EXHIBIT 10.13
LICENSE AGREEMENT
THIS AGREEMENT is made as of the 6th day of May, 2003 by and between
MOLICHEM R&D, INC., a corporation organized and existing under the laws of the
State of North Carolina, having a place of business at 000 Xxxxxx Xxxxx, Xxxxx
000, Xxxxxx Xxxx, XX 00000 (hereinafter referred to as "LICENSOR"), and MOLICHEM
MEDICINES, INC., a corporation organized and existing under the laws of the
State of Delaware, having a place of business at 000 Xxxxxx Xxxxx, Xxxxx 000,
Xxxxxx Xxxx, XX 00000 (hereinafter referred to as "LICENSEE").
W I T N E S S E T H:
WHEREAS, LICENSOR is the owner of and has the right to grant a
license with respect to certain TECHNOLOGY (as hereinafter defined); and
WHEREAS, LICENSOR is willing to grant to LICENSEE a non-exclusive license to
develop, market, and sell products incorporating the TECHNOLOGY pursuant to the
terms and conditions set forth herein;
NOW, THEREFORE, in consideration of the mutual promises and
covenants set forth herein, the parties hereby agree as follows:
1. DEFINITIONS
(a) "FIELD OF USE" shall mean use of the TECHNOLOGY in the treatment of
septic shock in non-human mammals.
(b) "TECHNOLOGY" shall mean the iron containing compounds Moli56A
(commonly known as DTPA iron (III)) and Moli56B (commonly known as Ferrioxamine
B) as described in patent 6,465,511 B1, issued October 15, 2002.
(c) "TERRITORY" shall mean the United States.
2. GRANT OF LICENSE
(a) During the term of this Agreement, and subject to the provisions
herein, LICENSOR hereby grants to LICENSEE a non-exclusive License to develop,
market, and sell products
incorporating the TECHNOLOGY in the TERRITORY in the FIELD OF USE. LICENSEE
acknowledges that this license does not extend to any human subject use of the
TECHNOLOGY.
(b) This Agreement is personal to the LICENSEE and shall not be assigned
by LICENSEE. LICENSEE shall have no right to grant any sublicenses.
3. OWNERSHIP AND CONFIDENTIALITY OF TECHNOLOGY
(a) All of the TECHNOLOGY which LICENSOR discloses to LICENSEE shall be
and remain the property of LICENSOR. All improvements and developments thereof
made by LICENSEE shall be the property of LICENSOR.
(B) LICENSEE'S only right in the TECHNOLOGY shall be to use it pursuant to
the terms of this Agreement. LICENSEE shall keep all of the TECHNOLOGY
confidential and secret, and shall not reveal all or any part of the TECHNOLOGY
to any person other than to the officers, directors, consultants or employees of
LICENSEE who need to know about the TECHNOLOGY and are bound by confidentiality
agreements satisfactory in form and content to the LICENSOR. Further, LICENSEE
agrees to notify LICENSOR prior to any such disclosure of the TECHNOLOGY and
provide LICENSOR the opportunity to review any such confidentiality agreement
and comment on the compliance with this Agreement of any such disclosure. This
Paragraph 3(b) shall specifically survive termination of this Agreement.
(C) LICENSEE, at any time both during and after the term of this Agreement,
shall execute all necessary documents to affect the intent of this Section 3.
This Paragraph 3(c) shall specifically survive termination of this Agreement.
However, the obligations under this Paragraph shall not apply to such TECHNOLOGY
which is now or may hereafter come into the public domain without fault on the
part of LICENSEE or its employees, directors or officers.
(D) LICENSEE, upon termination of this License, shall promptly give to
LICENSOR all material pertaining to the TECHNOLOGY, including copies,
translations and any media in which the
TECHNOLOGY is contained, and shall cease all use and sale of the TECHNOLOGY or
products incorporating the TECHNOLOGY. (E) LICENSEE acknowledges that LICENSOR
has not given or made any representation or warranties, express or implied, with
respect to the TECHNOLOGY, and the TECHNOLOGY is being delivered "as is" without
any warranty as to merchantability or fitness for a particular purpose.
4. LICENSING FEE, ROYALTIES, CONTINUATION PAYMENT AND MILESTONE PAYMENT
In consideration of the rights granted to LICENSEE hereunder,
LICENSEE shall pay to LICENSOR (a) a licensing fee of $1.00 per year (the
"Licensing Fees"), payable each year on the anniversary of the date of this
Agreement; (b) an annual royalty equal to 6% of net sales of LICENSEE related to
the TECHNOLOGY and attributable to this Agreement (the "Royalties"), payable
each year on the anniversary of the date of this Agreement; (c) a one time
continuation payment of $500,000 (the "Continuation Payment") payable on the
first anniversary of the date of this Agreement; and (d) a one time milestone
payment of $2,000,000 (the "Milestone Payment") within sixty (60) days of a
product incorporating the TECHNOLOGY being approved in the FIELD OF USE but in
no event shall such payment be due prior to the first anniversary of the date of
this Agreement.
5. TERM AND TERMINATION
(a) This Agreement and the License granted hereunder shall commence on the
date set forth above and shall remain in effect for a period of ten (10) years,
unless sooner terminated as provided herein.
(B) LICENSOR may, at its option, terminate this Agreement if there shall
occur a breach by LICENSEE of any of the terms and conditions of the Agreement,
including but not limited to the following situations, and LICENSEE does not
cure the breach within thirty (30) days after receiving written notice thereof:
(I) LICENSEE takes any action that could publicly damage or
reflect adversely on LICENSOR (e.g., an officer or employee of
LICENSEE is arrested for criminal activity); or
(ii) LICENSEE fails to make payment of Licensing Fees, Royalties,
the Continuation Payment or the Milestone Payment when due.
If LICENSEE cures such defect within the thirty (30) day cure period and
diligently pursues such cure, the Agreement shall remain in full force and
effect.
(C) LICENSEE may, at its option, terminate this Agreement if there shall
occur a breach by LICENSOR of any of the terms and conditions of this Agreement,
and LICENSOR does not take reasonable steps to cure the breach within thirty
(30) days after receiving written notice thereof. If LICENSOR takes reasonable
steps to cure such defect within the thirty (30) day cure period and diligently
pursues such cure, the Agreement shall remain in full force and effect.
(D) LICENSOR may, at its option, immediately terminate this Agreement upon
the occurrence of any of the following events:
(i) upon information and belief that LICENSEE has become
insolvent;
(ii) the placement of the assets of LICENSEE in the hands of a
receiver, an assignment of assets of LICENSEE for the benefit
of creditors or the commencement of any bankruptcy proceeding
for LICENSEE; or
(iii) the voluntary or involuntary dissolution of LICENSEE.
(e) The termination of this Agreement for any reason shall not release any
party from any obligation which accrued prior to such termination, or which, by
its terms, is to continue beyond such termination. Notwithstanding the
foregoing, LICENSOR's sole remedy for LICENSEE's failure to make payment of the
Continuation Payment or the Milestone Payment due hereunder, in a timely fashion
or within the thirty (30) day
cure period, shall be to terminate this Agreement and LICENSEE shall thereafter
have no further obligation to make such payment or payments to LICENSOR.
6. INFRINGEMENT
(a) If, at any time during the term of this Agreement, a claim is
asserted or an action is commenced by a third person in which it is alleged that
the TECHNOLOGY infringes upon the property rights of such third person, then the
party against whom the claim is asserted or the action is commenced shall
promptly notify the other party hereto. At such time or any time thereafter, if
reasonably asked to do so by LICENSOR, LICENSEE shall promptly discontinue use
of the TECHNOLOGY.
In such an infringement situation, LICENSOR shall defend, indemnify and
hold LICENSEE harmless from and against any and all demands, claims, actions,
liability, losses, damages, costs or expenses, including reasonable attorneys'
fees, resulting from LICENSEE'S use of the TECHNOLOGY up until the time LICENSOR
notified LICENSEE to discontinue said activities.
(b) If LICENSEE continues to use the TECHNOLOGY after it has been
notified by LICENSOR, pursuant to Section 6(a) hereof, to discontinue such use,
such action shall be considered a breach of the Agreement pursuant to Section
6(a) hereof, all licenses granted to LICENSEE hereunder shall immediately and
automatically terminate and LICENSOR shall no longer be obligated to indemnify
and hold LICENSEE harmless from that point on. Thereafter, LICENSEE shall
indemnify and hold LICENSOR harmless from and against any and all demands,
claims, actions, liability, losses, damages, costs or expenses, including
reasonable attorneys' fees, arising out of or in connection with LICENSEE'S
continued use of the TECHNOLOGY. Nevertheless, LICENSOR'S obligation to
indemnify and hold LICENSEE harmless up until the point of notification shall
remain in effect.
(C) LICENSOR may handle any claim or defend any action referred to
in Section 6(a) hereof in its own name, in the name of LICENSEE or in the name
of both. LICENSEE shall participate in the handling of any such claim or in the
defense of any such action at LICENSOR'S expense, if such participation is
reasonably requested by LICENSOR. If LICENSOR does not handle any claim or
defend any action referred to in Section 6(a) hereof, LICENSEE shall have the
right to terminate this Agreement. However, LICENSEE shall not have the right to
handle any such claim or defend any such action.
7. MISCELLANEOUS
(a) NOTICES
All notices and other communications required or permitted hereunder shall be in
writing and
(i) when delivered by hand, shall be deemed effective when so
delivered;
(ii) when sent by certified or registered mail, postage prepaid,
shall be deemed effective five days after having been sent;
(iii) when sent by telefax, with a copy by regular mail or by
Federal Express, shall be deemed effective at the time
indicated on the fax transmission receipt; or
(iv) when sent by prepaid cable, telex or telegram, shall be deemed
effective one day after having been sent.
All such notices and other communications shall be addressed as follows:
If to LICENSOR, to: Molichem R&D, Inc.
000 Xxxxxx Xxxxx
Xxxxx 000
Xxxxxx Xxxx, Xxxxx Xxxxxxxx 00000
Attention: Xxxx Xxxxxx, President
With copies of all
correspondence to: Xxxxxx Xxxxxxx Xxxxx & Xxxxxx LLP
0000 Xxxx Xxxxx Xxxxx
Xxxxx 000
Xxxxxxx, Xxxxx Xxxxxxxx 00000
Attention: W. Xxxxx Mannheim, Esq.
If to LICENSEE, to: Molichem Medicines, Inc.
c/o Xxxxxx Xxxxxxxx
000 Xxxxxxxx Xxxx
Xxxxxx Xxxx, Xxxxx Xxxxxxxx 00000
With copies of all
correspondence to: Xxxxxx Xxxxxxxxxx & Xxxxxxxx, LLP
000 Xxxxx Xxxxxx
Xxxxx Xxxxx
Xxx Xxxx, Xxx Xxxx 00000
Attention: Xxxx X. Xxxxxxxxxx, Esq.
or to such other address as each party shall notify the other.
(b) WAIVER, MODIFICATIONS AND AMENDMENTS
The failure of either party to enforce at any time any of the
provisions of this Agreement or any rights in respect thereto, or to exercise
any election herein provided, shall in no way be considered a waiver of such
provisions, rights or election.
This Agreement may not be modified or amended except by a
writing signed by both parties hereto.
(c) NONENFORCEABILITY
If any provision of this Agreement should be proven unlawful
or nonenforceable, such will not affect the validity or enforceability of the
remaining provisions.
(d) GOVERNING LAW
The construction, validity and performance of this Agreement
shall be governed in all respects by the laws of the State of New York in
connection with any dispute or controversy arising out of or relating to this
Agreement, and both parties consent to the jurisdiction of the United States
District Court for the Southern District of New York or the appropriate New York
State court.
(e) ENTIRE AGREEMENT
This Agreement constitutes the entire agreement between the
parties relating to the subject matter hereof and supersedes any and all prior
agreements, whether written or oral, with respect to the subject matter hereof.
IN WITNESS WHEREOF, the parties hereto have caused this
Agreement to be executed and delivered by their respective officers as of the
date first above written.
MOLICHEM MEDICINES, INC. MOLICHEM R&D, INC.
By: /S/ XXXXXX XXXXXXXX By: /S/ XXXX XXXXXX
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Name: Xxxxxx Xxxxxxxx Name: Xxxx Xxxxxx
Title: President Title: President
