Exhibit 10.107
AGREEMENT FOR DEVELOPMENT SERVICES
This Agreement is ended into by and between Chattem, Inc., a corporation
organized under the laws of Tennessee, and having its principal place of
business in Chattanooga, Tennessee ("Chattem") and IGI, Inc., a corporation
organized under the laws of Delaware, with its principal place of business
at 000 Xxxxxxx Xxxxxx, Xxxxx Xxx Xxxxxx 00000-0000 ("IGI") to be effective
as of the 27th day of March 2003. Chattem and IGI are collectively to as
the "Parties".
WITNESSETH:
WHEREAS, IGI has assisted Chattem in the product definition for
certain of its topical analgesic products, and Chattem wishes to continue
to work with IGI to develop and optimize medicine fill formula and finished
goods related to Chattem's new medicated patch/sleeve products;
WHEREAS, IGI represents and warrants that it is the exclusive
licensee of, and/or has the right to use, certain inventions (as described
in several patents and patent applications), trademarks, end information,
know-how and skill which is unique and confidential relating to organized
lipid structure, and lipid vesicle encapsulation technologies including,
but not limited to the lipid vesicle technology developed by Micro
Vesicular Systems, Inc. (designated herein as the "Novasome(R) Technology")
useful in conjunction with various products including topical analgesic
products and processes for making the same.
WHEREAS, IGI represents and warrants that it has the exclusive right
to grant sublicenses for such inventions in the Field under the terms and
conditions set forth herein.
WHEREAS, the Parties wish m clarify title to all inventions related
to the topical Analgesics created or modified by IGI for Chattem on the
terms more fully described in this Agreement.
NOW, THEREFORE, in consideration of the above premises and mutual
covenants hereinafter contained, and for other good and valuable
consideration the receipt of which is hereby acknowledged, the Parties
hereby agree as follows:
1. DEFINITIONS:
1.1 "Confidential Information" means any confidential or
proprietary information, source code, software tools, designs, schematics,
plans, formulations, or any other information relating to any research
project, work in process, future development, scientific, engineering,
manufacturing, marketing or business plan or financial or personnel matter
relating to either party, its present or future products, sales, suppliers,
customers, employees, investors or business, identified by the disclosing
Party as Confidential Information, whether in oral, written graphic or
electronic form. Without limiting the foregoing, Chattem's Technology and
IGI's Technology shall be deemed the Confidential Information or their
respective owner.
1.2 "New Technology" means any and all Technology arising out of
the research and development efforts hereunder, including but not limited
to any and all related inventions, improvements, variations or
modifications thereof or thereon which are used in any topical analgesics,
and any inventions, improvements, variations or modifications on or to the
New Technology or derivative works thereof.
1.3 "Trade Secret" means any and all processes, methods, plans,
formulas or other information unique to, licensed to, or developed for or
by the Parties and used in the production or
manufacture of the topical analgesics, including but not limited to any and
all improvements, modifications and variations in a Party's Technology.
1.4 "Know-How" means all designs, drawings, prints, performance
specifications, engineering data, sources of supply information,
techniques, invitations, practices, methods, knowledge, skill, experience,
test data and cost, sales and manufacturing data or any sort or description
and which is owned or controlled by such Party and which such Party
discloses to the other Party under this Agreement.
1.5 "Patent Rights" means any and all United States and foreign
patent rights, including patents of importation, improvement patents,
patents and certificates of addition, and utility models, as well as
divisions, reissues, continuations, renewals, and extensions of any of the
foregoing, and applications therefore, and any patents issuing hereon and
such further patent rights relating thereto.
1.6 "Specifications" means the overall performance specifications
to which a particular product performs or will perform.
1.7 "Technology" means Trade Secret, Know-How, and Patent Rights,
together.
1.8 "Novasome(R) Product" shall mean a lipid encapsulated analgesic
containing (1) 10-16% menthol, and/or (2) any level of capsaicin, and/or
(3) any potentiating ingredient specifically identified by Chattem, for
topical use developed and/or improved using the Novasome(R) Technology
utilized in conjunction with the Chattem medicated sleeve or patch
products.
1.9 "Chattem Technology" means the New Technology incorporating the
Novasome(R) Products in delivery vehicles.
2. DEVELOPMENT RESPONSIBILITIES.
2.1 SCOPE OF SERVICES. IGI agrees to assist Chattem in developing
and refining topical analgesic formulations.
2.2 TECHNICAL ASSISTANCE.
2.21 Chattem will provide to IGI for IGI's use solely in
developing and producing topical analgesics those portions of
Chattem's Technology that Chattem in its sole discretion believes is
necessary for IGI to assist in developing the formulations.
2.22 IGI shall reasonably allocate its staff and designate its
resources, financial or otherwise, in order to meet its obligations
hereunder.
2.3 DESCRIPTION OF THE WORK. IGI shall perform the services and
manufacture the sample products as specified in Schedule(s) agreed to
between the Parties. Schedule 1 attached hereto designates work already
performed by IGI which, shall be governed by this Agreement.
3. STATUS. IGI shall be an independent contractor, and not an agent,
representative or joint venture partner of Chattem. IGI shall not enter
into any contract or commitment on behalf of Chattem and shall be solely
responsible for making all payments to and on behalf of its employees and
subcontractors including those required by law. Chattem shall not be
liable for any debts or other liabilities of IGI.
4. TERM. This Agreement shall be effective until all obligations under
this Agreement and any Schedule(s) have been performed. Following six (6)
months from execution, Chattem may terminate this Agreement at any time
without cause upon written notice to IGI. Upon receipt of a notice of
termination IGI shall immediately discontinue all services under this
Agreement. In case of termination, Chattem shall have no liability to IGI,
except to pay for work authorized by Chattem up to the date of IGI's
receipt of such notice. Upon termination, IGI shall return all copies of
Chattem data, records and other materials and deliver to Chattem all work
in progress, including incomplete work, except IGI may keep one copy for
file purposes.
5. INDUSTRIAL AND INTELLECTUAL PROPERTY RIGHTS.
5.1 All New Technology which is conceived and/or reduced to
practice relating solely to NOVASOME(R) Products as defined in Paragraph
1.8 during the term of this Agreement shall be the jointly owned property
of IGI and Chattem, without regard to who invented the subject matter. IGI
and Chattem agree to promptly disclose in writing to the other such New
Technology.
5.2 All New Technology which is conceived and/or reduced to
practice relating solely to the NOVASOME(R) Technology during the term of
this Agreement shall be the property of IGI, without regard to who invented
the subject matter. IGI and Chattem agree to promptly disclose in writing
to the other such New Technology.
5.3 All New Technology which is conceived and/or reduced to
practice relating to Chattem Technology as defined in paragraph 1.9 shall
be the property of Chattem, without regard to who invented the subject
matter. IGI and Chattem agree to promptly disclose in writing to the other
such New Technology.
5.4 As it relates to New Technology explicitly provided for under
Paragraphs 5.1 and 5.3, both parties agree to take such further actions and
to execute such further instruments as the other party might find
reasonable or necessary to perfect or to evidence more clearly their right
and claim to sole or joint ownership of all intellectual property interest
respecting the New Technology as provided therein and further agree to
cause its employees, agents and assigns to execute the same. This
cooperation shall be operative with respect to all intellectual property
rights in and to the inventions, including, without limitation, all
copyrights (including rights to create compilations and derivative works),
trade secrets, inventions, know-how, ideas and confidential information
embodied or reflected in the New Technology.
6. TRADE SECRETS. The Parties acknowledge that this Agreement creates a
confidential relationship between IGI and Chattem that is the basis on
which (i) IGI shall provide to Chattem Confidential Information referred to
in this Agreement, and (ii) Chattem has disclosed an may in the future
disclose Chattem's commercially valuable, proprietary, Confidential
Information related to the purposes of this Agreement. Such inventions and
information are trade secrets of the Parties. The Party receiving such
Confidential Information shall hold such inventions and information in
strict confidence and shall not disclose such inventions and information to
any third party without the disclosing Party's prior written consent. This
secrecy obligation shall not apply to information:
(a) known to the receiving Party before being obtained or derived
from the disclosing Party;
(b) available to the public from sources other than the disclosing
Party at any time before or after it is obtained or derived
from the disclosing Party; or
(c) obtained or acquired at any time by the receiving Party from a
third party who has the same in good faith and is free to pass
it on to the receiving Party.
6.1 The receiving Party shall not divulge such Confidential
Information to third parties and shall notify its employees and agents that
such Confidential Information is the sole property of the disclosing Party
and shall, insofar as reasonably possible impart any or all of the
Confidential Information only to such of its employees, agents, or
consultants who shall have a reasonable need for such Confidential
Information and being bound by a written obligation to maintain such
Confidential Information.
6.2 Moreover, the receiving Party shall not itself use practice or
exploit, without express written permission from the disclosing Party, any
portion or all of such Confidential Information detail insofar as it is to
be held in confidence by the receiving Party pursuant to this Agreement.
In particular, the
receiving Party shall not utilize any portion of such Confidential
Information, including any improvements, inventions, discussions or
developments derived from or relating to the Confidential Information, in
any patent application filed during the term of this Agreement.
6.3 Each Party shall safeguard all confidential material, whether
written or otherwise, which the other Party supplies to it and shall not
copy or duplicate such materials except as necessary to fulfill the
purposes of this Agreement and the accompanying Schedule(s). The Party
receiving Confidential information shall take such precautions as
requested by the disclosing Party, including returning all materials and
any copies or derivatives thereof.
6.4 In the event of a breach or threatened breach of the foregoing
provisions of this paragraph 6, damages to be suffered by the disclosing
Party will not be fully compensable in money damages alone, and
accordingly, the disclosing Party shall, in addition to other available
legal or equitable remedies, be entitled to an injunction against such
breach or threatened breach without any requirement to post bond as a
condition of such relief.
7. MISCELLANEOUS. This Agreement shall not be assigned or subcontracted
in whole or in part without the prior written consent of Chattem. This
Agreement shall be construed under and governed by the laws of the State of
Tennessee. The duties, obligations, rights and remedies under this
Agreement are in addition to and not in limitation of those otherwise
imposed or available by law. This Agreement is the complete understanding
of the Parties in respect of the subject matter of this Agreement and
supersedes all prior agreements relating to the same subject matter. The
Parties may modify this Agreement only by written instrument signed by each
of the Parties hereto. Failure by either Party to enforce a provision of
this Agreement shall not constitute a waiver of that or any other provision
of the Agreement. The invalidity or unenforceability of any provision of
this Agreement shall not affect the validity or enforceability of any other
provision of this Agreement.
IN WITNESS WHEREOF, the Parties have executed this document effective
as of the day and year first written above.
CHATTEM, INC. IGI, INC.
By: /s/ Xxxx Xxxxxx By: /s/ Xxxx Xxxxxxx
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Name: Xxxx Xxxxxx Name: Xxxx Xxxxxxx
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Title: President and Chief Title:
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Operating Officer
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Schedule No. 1 To
CHATTEM, INC./IGI, INC.
Services and Manufacturing for Product Development
Chattem Contact: Xxxxx Xxxxx
IGI Contact:
Designated Site for Production/Delivery: Already provided
I. Description of Services
Develop and optimize medicine fill formula and finished goods related
to Chattem's new medicated patch/sleeve products
II. Additions or modifications to Agreement for Development Services
specifically as it related to this Schedule.
If there is a conflict between the terms and conditions of this Schedule
and the Agreement for Development Services, those of this Schedule prevail.
Except as modified by this Schedule, the terms and conditions of the
Agreement for Development Services remain in full force and effect.
CHATTEM, INC. IGI, INC.
By: /s/ Xxxx Xxxxxx By: /s/ Xxxx Xxxxxxx
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Name: Xxxx Xxxxxx Name: Xxxx Xxxxxxx
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Title: President and Chief Title: President & CEO
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Operating Officer
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