, without
expense to LICENSEE. The total cost of any such infringement action
commenced or defended solely by UKRF shall be borne by UKRF, and UKRF shall
keep any recovery or damages for past infringement derived therefrom.
8.3 If within l20 days after having been notified of any alleged infringement,
UKRF shall have been unsuccessful in persuading the alleged infringer to
desist from the infringing activities and shall not have brought and shall
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not be diligently prosecuting an infringement action, or if UKRF shall
notify LICENSEE at any time prior thereto of its intention not to bring
suit against the alleged infringer, then, and in those events only,
LICENSEE shall have the right, but shall not be obligated, to prosecute at
its own expense such infringement of the Patent Rights, and LICENSEE may,
for such purposes, use the name of UKRF as party plaintiff.
8.4 In the event that LICENSEE shall undertake the enforcement and/or defense
of the Patent Rights by litigation, LICENSEE may withhold up to fifty
percent (50%) of the royalties otherwise due UKRF hereunder and apply the
same toward reimbursement of its expenses, including reasonable attorneys'
fees, in connection therewith. Any recovery of damages by LICENSEE for any
such suit shall be applied first in satisfaction of any un-reimbursed
expenses and legal fees of LICENSEE relating to the suit, and next toward
reimbursement of UKRF for any royalties past due or withheld and applied
pursuant to this Article 8. The balance remaining from any such recovery
shall be retained by LICENSEE and shall constitute Net Sales hereunder.
8.5 In the event that a declaratory judgment action alleging invalidity or non-
infringement of any of the Patent Rights shall be brought against LICENSEE,
UKRF, at its option, shall have the right, within thirty (30) days after
commencement of such action, to intervene and take over the sole defense of
the action at its own expense.
8.6 In any infringement suit either party may institute to enforce the Patent
Rights pursuant to this Agreement, the other party hereto shall, at the
request and expense of the party initiating such suit, cooperate in all
respects and, to the extent reasonable, have its employees testify when
requested and make available relevant records, papers, information,
samples, specimens, and the like, and the party maintaining the litigation
shall reimburse the other party against any order for costs that may be
made against such other party in such proceedings. Should UKRF or Licensee
commence a suit under the foregoing provisions and thereafter elect to
abandon the same, the abandoning party shall give timely, written notice to
the other party, which, at its option, may chose to continue the
prosecution of such suit, with the expenses and recovery being allocated as
provided in Section 8.2, 8.3 or 8.4 hereof.
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[*]=CERTAIN CONFIDENTIAL INFORMATION CONTAINED IN THIS DOCUMENT, MARKED BY
BRACKETED ASTERISKS HAS BEEN OMITTED AND FILED SEPARATELY WITH THE SECURITIES
AND EXCHANGE COMMISSION PURSUANT TO RULE 406 OF THE SECURITIES ACT OF 1933, AS
AMENDED.
8.7 LICENSEE, during the exclusive period of this Agreement, shall have the
sole right in accordance with the terms and conditions herein to sublicense
any alleged infringer under the Patent Rights for future infringements.
8.8 In any patent litigation pursuant to this Article 8, the party maintaining
the litigation shall consult with the other party on material aspects of
the litigation and shall select counsel to which the other party has no
reasonable objection. No settlement, consent judgment or other voluntary
final disposition of any such litigation may be entered into without the
consent of the other party, which consent shall not unreasonably be
withheld or delayed.
8.9 If, during the term of this Agreement, any third party (other than an
Affiliate of a party) claims that LICENSEE'S making, using or selling of
Licensed Products hereunder infringes on a third-party patent based upon
claims that dominate claims in the Licensed Patent Rights, within 120 days
after notice by LICENSEE, UKRF shall either (i) procure for LICENSEE the
rights to exercise all rights licensed under this Agreement without any
additional payment therefor by LICENSEE, or (ii) advise LICENSEE that it
elects not to procure such rights itself. If UKRF does not procure such
rights within such 120-day period after notice of such claim by LICENSEE,
LICENSEE shall have the right, but not the obligation, to procure such
rights itself and offset one-half of any royalty payments hereunder by the
amount paid by LICENSEE for such third-party rights, provided that the
offset under this provision shall not be used to reduce the royalty payment
in any period by more than [*] of Net Sales, and any amount remaining to be
offset from any period shall be carried forward until offset against
royalties for future periods.
Article 9 - Product Liability
-----------------------------
9.1 LICENSEE shall at all times during the term of this Agreement and
thereafter, indemnify, defend anti hold UKRF and/or the University of
Kentucky, its trustees, officers, employees and Affiliates, harmless
against all claims and expenses, including legal expenses and reasonable
attorneys' fees, arising out of the death of or injury to any person or
persons or out of any damage to property resulting from the production,
manufacture, sale, use, consumption or advertisement of the Licensed
Product(s) and/or Licensed Process(es) or arising from any obligation of
LICENSEE hereunder, except to the extent such loss results from the
negligence or nonperformance by UKRF of its contractual obligations
hereunder.
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9.2 If LICENSEE produces, manufactures or sells any Licensed Product (s) or
Licensed Process(es), it shall provide UKRF upon request evidence of
reasonable product liability insurance covering liabilities from the
manufacture, sale and use of the Licensed Product(s) or Licensed
Process(es).
9.3 If LICENSEE sublicenses any of the rights, privileges and licenses granted
hereunder, LICENSEE shall require the sublicensee to provide evidence of
such product liability insurance, upon request.
Article 10 - Assignment
-----------------------
LICENSEE bay assign or otherwise transfer this Agreement and the license
granted hereby and the rights acquired by it hereunder. LICENSEE shall give
UKRF thirty (30) days prior notice of such assignment and transfer and if UKRF
raises no reasonable objection to such assignment or transfer, in writing within
thirty (30) days after the giving of such notice and stating the reasons for
such objection, then UKRF shall be deemed to have approved such assignment or
transfer; provided, however, UKRF shall not be deemed to have approved such
assignment and transfer unless such assignee or transferee shall have agreed in
writing to be bound by the terms and conditions of this Agreement. Upon such
assignment or transfer and agreement by such assignee or transferee, the term
LICENSEE as used herein shall mean such assignee or transferee. If LICENSEE
shall sell or otherwise assign the license granted hereby and the transferee
shall not have agreed in writing to be bound by the terms and conditions of this
Agreement, or new terms and conditions shall not have been agreed upon within
sixty (60) days of such sale or transfer, UKRF shall have the right to terminate
this Agreement.
Article 11 - No Use of Names
----------------------------
LICENSEE shall not use the name of the University of Kentucky nor any
adaptation thereof in any advertising, promotional or sales literature without
prior written consent obtained from UKRF in each case except that LICENSEE may
state that it is licensed by UKRF under one or more of the patents and/or
applications comprising the Patent Rights.
Article 12 - Export Controls
----------------------------
It is understood that UKRF is subject to United States lairs and
regulations controlling the export of technical data, computer software,
laboratory prototypes and other commodities (including the Arms Export Control
11
Act, as amended, and the Export Administration Act of 1979), and that its
obligations hereunder are contingent on compliance with applicable United States
export laws and regulations. The transfer of certain technical data and
commodities may require a license from the cognizant agency of the United States
Government and/or written assurances by LICENSEE that LICENSEE shall not export
data or commodities to certain foreign countries without prior approval of such
agency. UKRF neither represents that a license shall be required nor that, if
required, shall be issued.
Article 13 - Payments, Notices and Other Communications
-------------------------------------------------------
Any payment, notice or other communication pursuant to this Agreement shall
be sufficiently made or given on the date of mailing if sent to such party by
certified first class mail, postage prepaid, addressed to it at its address
below or as it shall designate by written notice given to the other party:
In the case of UKRF: University of Kentucky
Research Foundation
Room 000, Xxxxxxxxxxxxxx Xxxxxxxx
Xxxxxxxxx, Xxxxxxxx 00000-0000
In the case of LICENSEE: Control Delivery Systems, Inc.
0000 Xxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxxx 00000
Article 14 - Miscellaneous Provisions
-------------------------------------
14.1 This Agreement shall be construed, governed, interpreted and applied in
accordance with the laws of the Commonwealth of Kentucky, U.S.A., except
that questions affecting the construction and effect any patent shall be
determined by the laws of the country in which the patent was granted.
14.2 The parties hereto acknowledge that this Agreement sets forth the entire
Agreement and understanding of the parties hereto as to the subject matter
hereof, and shall not be subject to any change or modification except by
the execution of a written instrument subscribed to by the parties hereto.
14.3 The provisions of this Agreement are severable, and in the event that any
provision of this Agreement shall be determined to be invalid or
unenforceable under any controlling body of law, such invalidity or
unenforceability shall not in any way affect the validity or
enforceability of the remaining provisions hereof.
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14.4 LICENSEE agrees to xxxx the Licensed Products sold in the United States
with all applicable United States patent numbers. All Licensed Products
shipped to or sold in other countries shall be marked in such a manner as
to conform with the patent laws and practice of the country of manufacture
or sale.
14.5 The failure of either party to assert a right hereunder or to insist upon
compliance with any term or condition of this Agreement shall not
constitute a waiver of that right or excuse a similar subsequent failure
to perform any such term or condition by the other party.
IN WITNESS WHEREOF, the parties hereto have hereunto set their hands and
seals and duly executed this License Agreement the day and year first set forth
above.
CONTROL DELIVERY SYSTEMS, INC. University of Kentucky
Research Foundation
By: /s/ Xxxxxxx X. Xxxxxxxx By: /s/ X.X. Xxxxx
----------------------- --------------
Title: President Title: Vice President for Research
--------- ----------------------------
and Graduate Studies and
Executive Director of UKRF
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Chiron Vision Corporation Control Delivery Systems, Inc.
0000 Xxxxxxxx Xxxx 0000 Xxxxxxx Xxxxxx
Xxxxxx, Xxxxxxxxxx 00000 Xxxxxx, Xxxxxxxxxxx 00000
April 13, 1995
University of Kentucky Research Foundation
Room 000, Xxxxxxxxxxxxxx Xxxxxxxx
Xxxxxxxxx, Xxxxxxxx 00000-0000
Re: License Agreement dated October 20, 1991, as amended August 10, 1993 by
and between the University of Kentucky Research Foundation and Control
Delivery Systems, Inc.
Gentlemen:
Chiron Vision Corporation ("Chiron") is a party to a License and Development
Agreement with Control Delivery Systems, Inc. ("CDS") relating to intravitrial
implants (the "CDS License Agreement") under which Chiron has certain license
rights arising from the License Agreement between CDS and the University of
Kentucky Research Foundation ("UKRF") (the "UKRF License Agreement"). In order
to facilitate Chiron's consummation of arrangements to commercialize the
intravitrial implant, it is necessary that various rights under the UKRF License
Agreement be amended.
In addition and in light of the foregoing, we ask that you agree with Chiron
as follows:
1. In the event that UKRF knows of any basis to restrict or terminate the
UKRF License Agreement, it shall give immediate notice thereof to Chiron and
Chiron shall have reasonable opportunity to cure any breach by CDS of the UKRF
License Agreement.
2. In the event that the UKRF Agreement License is to be terminated, whether
by action of UKRF or CDS, UKRF shall promptly notify Chiron and, if Chiron so
elects, UKRF shall enter into a new agreement directly with Chiron granting to
Chiron all the rights granted to CDS under the UKRF License Agreement.
3. Notwithstanding Article 8 of the UKRF Agreement, in the event of any
alleged infringement of a Licensed Product of Chiron, Chiron shall have the
first right to prosecute such infringement, as set forth in the attached
Amendment No. 2 to the CDS License Agreement, and in the event of a declaratory
judgment action alleging invalidity or non-infringement involving any Licensed
Product of Chiron, Chiron shall have the first right to defend such action.
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April 13, 1995
Page 2
In order to evidence your agreement with paragraphs 1 - 3 above, please
execute the counterpart of this letter and return it to us.
Very truly yours,
CHIRON VISION CORPORATION
Xxxxxxx Xxxx, President
CONTROL DELIVERY SYSTEMS, INC.
By: Xxxx Xxxxxx
-------------------------
Its: President
-------------------------
Agreed to this 13th day of April 1995
UNIVERSITY OF KENTUCKY RESEARCH FOUNDATION
By: /s/ Illegible
------------------------------
Its: Vice President for Research
------------------------------
and Graduate Studies
------------------------------
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