EXCLUSIVE LICENSE AGREEMENT
Exhibit 10.3
This Exclusive License Agreement (this “Agreement”) is entered into as of
July 5, 2006 by and between Sytera II, Inc., a Delaware corporation (the
“Licensor”), and Sirion Therapeutics, Inc., a North Carolina corporation (the “Licensee”).
RECITALS
Whereas, pursuant to that certain Exclusive License Agreement, dated as of June
30, 2006 (the “Original License Agreement”), by and between Sytera, Inc., a Delaware
corporation (“Sytera”), and Licensor, Licensor has been granted an exclusive, worldwide license to
the Licensed Patents (as defined below) in the Field (as defined below);
Whereas, pursuant to that certain Agreement and Plan of Merger and Reorganization,
dated as of July 5, 2006 (the “Merger Agreement”), by and among Licensor, Licensee, Sytera
and Xxxxxxx X. Xxxxxx, M.D., solely in his capacity as Stockholders’ Representative (as defined in
the Merger Agreement), Sytera is being merged with and into Licensee at the Effective Time (as
defined in the Merger Agreement), with Licensee continuing as the surviving corporation in the
merger; and
Whereas, effective as of the Effective Time, Licensor desires to grant to Licensee,
and Licensee desires to receive from Licensor, an exclusive, worldwide license to sell and offer
for sale the Licensed Products (as defined below) pursuant to the terms and conditions set forth in
this Agreement.
Now, Therefore, in consideration of the mutual covenants and agreements set forth
below, and for other good and valuable consideration, the receipt and sufficiency of which are
hereby acknowledged, the parties hereby agree as follows:
AGREEMENT
1. Definitions. As used in this Agreement:
1.1 “Fenretinide” means 4-hydroxyphenyl retinamide and its active metabolite, 4-methoxyphenyl
retinamide.
1.2 “Field” means the treatment or prevention of diabetes.
1.3 “License” means the exclusive license granted to Licensee in Section 2.
1.4 “Licensed Patents” means: (i) the patents and patent applications relating to Fenretinide
listed in Exhibit A; (ii) all patents issuing or claiming priority from any of the patents and
patent applications listed in Exhibit A including continuations, continuations-in-part,
divisionals, reexaminations, reissues, and extensions thereof, and foreign counterparts, and
substitutions of the patents and patent applications listed in Exhibit A whether or not such patent
applications or patents exist as of the date of this Agreement; and (iii) all other patents and
patent applications exclusively licensed to Licensor pursuant to the Original License Agreement.
1.5 “Licensed Product” means any product, or component thereof, relating to the Field that:
(i) would infringe one or more claims of a Licensed Patent but for the License; (ii) is identical
or substantially identical in composition, formulation or dosage to any Product marketed by
Licensee outside the Field; and (iii) has been manufactured by or on behalf of the Licensor.
1.6 “Product” means any preparation that contains Syt101 as an active ingredient for sale by
prescription, over-the-counter or any other method.
1.7 “Syt101” means Fenretinide, including any active metabolite or prodrug of Fenretinide or
any hydrate, conjugate, salt, ester, amide, solvate, cocrystal, isomer, polymorph, analogue or
other derivative of any of the foregoing.
2. License Grant; License Fee. Subject to the terms and conditions of this Agreement,
including, without limitation, Licensee’s payment of the License Fee (as defined below), at and
effective as of the Effective Time, Licensor hereby grants to Licensee an exclusive, worldwide
license (without the right to sublicense) under the Licensed Patents to sell and offer to sell the
Licensed Products (the “License”). In consideration of the License granted to Licensee pursuant to
this Section 2, Licensee shall pay to Licensor at the Effective Time, as a one-time license fee, an
amount in cash equal to $4,379.60 (the “License Fee”).
3. Additional Terms of License.
3.1 Term of License. The License will remain in effect until all Licensed Patents have
expired or been abandoned; provided, however, that Licensor may terminate the
License, effective immediately upon written notice to Licensee, in the event that: (i) the Sytera
Rights (as defined in the Merger Agreement) are transferred or required to be transferred by
Licensee to Licensor in accordance with Section 1.5(h) of the Merger Agreement; or (ii) Licensee
breaches any provision of this Agreement or the Merger Agreement and does not cure such breach
within fifteen (15) days after receiving written notice thereof.
3.2 Restrictions on Licensor. Given that the License is being granted on an exclusive basis,
at all times during the term of the License specified in Section 3.1, Licensor agrees not to sell
or offer to sell any Licensed Product and not to grant to any third party any rights of any kind
concerning the Licensed Patents for the sale of the Licensed Products.
4. Consulting Services.
4.1 Projects. Subject to the terms and conditions of this Agreement, including, without
limitation, Licensee’s payment of the Consulting Fee (as defined below), Licensee hereby engages
Licensor, and Licensor hereby accepts the engagement by Licensee, effective as of the Effective
Time, to act as a nonexclusive consultant to Licensee for a period of one (1) year following
Effective Time (the “Consulting Term”). In its capacity as such nonexclusive consultant to
Licensee, Licensor shall perform such services relating to the exploitation of Licensee’s rights
under the License (each, a “Project”) as are requested from time to time during the Consulting Term
by Licensee (collectively, the “Services”); provided, however, that: (i) prior to
Licensor’s becoming obligated to perform any individual Project, the parties shall mutually agree
upon and set forth in writing the scope of the Project, the timing for completion of the Project
and the relative rights of each party with respect to any intellectual property resulting
2.
from the performance of such Project; and (ii) Licensor shall not be obligated to spend in
excess of one hundred (100) hours in the aggregate in performing the Services. Licensor shall
perform all Services in a professional manner, using a degree of skill and care at least consistent
with industry standards.
4.2 Consulting Fee. As compensation for the Services, Licensee shall pay to Licensor at the
Effective Time, as a one-time consulting fee, an amount in cash equal to $190,000.00 (the
“Consulting Fee”).
5. Representations and Warranties of Licensor. In connection with the transactions
contemplated by this Agreement, Licensor represents and warrants to Licensee as follows:
5.1 Organization and Authority. Licensor is duly organized, validly existing and in good
standing under the laws of the State of Delaware and has all requisite corporate power and
authority to execute, deliver and perform its obligations under this Agreement. All corporate
action on the part of Licensor, its officers, directors and stockholders necessary for: (i) the
authorization, execution and delivery of this Agreement; and (ii) the performance of Licensor’s
obligations under this Agreement, including, without limitation, the License, has been taken or
will be taken prior to the Effective Time.
5.2 Valid Agreement. This Agreement constitutes the valid and legally binding obligations of
Licensor, enforceable in accordance with its terms, except: (i) as limited by applicable
bankruptcy, insolvency, reorganization, moratorium and other laws of general application affecting
enforcement of creditors’ rights generally; and (ii) as limited by laws relating to the
availability of specific performance, injunctive relief or other equitable remedies.
5.3 No Conflict. Neither the execution of this Agreement, nor the consummation by Licensor
of the transactions contemplated by this Agreement, including, without limitation, the License,
will contravene Licensor’s certificate of incorporation or bylaws or constitute a violation of or
default under, or conflict with or require a consent under, any contract, commitment, agreement,
understanding, arrangement, restriction, law, statute, rule, regulation, judgment, order,
injunction, suit, action or proceeding of any kind to which Licensor is a party or by which
Licensor or any of its assets is bound.
6. Representations and Warranties of Licensee. In connection with the transactions
contemplated by this Agreement, Licensee represents and warrants to Licensor as follows:
6.1 Organization and Authority. Licensee is duly organized, validly existing and in good
standing under the laws of the State of North Carolina and has all requisite corporate power and
authority to execute, deliver and perform its obligations under this Agreement. All corporate
action on the part of Licensee, its officers, directors and shareholders necessary for: (i) the
authorization, execution and delivery of this Agreement; and (ii) the performance of Licensee’s
obligations under this Agreement, including, without limitation, the payment of the License Fee,
has been taken or will be taken prior to the Effective Time.
6.2 Valid Agreement. This Agreement constitutes the valid and legally binding obligations of
Licensee, enforceable in accordance with its terms, except: (i) as limited by
applicable bankruptcy, insolvency, reorganization, moratorium and other laws of general
3.
application affecting enforcement of creditors’ rights generally; and (ii) as limited by laws
relating to the availability of specific performance, injunctive relief or other equitable
remedies.
6.3 No Conflict. Neither the execution of this Agreement, nor the consummation by Licensee
of the transactions contemplated by this Agreement, including, without limitation, the payment of
the License Fee, will contravene Licensee’s articles of incorporation or bylaws or constitute a
violation of or default under, or conflict with or require a consent under, any contract,
commitment, agreement, understanding, arrangement, restriction, law, statute, rule, regulation,
judgment, order, injunction, suit, action or proceeding of any kind to which Licensee is a party or
by which Licensee or any of its assets is bound.
7. Miscellaneous.
7.1 Further Assurances. In addition to the actions, documents and instruments specifically
required pursuant to this Agreement to be taken or delivered by the parties hereto, each party
hereto shall, without further consideration, use its reasonable best efforts to, and shall use its
reasonable best efforts to cause its respective affiliates to, take such other actions, and execute
and/or deliver such other certificates, documents and instruments, as the other party hereto or its
counsel may reasonably request in order to effectuate the transactions contemplated by this
Agreement.
7.2 Notices. All notices and other communications given or made pursuant hereto
shall be in writing and shall be deemed effectively given: (i) upon personal delivery to the party
to be notified; (ii) when sent by confirmed electronic mail or facsimile if sent during normal
business hours of the recipient or, if not, then on the next business day; (iii) five days after
having been sent by registered or certified mail, return receipt requested, postage prepaid; or
(iv) one day after deposit with a nationally recognized overnight courier, specifying next day
delivery, with written verification of receipt. All communications shall be sent to the respective
parties at each such party’s address set forth on the signature page hereto (or at such other
addresses as shall be specified by notice given in accordance with this Section 7.2).
7.3 Expenses. Each of Licensor and Licensee shall each bear its respective expenses and legal
fees incurred with respect to this Agreement and the transactions contemplated herein.
7.4 Waiver. No failure on the part of any party to exercise any power, right, privilege or
remedy under this Agreement, and no delay on the part of any party in exercising any power, right,
privilege or remedy under this Agreement, shall operate as a waiver of such power, right, privilege
or remedy and no single or partial exercise of any such power, right, privilege or remedy shall
preclude any other or further exercise thereof or of any other power, right, privilege or remedy.
No party shall be deemed to have waived any claim arising out of this Agreement, or any power,
right, privilege or remedy under this Agreement, unless the waiver of such claim, power, right,
privilege or remedy is expressly set forth in a written instrument duly executed and delivered on
behalf of such party, and any such waiver shall not be applicable or have any effect except in the
specific instance in which it is given.
7.5 Severability. If one or more provisions of this Agreement are held by a court of
competent jurisdiction to be unenforceable under applicable law, the parties agree to promptly
renegotiate such provision in good faith. In the event that the parties cannot reach a
mutually
4.
agreeable and enforceable replacement in writing for such provision, then: (i) such
provision shall be excluded from this Agreement; (ii) the balance of the Agreement shall be
interpreted as if such provision were so excluded; and (iii) the balance of the Agreement shall be
enforceable in accordance with its terms.
7.6 Governing Law. This Agreement shall be construed in accordance with, and governed in all
respects by, the internal laws of the State of Delaware without giving effect to its principles of
conflicts of laws.
7.7 Assignment. Each party may not assign or transfer any of its rights under this Agreement
or delegate any of its obligations or duties under this Agreement to any third party, without the
other party’s prior written consent. Any attempted assignment or delegation without such consent
will be null and void. Notwithstanding the foregoing, either party may assign this entire
Agreement or any of its rights hereunder, without the other party’s consent: (i) to any of the
assigning party’s affiliates; or (ii) to a third party in connection with the sale of all or
substantially all of the assets or business of the assigning party, whether by merger, sale of
assets, sale of stock, or otherwise. This Agreement will be binding upon and shall inure to the
benefit of the parties hereto and their respective successors and assigns.
7.8 Entire Agreement. This Agreement constitutes the entire agreement between the parties
with respect to the subject matter hereof and thereof and supersede all prior agreements and
understandings between the parties with respect thereto. No addition to or modification of any
provision of this Agreement shall be binding upon any party unless made in writing and signed by
all of the parties hereto.
7.9 Counterparts. This Agreement may be executed in two or more counterparts, each of which
shall be deemed an original and all of which together shall constitute one instrument.
[REMAINDER OF PAGE INTENTIONALLY LEFT BLANK]
5.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as of the date first set
forth above.
| LICENSOR: | LICENSEE: | |||||
| Sytera II, Inc. | Sirion Therapeutics, Inc. | |||||
By:
|
/s/ Xxxxxxx X. Xxxxxx | By: | /s/ Xxxxx Xxxxxx | |||
| Xxxxxxx X. Xxxxxx, M.D. | Xxxxx Xxxxxx | |||||
| Chairman and Chief Executive Officer | Chairman and Chief Executive Officer | |||||
Address:
|
000 Xxxxx Xxxxxxxxx Xxxxx | Address: | 0000 Xxxxxx Xxxx Xxxxx | |||
| Xxxxx 000 | Xxxxx 000 | |||||
| Xx Xxxxx, Xxxxxxxxxx 00000 | Xxxxx, Xxxxxxx 00000 | |||||
