Bracketed information omitted and filed separately with the Securities and
Exchange Commission
Confidential Treatment Requested Under 17 C.F.R. Sections 200.80(b)(4), 200.83
and 240.24b-2
EXHIBIT 10.10
SUBLICENSE AGREEMENT
This Agreement is entered into as of July 14, 1994 between id/2/-I, L.P.. a
Texas limited partnership having a principal place of business at 00 Xxx Xxxxxxx
Xxxx., Xxxxx 000, Xxxxxx, Xxxxx 00000 ("id/2/" or "Sublicensor," as applicable)
and Sensus Drug Development Corporation, a Delaware corporation having a
principal place of business at 00 Xxx Xxxxxxx Xxxx., Xxxxx 000, Xxxxxx, Xxxxx
00000 ("Sublicensee").
RECITALS
WHEREAS Ohio University, a state chartered university and its Edison
Biotechnology Institute, a department of Ohio University (hereafter collectively
referred to as "OU/Edison" or Licensor, as applicable) and Drug Development
Investment Corp., a Texas corporation and general partner of id/2/ ("DDIC")
previously entered into that certain Biotechnology Licensing and Transfer
Agreement dated as of January 18, 1993 (the "Licensing Agreement"); and
WHEREAS OU/Edison and DDIC contemporaneously entered into that certain
Sponsored Research Agreement; and
WHEREAS DDIC assigned the Licensing Agreement and the Sponsored Research
Agreement to id/2/ in that certain Amended Assignment and Assumption Agreement
dated effective as of March 26, 1993; and
WHEREAS Section 2(e) of the Licensing Agreement grants the Licensee under
the Licensing Agreement (id/2/) the right to sublicense any rights granted under
the Licensing Agreement; and
WHEREAS id/2/ desires to sublicense certain rights with respect to a
portion of the Licensed Technology (as such term is defined in the Licensing
Agreement) to Sublicensee. Now therefore in consideration of the mutual
covenants herein contained, the parties agree as follows:
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1. DEFINITIONS
1.1 "Assigned Technology" means the Licensed Technology to the extent only
that it consists of or relates to growth hormone antagonists that are covered by
the Licensing Agreement, as further described on Exhibit A attached hereto.
1.2 The "Effective Date" of this Agreement shall be July 14, 1994.
1.3 All other capitalized terms used in this Agreement, unless otherwise
defined herein, shall have the meanings ascribed to such terms in the Licensing
Agreement.
2. LICENSE GRANT
Sublicensor hereby grants to Sublicensee (including its Affiliates) and
Sublicensee hereby accepts, upon the terms and conditions herein set forth, an
exclusive worldwide sublicense (the "Sublicense") in and to the Assigned
Technology, including, without limitation, the exclusive right under the
Assigned Technology to make, use, and Sell (directly or through independent
distributors) the Assigned Technology in accordance with this Agreement and the
Licensing Agreement, and also including, without limitation, the right to pursue
further research, discoveries, and inventions, and construct or acquire any
apparatus and facilities useful in the development of the Assigned Technology.
3. RIGHTS, DUTIES AND OBLIGATIONS OF SUBLICENSOR
AND SUBLICENSEE
3.1 Except as expressly modified herein, the provisions of the Licensing
Agreement attached hereto as Exhibit B are incorporated by reference in this
Agreement. Where applicable, all references to "Licensed Technology" in the
Licensing Agreement should, for purposes of this Agreement, be read instead as
stating "Assigned Technology", except as follows: Where the term, "Licensed
2
Technology,' is used in Section l(g) ("Licensed Technology") and Section l(j)
("Option Agreement"), such term shall be read as it appears in the Licensing
Agreement.
3.2 All rights possessed by Sublicensor under the Licensing Agreement with
respect to that portion of the Licensed Technology that constitutes the Assigned
Technology are hereby conveyed to Sublicensee, subject to the rights herein
reserved by Sublicensor.
3.3 Except as otherwise provided in this Agreement, Sublicensee shall
have, with respect to the Assigned Technology, the same rights, responsibilities
and duties as Sublicensor has in its capacity as Licensee with respect to the
Licensed Technology under the Licensing Agreement. The reference in Section
12(c) of the Licensing Agreement to [*] shall mean such period commencing on
January 18, 1993. The representations applicable to Sublicensor under the
Licensing Agreement are modified in accordance with Section 6 below.
3.4 The provisions of Sections 8, 9 and 17 of the Licensing Agreement, to
the extent applicable to Sublicensee, are hereby made expressly binding on and
are assumed by Sublicensee in accordance with Section 2(e) of the Licensing
Agreement, except that the parties acknowledge that this transfer is not made
under circumstances that would trigger the payment obligations to OU/Edison
provided for under certain circumstances in Sections 8(g).
3.5 Sublicensee shall refrain from disclosing Confidential Information to
the same extent that Sublicensor is prohibited from disclosing same under both
the Licensing Agreement and the Sponsored Research Agreement.
3.6 Sublicensee acknowledges that under certain other circumstances its
rights under this Agreement may be adversely affected by actions taken or not
taken under the Licensing Agreement by OU/Edison or by Sublicensor.
[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATEMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
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3.7 In addition, Sublicensee is hereby assigned all rights arising and
benefits accruing under the Sponsored Research Agreement, to the extent only
that such rights and benefits pertain to the Assigned Technology.
4. EXCEPTIONS TO THE RIGHTS, DUTIES AND OBLIGATIONS
OF SUBLICENSEE
4.1 Sublicensee shall have no right to any portion of the Licensed
Technology other than the Assigned Technology, nor shall it have any right or
duty to develop or commercially exploit any portion of the Licensed Technology
other than the Assigned Technology.
4.2 Except to the extent provided herein, Sublicensor's obligations under
the Sponsored Research Agreement shall not be assumed by Sublicensee.
5. PAYMENT
5.1 Sublicensee shall only be required to pay royalties to OU/Edison on
Net Revenues obtained from Derivative Products derived from the commercial
exploitation of the Assigned Technology.
5.2 Sublicensee and Sublicensor agree that Sublicensee has acquired rights
to the Assigned Technology with a bona fide intent to develop and market same,
to the extent economically feasible to do so.
5.3 While the parties do not anticipate that the conditions giving rise to
payment obligations to OU/Edison under Sections 8(h) and 8(i) will apply to this
transfer, to the extent that financial obligations may hereafter arise under
Section 8(i) with respect to the Assigned Technology, Sublicensee agrees to
assume and pay such obligations.
5.4 Sublicensee agrees with Sublicensor that it will financially support
the research performed under the Sponsored Research Agreement with respect to
the Assigned Technology to the extent of at least $[*] annually. However, this
[*] = CERTAIN INFORMATION ON THIS PAGE HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN REQUESTED WITH RESPECT TO
THE OMITTED PORTIONS.
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provision shall not be enforceable by any person other than Sublicensor, its
successors, and assigns.
6. REPRESENTATIONS AND WARRANTIES
Sublicensee represents and warrants as follows:
(A) Sublicensee has the authority and capability to execute and
perform this Agreement, and such execution and performance will not violate any
restriction contained in any law or regulation applicable to Sublicensee, or any
order or agreement by which it is bound.
(B) Sublicensee has capital of not less than $1,000 and has employed
a Chief Executive Officer with expertise and managerial experience in the
pharmaceutical industry to direct the activities required under this Agreement.
(C) Sublicensee will faithfully keep and perform each of its
obligations imposed or assumed under this Agreement, and it will indemnify and
hold harmless Sublicensor, its principals and agents, from and against any and
all claims, liabilities and expenses (including reasonable attorneys fees,
witness fees, deposition expenses, and other costs of legal proceedings) arising
out of or resulting from any breach of its obligations hereunder, or any
negligent, grossly negligent or otherwise improper action or omission on its
part.
7. TERM AND TERMINATION
7.1 Unless otherwise provided in this Section, this Agreement shall be in
effect as long as the Licensing Agreement is in effect.
5
7.2 In the event of a Default by OU/Edison, Sublicensee shall have the
same rights with respect to the Assigned Technology as Sublicensor has with
respect to the Licensed Technology under the Licensing Agreement.
7.3 In the event of a Default by Sublicensee, or in the event Sublicensee
terminates this Agreement, unless the Licensing Agreement has also been
terminated, all rights conveyed hereunder shall immediately and automatically
revert to Sublicensor, without the need for any action on its part.
7.4 In the event OU/Edison terminates the Licensing Agreement based on a
Default by Sublicensor, Sublicensor's rights under this Agreement shall
automatically be assigned to OU/Edison in accordance with Section 16(j) of the
Licensing Agreement.
7.5 In the event OU/Edison validly exercises the right to require that all
Licensed Technology be returned to it by Sublicensor under Section 16(1) of the
Licensing Agreement, Sublicensee agrees to return all Assigned Technology to
OU/Edison.
8. GENERAL PROVISIONS.
The notice addresses under this Agreement are as follows:
If to Sublicensor:
id/2/-[, L.P.
00 Xxx Xxxxxxx Xxxx., Xxxxx 000
Xxxxxx, Xxxxx 00000
Facsimile: (000) 000-0000
With copy to:
Xxxxxx X. Xxxxxxxx
1800 NationsBank Tower
000 Xxxxxxxx Xxxxxx
Xxxxxx, Xxxxx 00000-0000
Facsimile: (000) 000-0000
If to Sublicensee:
Sensus Drug Development Corp.
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00 Xxx Xxxxxxx Xxxx., Xxxxx 000
Xxxxxx, Xxxxx 00000
Facsimile: (000) 000-0000
With copy to:
If to OU/Edison:
Director Technology Transfer Office
Ohio University
Innovation Center
Xxx Xxxxxxxxx Xxxxxx
Xxxxxx, Xxxx 00000
Attention: Xxxxx Xxxxx, Ph.D.
Facsimile: (000) 000-0000
With copy to:
Vice President, Research and Graduate Studies
University Xxxxxxxx Xxxxxx
Xxxx Xxxxxxxxxx
Xxxxxx, Xxxx 00000
Attention: T. Xxxxx Xxxxxxxx, Ph.D.
Facsimile: (000) 000-0000
IN WITNESS WHEREOF, the parties hereto, intending to be bound hereby have
executed and delivered this Agreement as of the Effective Date.
ID/2/-I, L.P.
By: Drug Development Investment Corp., general
partner
By: /s/ Xxxx X. Xxxxxxxx, M.D.
___________________________________________
Xxxx X. Xxxxxxxx, M.D., President
SENSUS DRUG DEVELOPMENT CORP.
By: /s/ Xxxx X. Xxxxxxxx
___________________________________________
Xxxx X. Xxxxxxxx, Chief Executive Officer
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EXHIBIT A
DESCRIPTION OF ASSIGNED TECHNOLOGY
The Assigned Technology is that portion of the Licensed Technology
that consists of any and all growth hormone antagonists covered by the Licensing
Agreement (as defined in the foregoing Agreement), including, but not limited
to, Patent Rights (as such term is defined in the Licensing Agreement) but only
to the extent related to growth hormone antagonists.
8
