CONFIDENTIAL TREATMENT REQUESTED BY QLT INC. LICENSE AGREEMENT
Exhibit 10.1
CONFIDENTIAL TREATMENT REQUESTED BY QLT INC.
LICENSE AGREEMENT (“Agreement”) with an Effective Date of August 25, 2008 (the “Effective Date”)
between
QLT USA, INC., having an office at ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇ (“LICENSOR”),
and
RECKITT BENCKISER PHARMACEUTICALS INC., having an office at ▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇. ▇▇▇,
▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ (“LICENSEE”),
WHEREAS, LICENSOR possesses certain rights to the proprietary Atrigel® drug delivery
system and experience and expertise in the discovery, design and development of products based on
this proprietary drug delivery system for medical applications; and
WHEREAS, LICENSOR wishes to grant to LICENSEE, and LICENSEE wishes to obtain from LICENSOR, an
exclusive, worldwide license under LICENSOR’s Atrigel® drug delivery system on the terms
and subject to the conditions set forth herein; and
WHEREAS, in connection with this license, LICENSOR is furthermore delivering to LICENSEE certain
assets and LICENSEE has offered employment to certain employees of LICENSOR familiar with the
Atrigel® drug delivery system, all pursuant to the Asset Purchase Agreement, dated as of
the Effective Date, between LICENSOR and LICENSEE (the “Asset Purchase Agreement”),
NOW, THEREFORE, in consideration of the mutual covenants contained herein and other good and
valuable consideration, the receipt and sufficiency of which is hereby acknowledged, the parties
agree as follows:
Section 1. Definitions.
1.1 “Affiliate” shall mean, as to any party, any other person, corporation, partnership, or
other entity that controls, is controlled by, or is under common control with, such party; as used
in this definition, “control” shall mean (a) the ownership of more than fifty percent (50%) of the
voting securities or other voting interest of any such other person, corporation, partnership, or
other entity (including attribution from related parties), or (b) the possession, directly or
indirectly, of the power to direct or cause the direction of the management and policies of such a
person, corporation, partnership, or other entity, whether through ownership of voting securities,
by contract or otherwise.
1.2 “Alternate Forms” shall mean with respect to an active ingredient, any [REDACTED:
description of alternate forms]** or other analog, modified or derivative form of such
ingredient.
1.3 “Atrigel” shall mean the proprietary drug delivery system consisting of flowable
compositions (e.g., solutions, gels, pastes and putties) of biodegradable polymers and
biocompatible solvents in all embodiments claimed in the Licensed Patents and in all other
embodiments thereof (including, for the avoidance of doubt, modified versions thereof, whether
developed before or after the Effective Date).
1.4 “Control” shall mean, with respect to any Know-how or Patent, possession by a party of the
express right to grant a license or sublicense as provided for herein without violating the terms
of any pre-existing written agreement with any Third Party.
1.5 “Dental Products” shall mean any and all Atrigel-formulated products for the treatment,
diagnosis and/or prevention of dental diseases or conditions for human or veterinary use, including
those set forth in Exhibit A attached hereto.
1.6 “Dermatology Products” shall mean any and all Atrigel-formulated products for the
treatment, diagnosis and/or prevention of skin diseases or conditions for human or veterinary use.
1.7 “Existing Out-License Agreements” shall mean the agreements listed in Exhibit B.
1.8 “Existing Out-Licensees” shall mean the parties to which rights have been granted under
the Existing Out-License Agreements.
1.9 “Know-how” shall mean any data, results, and information of any type whatsoever, in any
tangible or intangible form, including, without limitation, know-how, trade secrets, practices,
techniques, methods, processes, inventions, developments, specifications, formulations, formulae,
materials or compositions of matter of any type or kind (patentable or otherwise), expertise,
stability, technology, test data, including pharmacological, biological, chemical, biochemical,
toxicological, and clinical test data, analytical and quality control data, stability data, studies
and procedures, as well as any data or information acquired through feasibility studies performed
by or for LICENSOR pursuant to an agreement with a Third Party (but solely to the extent that
LICENSOR is no longer obligated to any Third Party to maintain the confidentiality of the data or
information resulting therefrom). Know-how shall not include any data, results and information in
any published Patents or any patent rights.
1.10 “Leuprolide Products” shall mean any Atrigel formulation containing or delivering (a)
leuprolide or any Alternate Forms thereof, or (b) any [REDACTED: description of other leuprolide
products]** for human or veterinary use, including without limitation the Eligard®
products, as currently licensed under the terms of the Existing Out-Licenses.
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1.11 “Licensed Know-How” means all Know-How related to Atrigel and which is owned by or under
the Control of LICENSOR as of the Effective Date, including, but not limited to, the information
and data contained within the Regulatory Materials for Atrigel-formulated products (but excluding
the Regulatory Materials themselves, rights to which are provided under Section 2.3) and all data
and documentation of clinical trials for any of the Atrigel-formulated products excluded from this
license, in each case, owned by or under the Control of LICENSOR as of the Effective Date.
Notwithstanding the foregoing, “Licensed Know-How” shall exclude (a) any Know-How relating solely
to the Retained Products (but only if such Know-How is not useful for any Licensed Products), and
(b) any data, information or other Know-How to the extent LICENSOR is restricted from disclosing or
providing access to such data, information and Know-How under an agreement with a Third Party as of
the Effective Date as indicated on Exhibit K (each a “Restricted Agreement”); provided,
that any such data and information or other Know-How (otherwise meeting the Licensed Know-How
definition above in the absence of such restriction) shall be included automatically in the
Licensed Know-How once, if and to the extent the applicable restriction in any such Restricted
Agreement ceases to restrict such disclosure and/or access.
1.12 “Licensed Patents” shall mean (a) those Patents which are set forth in Exhibit C,
(b) all patent applications filed with respect to invention disclosures or unfiled applications
listed on Exhibit C and any patent applications claiming priority to any such patent
applications or any patent application in (a), and all divisionals, continuations,
continuations-in-part and substitutions thereof; (c) all patents issuing on any of the foregoing,
and all reissues, reexaminations, renewals, and extensions thereof, including Supplementary
Protection Certificates; and (d) all counterparts to the foregoing in other countries. For the
avoidance of doubt, Licensed Patents shall exclude any Patent that solely covers or claims only
Retained Products, unless such Patent subsequently claims or covers Licensed Products.
1.13 “Licensed Products” shall mean individually and collectively, any and all
Atrigel-formulated medicinal products for human or veterinary use, excluding the Retained
Products.
1.14 “Licensed Trademarks” shall mean the trademarks set forth in Exhibit D.
1.15 “Licensed Technology” shall mean the Licensed Patents and the Licensed Know-How.
1.16 “Ocular Products” shall mean any and all Atrigel-formulated products for the treatment,
diagnosis and/or prevention of eye diseases and conditions for human or veterinary use.
1.17 “Patent” shall mean any invention disclosure, patent application (including unfiled
applications) or patent anywhere in the world, including, but not limited to, the following:
provisional, non-provisional, divisional, continuation, continuation-in-part, and substitution,
re-issue, re-examination applications; and regular utility, renewal and extended patents (including
supplementary protection certificates).
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1.18 “[REDACTED: company name]** Products” shall mean any and all products subject
to a license grant from LICENSOR to [REDACTED: company name]** under the terms of the
License and Royalty Agreement between LICENSOR and [REDACTED: company name and agreement
date]**, including the product containing the [REDACTED: description of intellectual
property]**.
1.19 “Regulatory Approval” shall mean any approvals, product and/or establishment licenses,
registrations or authorizations of any federal, state or local regulatory agency, department,
bureau or other governmental entity, necessary for the commercial manufacture, use, storage,
import, export, transport, commercialization or sale of a product in a regulatory jurisdiction,
including pricing approval, in jurisdictions where pricing approval is required to sell the product
or is necessary to obtain reimbursement therefor under a government program.
1.20 “Regulatory Authority” shall mean, in a particular country or regulatory jurisdiction,
any applicable governmental authority involved in granting Regulatory Approval and/or, to the
extent required in such country or regulatory jurisdiction, pricing or reimbursement approval of a
product in such country or regulatory jurisdiction, including the Food and Drug Administration of
the United States (FDA) or any successor thereto.
1.21 “Regulatory Materials” shall mean (a) all applications, registrations, licenses,
authorizations and approvals (including all Regulatory Approvals), all correspondence submitted to
or received from Regulatory Authorities (including minutes and official contact reports relating to
any communications with any Regulatory Authority) and all supporting documents relating to Atrigel,
including any of the foregoing within the Retained Files and Records (as defined in the Asset
Purchase Agreement), and (b) all data contained in any of the foregoing; including all drug master
files, regulatory drug lists, data, adverse event files and complaint files.
1.22 “Retained Products” shall mean any and all Dental Products, Dermatology Products,
Leuprolide Products, Ocular Products, and [REDACTED: company name]** Products.
1.23 “Third Party” shall mean any party (including any individual, corporation, partnership,
limited liability company, joint venture, association, joint stock company, trust (charitable or
non-charitable), unincorporated organization, other form of business entity or governmental entity)
other than LICENSEE, LICENSOR or any of their Affiliates.
Section 2. License
2.1 LICENSOR hereby grants to LICENSEE (and its Affiliates) and LICENSEE hereby accepts, an
irrevocable, perpetual, exclusive (even as to LICENSOR) license (with the right of sublicense
through multiple tiers of sublicensees), throughout the entire world, under the Licensed
Technology, to make, have made, use, research, develop, obtain Regulatory Approval for, import,
export, distribute, offer to sell, sell and otherwise transfer Licensed Products. To the
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extent that any Licensed Technology is in-licensed to LICENSOR by a Third Party, the license granted to
LICENSEE under such Third Party technology shall be no greater than the rights granted to LICENSOR
by such Third Party and shall be subject to the rights granted under the applicable agreement
between LICENSOR and such Third Party for such in-license. Any Know-How included within Licensed
Technology which is subject to any of the feasibility study agreements, material transfer
agreements or similar agreements listed in Exhibit M hereto as of the Effective Date
(whether owned, co-owned or licensed to LICENSOR) shall be subject to any applicable licenses
granted under such agreements as of the Effective Date. The license in this Section 2.1 excludes
any and all intellectual property or other rights licensed to LICENSOR under the License Agreement
between [REDACTED: company name]** and LICENSOR dated [REDACTED: agreement date]**.
LICENSOR shall use commercially reasonable efforts to deliver to LICENSEE, or provide LICENSEE with
access to, all Licensed Technology on the Effective Date. Thereafter, for a period of three (3)
years after the Effective Date (or, solely with respect to any Know-How that is excluded from
Licensed Know-How hereunder due to a restriction on disclosure and/or access in a Restricted
Agreement, for a period, if later then the end of such three year period, that is ninety (90) days
after the date when LICENSOR shall notify LICENSEE that such Know-How first becomes part of the
Licensed Know-How due to a cessation of such restriction), LICENSOR shall make any further
disclosures of Licensed Technology in existence on the Effective Date, as reasonably deemed
necessary by LICENSEE (and not already in the possession of LICENSEE), to include, without
limitation, (a) making appropriate personnel reasonably available for disclosure of any Know-How
within the Licensed Technology to LICENSEE, and (b) providing reasonable access (or cause
reasonable access to be provided) to LICENSEE to copy any documents owned by LICENSOR or its
Affiliates or within LICENSOR’s or its Affiliates’ possession or under LICENSOR’S or Affiliates’
Control to the extent containing any Know-How within the Licensed Technology (at LICENSEE’s sole
expense).
2.2 LICENSOR hereby grants to LICENSEE (and its Affiliates) a non-exclusive, perpetual,
irrevocable license (with the right of sublicense through multiple tiers of sublicensees),
throughout the entire world to use the Licensed Trademarks in connection with the development and
commercialization (including, without limitation, marketing and promotion) of Licensed Products.
For the avoidance of doubt, this license shall not be construed to obligate LICENSEE or its
Affiliates to use the Licensed Trademarks in any given case or with any given Licensed Product.
2.3 LICENSOR hereby grants to LICENSEE (its Affiliates and sublicensees) a right of reference
to any and all of LICENSOR’s Regulatory Materials for Atrigel-formulated products existing (and
owned by LICENSOR or, if any exist, for which LICENSOR has an express right as of the Effective
Date to grant such right of reference to LICENSEE hereunder) as of the Effective Date for the
purpose of developing Licensed Products, including for preparing, filing or maintaining regulatory
filings for the Licensed Products with the Regulatory Authorities in connection with Regulatory
Approvals. Upon LICENSEE’s reasonable written request and at LICENSEE’s sole cost as to any
out-of-pocket expenses, LICENSOR shall
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provide appropriate information, consents and notices to any
Regulatory Authorities as are necessary for LICENSEE to effectuate the rights of reference granted
to it in this Section 2.3.
2.4 No license, immunity or other right is granted under this Agreement by LICENSOR either
directly or by implication, estoppel, or otherwise other than as expressly set forth herein.
Without limiting the foregoing, LICENSOR reserves all rights to make, have made, use, research,
develop, import, export, offer to sell, sell, license, sublicense and otherwise transfer all
Retained Products. Furthermore, and notwithstanding anything to the contrary in Section 2.1 or
otherwise in this Agreement, LICENSOR reserves the right on behalf of [REDACTED: company
name]** to practice the Licensed Technology for research purposes to the extent of the
license granted to [REDACTED: company name]** in Section [REDACTED: section number]** of
the [REDACTED: description of license agreement]**.
2.5 LICENSEE shall provide any future sublicensee (including Affiliates and regardless of
tier) with a copy of this Agreement and require each such future sublicensee to be subject to terms
and conditions hereof, as well as require such future sublicensee to acknowledge in writing that
its sublicense is subject to LICENSOR’s rights hereunder. In addition, LICENSEE shall provide
LICENSOR with written notice of any sublicensee promptly after granting any sublicense of the
rights granted to it hereunder (which notice shall identify the sublicensee and provide a general
description of the sublicensed rights).
2.6 LICENSEE shall (and shall cause each of its sublicensees to) ▇▇▇▇ all Licensed Products
and/or associated documentation manufactured or sold by it under the licenses granted to it in
Section 2.1 of this Agreement with an applicable patent notice as may be permitted or required
under ▇▇▇▇▇ ▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇ Code or other applicable law.
2.7 LICENSEE expressly acknowledges that this license is subject to the terms and conditions
of the Existing Out-License Agreements.
2.8 For the avoidance of any doubt and without limiting Section 5.7 hereof, the parties hereto
agree that nothing under any provision of this Agreement shall grant either party any rights,
interest or title, in or to any improvements, modification or enhancements developed or conceived
by the other party, its Affiliates, sublicensees, consultants, representatives, agents, employees,
officers or director with regard to any Licensed Technology, Retained Products, Purchased Files and
Records, Retained Files and Records, Purchased Assets or Excluded Assets (all as such terms are
defined in the Asset Purchase Agreement), Atrigel or otherwise created after the Effective Date of
this Agreement. It is expressly understood that neither party shall be required to advise the
other (or any Third Party deriving rights from the other) of any Atrigel-related information,
discoveries, processes, procedures, compositions of matter, Know-how, trade secrets, designs,
formulae, specifications, methods, techniques, technical information, concepts, patents, patent
application, copyrights, other intellectual property, developments, modifications or inventions
which are created or conceived by or for such party after the Effective Date of this Agreement. If
either party shall file for patent protection on any such improvements, modification or
enhancements, such party shall have no obligation to license rights thereunder to the other.
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2.9 LICENSOR furthermore agrees that, during the period commencing on the Effective Date and
for [REDACTED: term]** thereafter, [REDACTED: transfer procedure]** (a) any
Licensed Patent which solely covers or claims only [REDACTED: description of
products]**, or (b) a substantial portion of the Licensed Know-how owned by it which
primarily relates specifically to [REDACTED: description of products]** (other than in
both cases of (a) and (b) above, Patents, Know-How or other technology related to the [REDACTED:
description of products]** and therefore, for example, excluding any Patent within the
Licensed Patents which otherwise cover or claim the [REDACTED: description of
products]** products), LICENSOR shall [REDACTED: transfer procedure]** not
less than [REDACTED: term]** before LICENSOR [REDACTED: transfer
procedure]**. Within [REDACTED: term]** days of receipt of such notification
from LICENSOR (the “Notice Period”), [REDACTED: transfer procedure]** if [REDACTED:
transfer procedure]**. Upon receipt of [REDACTED: transfer procedure]**,
LICENSOR shall [REDACTED: transfer procedure]** with [REDACTED: name or
party]** regarding any [REDACTED: transfer procedure]** during the remainder
of the [REDACTED: transfer procedure]**; provided, however, that [REDACTED: transfer
procedure]**. If (i) the Notice Period elapses and [REDACTED: name or
party]** did not provide the [REDACTED: transfer procedure]** in accordance
with this Section 2.9 to LICENSOR within such Notice Period, (ii) the [REDACTED: transfer
procedure]**, or (iii) the [REDACTED: term]** period following the Effective
Date elapses, then in each case, LICENSOR shall be [REDACTED: transfer procedure]**
under this Section 2.9.
2.10 Neither LICENSEE nor any Affiliate shall register or attempt to register, any trademarks
that are substantially identical or confusingly similar to the ELIGARD trademarks set forth in
Exhibit E.
2.11 The licenses granted to LICENSEE under this Section 2 shall be subject to the rights (if
any) required to be granted by LICENSOR under the feasibility study and similar agreements existing
as of the Effective Date and listed on Exhibit F hereto (the “Feasibility Study
Agreements”). LICENSOR shall notify LICENSEE thereof promptly upon receipt of a claim to such
rights under any such Feasibility Study Agreement in the event any such claim is for rights to
subject matter that falls within the scope of Licensed Products. If the party making such a claim
under any such Feasibility Study Agreement has a legitimate claim therefore, as determined in good
faith by LICENSOR following consultation and advice from an outside attorney, then LICENSOR shall
have the first right to contact such claimant and negotiate a license in good faith (and LICENSOR
shall consult with LICENSEE in good faith in connection therewith) and LICENSEE shall have the
second right to negotiate with such claimant if requested by LICENSOR, and any royalty, license fee
or other remuneration resulting from such license for such claim shall accrue [REDACTED:
percentage]** to LICENSEE and [REDACTED: percentage]** to LICENSOR if
LICENSOR negotiates such license and [REDACTED: percentage]** to LICENSEE if LICENSEE
negotiates a corresponding sublicense; provided that LICENSOR shall reimburse LICENSEE for all
expenses and costs (both internal and external) incurred by LICENSEE in the contacting of the
claimant and license
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negotiations of such sublicense (solely to the extent incurred with respect to
LICENSEE’s exercise of its second right to negotiate above and solely to the extent incurred during
the period when an obligation to negotiate such rights exists under any such Feasibility Study
Agreement). Notwithstanding anything in the foregoing to the contrary, no rights under the
Licensed Technology shall be granted by LICENSOR to a third party with respect to any
Atrigel-formulated [REDACTED: description of intellectual property]** or
Atrigel-formulated [REDACTED: description of intellectual property]** products. For the
avoidance of doubt, LICENSOR shall fully control and retain all proceeds from (without any
obligation to provide notice or consultation to LICENSEE) any negotiations or licenses granted in
connection with the Feasibility Study Agreements for rights to subject matter that falls solely
within the scope of the Retained Products.
Section 3. Technical Assistance
3.1 Except as expressly set forth in this Agreement or the Asset Purchase Agreement, neither
party shall be required to render any technical assistance of any nature whatsoever to the other
party or any Third Party deriving rights from such other party.
3.2 Except as otherwise expressly provided in the Asset Purchase Agreement, LICENSOR shall
have no obligation to provide LICENSEE with any Licensed Products and LICENSEE shall be free to
enter into one or more supply agreements with such manufacturing contractors as LICENSEE may
select, including any manufacturing contractor(s) used by LICENSOR or any Existing Out-Licensees as
of the Effective Date, upon such terms and conditions as LICENSEE may choose.
Section 4. Paid-up License
4.1 In consideration for the licenses granted by LICENSOR herein, LICENSEE hereby agrees to
pay to LICENSOR an aggregate license fee of $22,675,000 (Twenty-Two Million Six Hundred
Seventy-Five Thousand Dollars) (the “License Fee”), plus (b) if payable, the milestone payments
under Section 4.2. On the Closing of the Asset Purchase Agreement, as that term is defined in such
Asset Purchase Agreement, but subject to LICENSOR’s execution of this License Agreement, LICENSEE
shall pay the License Fee to LICENSOR by wire transfer of immediately available funds to the
following LICENSOR account:
| Bank: | [REDACTED]** | |||
| ABA Routing No. | [REDACTED]** | |||
| Master Account No.: | [REDACTED]** | |||
| Name: | QLT USA | |||
| ▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ | ||||
| ▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ |
Upon full payment of the License Fee due hereunder, the licenses granted hereunder shall be fully
paid-up and royalty free.
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4.2 (a) As further consideration, LICENSEE shall pay LICENSOR the following milestone
payments:
i) upon [REDACTED: description of certain predetermined milestone events]**, for
any Licensed Product consisting of Atrigel-formulated [REDACTED: description of intellectual
property]**, LICENSEE shall pay LICENSOR $2,500,000 US (Two Million Five Hundred
Thousand Dollars) (the [REDACTED: description of intellectual property]**); and
ii) upon [REDACTED: description of certain predetermined milestone events]**, for
any Licensed Product consisting of any Atrigel-formulated product [REDACTED: description of
intellectual property]**, LICENSEE shall pay LICENSOR $2,500,000 US (Two Million Five
Hundred Thousand Dollars) (the [REDACTED: description of intellectual property]**).
(b) LICENSEE shall use commercially reasonable efforts to achieve the [REDACTED: description
of intellectual property]** set forth in Sections 4.2 (a) as soon as reasonably
practicable. Any development or commercialization agreements entered into by LICENSEE with an
Affiliate or Third Party with respect to the foregoing shall be subject to the terms of this
Section 4.2(b). As used herein, the term “commercially reasonable efforts” will mean those efforts
and commitment of resources which are consistent with the efforts and resources that a reasonably
comparable biopharmaceutical company as LICENSEE would use in respect of a business that has
similar commercial value and market potential, taking into account the competitiveness of the
marketplace, the business life-cycle, the proprietary position of LICENSEE and the profitability of
the Atrigel-formulated [REDACTED: description of intellectual property] ** product.
(c) LICENSEE shall provide LICENSOR with a written top line report, which shall consist of a
summary budget and project plan for the contemplated development period, of its development efforts
relating to the achievement of the [REDACTED: description of intellectual property]** on
a [REDACTED: term]** basis, in reasonable, but summary detail, until such time as the
[REDACTED: description of intellectual property]** payment has been made or all
development efforts in respect of any Atrigel-formulated [REDACTED: description of intellectual
property]** product have ceased and LICENSOR has been notified thereof. The first
report shall be delivered to LICENSOR on the [REDACTED: term]** anniversary of the
Effective Date, with each subsequent report to be delivered to LICENSOR at the end of each
subsequent [REDACTED: term]** period and will update the status and any changes to the
summary budget and project plan since the last [REDACTED: term] report.
(d) LICENSEE shall pay each milestone payment due hereunder within thirty (30) days of the
achievement of the applicable milestone by wire transfer to a bank account designated by LICENSOR,
unless otherwise specified in writing by LICENSOR.
4.3 All taxes levied on LICENSOR on account of the payments accruing to LICENSOR under this
Agreement shall be paid by LICENSOR for its own account, including
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taxes levied thereon as income
to LICENSOR. If provision is made in law or regulation for withholding, such tax shall be deducted
from the payment made by LICENSEE, paid to the proper taxing authority and a receipt of payment of
the tax secured and promptly delivered to LICENSOR. LICENSEE shall pay LICENSOR the License Fee
and any milestone payment due hereunder from a bank account of LICENSEE located in the United
States.
Section 5. IP Prosecution, Enforcement and Defense
5.1 Prosecution and Maintenance of Patents
LICENSOR shall have the right, without obligation, to file, prosecute and maintain the
Licensed Patents throughout the world at [REDACTED: description of name or party and percentage]**
expense, as LICENSOR in its sole discretion shall determine from time to time. LICENSOR shall
provide copies to LICENSEE of all substantive correspondence, filings, actions and drafts to or
from LICENSOR and the applicable patent offices with respect to prosecution and maintenance of the
Licensed Patents, including proposed filings, correspondence with or from applicable patent offices
sufficiently in advance of any deadline to enable LICENSEE to consider such correspondence,
filings, and actions and to provide LICENSOR with LICENSEE’s comments with respect thereto.
LICENSOR shall in good faith consider LICENSEE’s comments with respect to all such proposed
correspondence, filings and actions for the Licensed Patents with the applicable patent offices.
LICENSEE shall have the right to request that LICENSOR pursue patent applications within the
Licensed Patents for invention disclosures and unfiled Patent applications listed on
Exhibit C hereto (to the extent not already filed for as of the Effective Date) and in
jurisdictions in which LICENSOR has not yet filed such filings as of the Effective Date (but where
the right to pursue such filings has not lapsed). LICENSOR shall notify LICENSEE in writing within
[REDACTED: term]** days after receiving LICENSEE’s written request therefor whether
LICENSOR intends to pursue such filings. If LICENSOR does not wish to pursue any such filings in
the applicable jurisdictions, then LICENSEE shall have the right to request LICENSOR to prosecute
and maintain any such filings in such jurisdictions, at LICENSEE’s sole expense. In the event that
LICENSOR still chooses not to pursue such filings, or at any time intends to abandon the
prosecution or maintenance of any Licensed Patent, LICENSOR shall have the sole right to do so in
its discretion, provided that LICENSOR shall notify LICENSEE no later than [REDACTED: term]** days
prior to the date it intends to abandon the prosecution or maintenance, as applicable, of any such
Licensed Patent(s) (and LICENSOR shall further notify LICENSEE if LICENSOR determines to change its
decision and not in fact abandon any such Licensed Patent before the end of such [REDACTED: term]**
day period). LICENSEE must notify LICENSOR within such [REDACTED: term]**-day period should
LICENSEE wish to assume the responsibility for prosecuting or maintaining such Licensed Patents, as
applicable, whereupon, subject to any rights of any Existing Out-Licensees under the Existing
Out-License Agreements (which shall take priority hereto), LICENSOR shall permit LICENSEE, at
LICENSEE’s sole expense, to do so, and LICENSOR shall cooperate in any such transfer of
responsibilities. Thereafter, LICENSOR shall have no further obligation to prosecute or maintain
any such Licensed Patent and (subject to the rights of Existing Out-Licensees described above)
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LICENSEE shall have the right, but not the obligation, to prosecute or maintain any such Licensed
Patent at its sole expense. At LICENSEE’s request, LICENSOR shall assign all rights in and to each
Licensed Patent for which LICENSEE has assumed such responsibility for prosecution and/or
maintenance in accordance with the foregoing. LICENSOR agrees not to make or file for any
post-issuance amendments to any issued Licensed Patents (e.g., re-examinations, reissuances or
disclaimers) without [REDACTED: term]** days prior written notice to LICENSEE and
without reasonably considering LICENSEE’s comments with respect thereto.
5.2 Infringement of Licensed Patents by Third Parties.
(a) If either party becomes aware of any alleged, threatened or actual infringement of the
Licensed Patents, it shall promptly notify the other party in writing and provide a full
description thereof.
(b) Subject to Section 5.5 below, if any Patent within the Licensed Patents is infringed or
allegedly infringed by a Third Party, then LICENSOR (or its [REDACTED: description of licensees]**
but, with respect to such licensees, solely with respect to enforcement against infringement
through the manufacture, use or sale of a [REDACTED: description of a product]** ([REDACTED:
description of licensees]**) shall have the right, but not the obligation, to initiate, prosecute
and control any legal action against such Third Party infringement at LICENSOR’s sole expense.
LICENSEE shall reasonably cooperate with LICENSOR at LICENSOR’s sole expense with respect thereto,
including joining or being named in such action as a party plaintiff only if such joinder or naming
is required by applicable law or by a governmental authority for LICENSOR or its sublicensees to
pursue such action and to have proper standing to bring such lawsuit. In the event LICENSOR (or any
Existing Out-Licensee or [REDACTED: description of licensee]**) fails to institute proceedings
against any Third Party infringement within [REDACTED: term]** days after notice given by either
party to the other of said Third Party infringement (or such longer period of time for so long as
any Existing Out-Licensee has such enforcement rights under the Existing Out-License Agreements),
LICENSEE (but not a sublicensee of LICENSEE) shall be entitled to enforce, at its discretion and at
its sole expense, the Licensed Patents against such Third Party infringement by filing a lawsuit
against the infringement of such Licensed Patents against such Third Party. LICENSOR will provide
such reasonable assistance and cooperation to LICENSEE as may be necessary in connection with such
enforcement action, at LICENSEE’s sole expense, including joining such action as a party plaintiff
if required by applicable law to pursue such action. Subject to Section 5.5 and the rights of the
Existing Out-Licensees under the Existing Out-License Agreements or the rights of the [REDACTED:
description of licensees]**, any awards or amounts received as a result of either LICENSOR or
LICENSEE prosecuting any such enforcement action against Third Party infringement of the Licensed
Patents shall be allocated first to reimburse any costs and expenses incurred by the parties and
the remainder shall be allocated [REDACTED: percentage]** to the party undertaking
action against the Third Party infringer and [REDACTED: percentage]** to the other party (provided
that, in the event that LICENSEE is
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required to join or be named in such action in order for
LICENSOR to pursue such action, then, to the extent any such action and corresponding remainder
concerns infringement by a third party’s manufacture, use or sale of a Licensed Product, such
remainder shall be allocated [REDACTED: percentage]**, subject to the rights of the Existing
Out-Licensees under the Existing Out-License Agreements or the rights of the [REDACTED: description
of licensees]**).
5.3 Subject to Section 5.5 below, if a Licensed Patent becomes the subject of any proceeding
commenced by a Third Party in connection with an opposition, reexamination request, action for
declaratory judgment, nullity action, interference or other attack upon the validity, title or
enforceability thereof, then LICENSOR shall notify LICENSEE thereof. LICENSOR shall have the first
right, without obligation, to defend such Licensed Patent at LICENSOR’s sole expense. LICENSEE
shall reasonably cooperate with LICENSOR with respect thereto. Subject to Section 5.5 and the
rights of Existing Out-Licensees under the Existing Out-License Agreements or the rights of the
[REDACTED: description of licensees]**, if LICENSOR (or any Existing Out-Licensee) fails to notify
LICENSEE that it intends to defend against such action not less than [REDACTED: term]** days before
the end of the period statutorily allowed to submit a defense, then LICENSEE shall have the right
to assume defense of such action at LICENSEE’s sole expense and LICENSOR shall reasonably cooperate
with LICENSEE with respect thereto, at LICENSEE’s sole expense. Subject to Section 5.5 and the
rights of the Existing Out-Licensees under the Existing Out-License Agreements or the rights of the
[REDACTED: description of licensees]**, any awards or amounts received as a result of either
LICENSOR or LICENSEE defending any such action shall be allocated first to reimburse any costs and
expenses incurred by the parties and the remainder shall belong to the party undertaking the
defense.
5.4 Subject to this Section 5.4 and Section 5.5, LICENSOR shall have the right, without
obligation, to maintain and protect registration of the Licensed Trademarks throughout the world at
[REDACTED: description of name or party and percentage]** expense, as LICENSOR in its sole
discretion shall determine from time-to-time. In the event that LICENSOR intends to abandon the
maintenance or protection of any the Licensed Trademarks, LICENSOR shall have the sole right to do
so in its discretion, provided that LICENSOR shall notify LICENSEE no later than [REDACTED: term]**
days prior to the date it intends to abandon the maintenance or protection of any such Licensed
Trademarks. LICENSEE must notify LICENSOR within such [REDACTED: term]**-day period should
LICENSEE wish to assume the responsibility for maintaining or protecting such Licensed Trademarks,
whereupon (subject to any rights of any Existing Out-Licensees under the Existing Out-License
Agreements, which shall take priority hereto) LICENSOR shall permit LICENSEE, at LICENSEE’s sole
expense, to do so, and LICENSOR shall cooperate in any such transfer of responsibilities.
Thereafter, LICENSOR shall have no further obligation or right with respect to any such Licensed
Trademark and (subject to the rights of Existing Out-Licensees described above) LICENSEE shall have
the right, but not the obligation, to maintain or protect any such Licensed Trademark at its sole
expense. Each party shall promptly give the other party written notice in the event that it knows
or has reason to believe that any Licensed Trademark is being infringed, either directly or
indirectly, by any Third Party. Subject to Section 5.5, LICENSOR (or the [REDACTED: description of
licensees]**) shall have the prior right, without obligation, to
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enforce such Licensed Trademark
against such infringement at LICENSOR’s expense. Subject to Section 5.5, in the event LICENSOR (or
any Existing Out-Licensee or [REDACTED: description of licensee]**) does not initiate any legal
action with respect to such infringement within [REDACTED: term]** days (or such longer
period of time for so long as any Existing Out-Licensee has such enforcement rights under the
Existing Out-License Agreements), then LICENSEE shall have the right to assume such enforcement of
the Licensed Trademark at LICENSEE’s sole expense and LICENSOR shall reasonably cooperate with
LICENSEE with respect thereto; provided that the infringement pertains to a Licensed Product.
Subject to Section 5.5 and the rights of the Existing Out-Licensees under the Existing Out-License
Agreements or the rights of the [REDACTED: description of licensees]**, any awards or amounts
received as a result of either LICENSOR or LICENSEE defending any such action shall be allocated
first to reimburse any costs and expenses incurred by the parties and the remainder shall belong to
the party undertaking the defense.
5.5 Notwithstanding anything to the contrary in this Section 5, the provisions of this Section
5 are subject to the terms and conditions of any Existing Out-License Agreements. As a result, the
prosecution, maintenance and enforcement of the Licensed Patents and Licensed Trademarks shall be
subject to the terms of the Existing Out-License Agreements and LICENSOR has identified on
Exhibit B all Existing Out-License Agreements whose terms provide the Existing Out-Licensee
with rights in respect of the prosecution, maintenance, defense and enforcement of the Licensed
Patents or Licensed Trademarks (including back-up rights to enforce the Licensed Patents in the
case that LICENSOR does not exercise its first right to enforce such Licensed Patents), to which
this Agreement and the Licensed Patents are subject. For purposes of this Section 5.5, however,
LICENSOR’s parent company, QLT Inc. shall not be deemed an Existing Out-Licensee. As a result:
(a) If any Licensed Patent or any Licensed Trademark is infringed or allegedly infringed by a
Third Party, then, to the extent any Existing Out-Licensee is granted the right to enforce or
prosecute such infringement under the Existing Out-License Agreements, such Existing Out-Licensee
shall have the prior right (and the rights of LICENSEE in Sections 5.2(b), 5.3 and 5.4 shall be
subject to such prior right) to initiate and prosecute judicial or administrative suits, actions or
proceedings against such Third Party infringement. If a Third Party commences or threatens to
commence judicial or administrative suits, actions or proceedings against any party to the
agreements set forth in Part 2 of Exhibit B and such proceeding relates to the Licensed
Patents or the Licensed Trademarks, then, to the extent that any Existing Out-Licensee is granted
rights to defend any such suit, action or proceeding under an Existing Out-License Agreement, such
Existing Out-Licensee shall have the prior right (and the rights of LICENSEE in Sections 5.2(b),
5.3 and 5.4 shall be subject to such prior right) to defend any such judicial or administrative
suits, actions or proceedings; provided, however, that LICENSOR shall use reasonable efforts to
communicate to any Existing Out-Licensee controlling the defense of any such suit, action or
proceeding any LICENSEE comments with respect thereto. LICENSEE shall reasonably cooperate with
such Existing Out-Licensee, at such Existing Out-Licensee’s sole expense, including joining or
being named in such action as a party plaintiff only if such joinder or naming is required by
applicable law or a governmental authority for such Existing
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Out-Licensee to pursue such action and
to have proper standing to bring such lawsuit. To the extent any Existing Out-Licensee does not
exercise its rights under the Existing Out-License Agreement to initiate, prosecute or defend any
such suit, action or proceeding, then the provisions of Section 5.2 (b), 5.3 or 5.4, as applicable,
shall control.
(b) Without limiting the foregoing, LICENSEE acknowledges and agrees that (i) if any Patent
within the Licensed Patents that claims a [REDACTED: company name]** Product (or
manufacture or use thereof) is infringed or is threatened to be infringed by a Third Party, then
[REDACTED: company name]** shall have the prior right, but not the obligation to
initiate, prosecute and control any action with respect to such infringement, and (ii) [REDACTED:
company name]** shall have the right to defend any suit, action or proceeding against
[REDACTED: company name]** alleging infringement of intellectual property rights of a
Third Party by reason of the manufacture, use, sale, offer for sale or import of [REDACTED: company
name]** Products. [REDACTED: company name]** and/or LICENSOR shall be
entitled to retain all recoveries, damages or settlements from any such suits, actions or
proceedings under this Section 5.5(b). LICENSEE agrees to be joined or named as a party to any
such suits, actions or proceedings at [REDACTED: company name]** request if such joinder
or naming is required by applicable law or a governmental authority for [REDACTED: company
name]** to pursue such action and to have proper standing to bring such lawsuit.
5.6 In the event of breach by any sublicensee of LICENSEE hereunder of the terms of the
applicable sublicense agreement, which breach is of such a nature that it results in a breach under
the terms of this Agreement, LICENSEE shall promptly notify LICENSOR thereof. LICENSEE shall have
the obligation to initiate, prosecute and control any action with respect to enforcing the
applicable terms of the sublicense agreement in question with respect to such a breach; provided,
however, that LICENSEE shall first permit LICENSOR to consult with LICENSEE regarding any such
proceeding, to include consultation with any mutually selected external counsel, at LICENSOR’s sole
expense, but control and cost of the proceeding shall at all times remain with LICENSEE.
5.7 Covenants Not to ▇▇▇.
(a) LICENSEE hereby agrees that it shall not institute, prosecute or confer the rights on any
Third Party to institute or prosecute, or in any way knowingly aid in the institution or
prosecution against LICENSOR, its Affiliates, any of LICENSOR’s other licensees or sublicensees of
the Retained Products, any of LICENSOR’s or the foregoing licensees’ or sublicensees’ wholesalers,
retailers or customers, and LICENSOR’s successors and assigns or any employee, consultant, agent,
officer or director of any of the foregoing (collectively, the “Licensor Parties”), any suit,
claim, action or cause of action for damages, costs, loss of services, expenses, injunctive relief,
other equitable relief or compensation, arising out of alleged or actual infringement (past,
present or future) of any Patents now or in the future controlled, directly or indirectly, by
LICENSEE that claim or cover Atrigel or its manufacture or use (excluding, for the avoidance of
doubt, any claims covering an [REDACTED: description of claims]** ), as a
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14
result of the research,
development, manufacture, use, sale or importation of a Retained Product or a product that is
substantially similar to a Retained Product. LICENSEE, however, expressly reserves all rights of
action, claims and demands against any Third Party that is not a Licensor Party. This instrument is
a covenant not to ▇▇▇, and not a release, and shall be binding on LICENSEE’s Affiliates, LICENSEE’s
licensees and sublicensees (whose license/sublicense agreements were entered into after the
Effective Date), in each case of the Licensed Technology, any acquirer of the Licensed Technology
(to which this Section 5.7 applies), as well as LICENSEE’s successors and assigns, and LICENSEE
shall take such action in its agreements with such parties entered into after the Effective Date to
effectuate such binding effect.
(b) LICENSOR hereby agrees that it shall not institute, prosecute or confer the rights on any
Third Party to institute or prosecute, or in any way knowingly aid in the institution or
prosecution against LICENSEE, its Affiliates, any of LICENSEE’s other licensees of the Licensed
Products, any of LICENSEE’s sublicensees under the licenses granted in Section 2.5, any of
LICENSEE’s or the foregoing licensees’ or sublicensees’ wholesalers, retailers or customers, and
LICENSEE’s successors and assigns or any employee, consultant, agent, officer or director of any of
the foregoing (collectively, the “Licensee Parties”), any suit, claim, action or cause of action
for damages, costs, loss of services, expenses, injunctive relief, other equitable relief or
compensation, arising out of alleged or actual infringement (past, present or future) of any
Patents controlled, directly or indirectly, by LICENSOR that claim or cover Atrigel or its
manufacture or use (excluding, for the avoidance of doubt, any claims covering an [REDACTED:
description of claims]**), as a result of the research, development, manufacture, use,
sale or importation of a Licensed Product, or a product that is substantially similar to a Licensed
Product. LICENSOR, however, expressly reserves all rights of action, claims and demands against
any Third Party that is not a Licensee Party. This instrument is a covenant not to ▇▇▇, and not a
release, and shall be binding on LICENSOR’s Affiliates, LICENSOR’s licensees and sublicensees
(whose license/sublicense agreements were entered into after the Effective Date), in each case of
the Licensed Technology, any acquirer of the Licensed Technology (to which this Section 5.7
applies), as well as LICENSOR’s successors and assigns, and LICENSOR shall take such action in its
agreements with such parties entered into after the Effective Date to effectuate such binding
effect.
Section 6. Covenant Not To Compete; Non-Solicit
6.1 LICENSOR acknowledges that the agreements and covenants contained in this Section 6.1 are
essential to protect the value of the rights being licensed by LICENSOR to LICENSEE hereunder.
Therefore, subject to Section 6.2, LICENSOR agrees that for the period commencing on the Effective
Date and ending on the [REDACTED: term]** of the Effective Date, LICENSOR shall not, and shall not
permit its subsidiaries or any other Third Party it controls (as defined in the definition of
“Affiliate” in Section 1.1 hereof) to, anywhere in the world, participate or engage, directly or
indirectly, for itself or on behalf of or in conjunction with any Third Party, including any
Affiliate, whether as an employee, agent, officer, consultant, contractor, director, shareholder,
partner, joint venturer, investor or otherwise, in any research, development, manufacture,
marketing and/or sale of [REDACTED: description of area of non-
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15
competition]**, or grant
any Third Party, including any Affiliate, a right or license to do any of the foregoing
(collectively, the “LICENSOR Restricted Activities”); provided, however, that the foregoing shall
not prohibit (i) research, development, manufacture, marketing, sale and/or any activities for any
Retained Products, or (ii) any activities permitted under the Existing Out-License Agreements
(including, for the avoidance of doubt, the research, development, manufacture, marketing, use or
sale of current or future products licensed thereunder) or (iii) the ownership by LICENSOR or its
Affiliates of equity securities of a public company in an aggregate amount not to exceed 5% of the
issued and outstanding shares of such company.
6.2 If LICENSOR transfers all or substantially all of its business or assets to a Third Party,
or any Affiliate of LICENSOR, or if a Third Party acquires control (as defined in the definition of
“Affiliate” in Section 1.1 hereof) of LICENSOR (in either case, such Third Party or Affiliate
being a “LICENSOR Acquirer”), the obligations and restrictions in this Section 6 shall only apply
to LICENSOR itself and the successor to the LICENSOR business and any subsidiaries of LICENSOR or
such successor or any other Third Party or any other entity that LICENSOR or such successor
controls (as defined in the definition of “Affiliate” in Section 1.1 hereof), but shall not apply
to any Third Party or Affiliate that controls (as defined in the definition of “Affiliate” in
Section 1.1 hereof) LICENSOR or such LICENSOR Acquirer; provided, however, that such Third Party
that controls (as defined in the definition of “Affiliate” in Section 1.1 hereof) LICENSOR or a
LICENSOR Acquirer shall not be permitted to use any Licensed Technology to engage in LICENSOR
Restricted Activities through an Affiliate of such Third Party for the period of time set forth in
Section 6.1.
6.3 LICENSOR acknowledges that the agreements and covenants contained in this Section 6 are
essential to protect the value of the rights being licensed to LICENSEE hereunder. Therefore,
LICENSOR agrees that for the period commencing on the Effective Date and ending on the fifth (5th)
anniversary of the Effective Date, LICENSOR shall not, and shall not permit its respective
Affiliates to, solicit for employment, offer to retain as an employee after the Effective Date, or
hire any Transferred Employee (as defined in the Asset Purchase Agreement); provided, however, that
the restriction in this Section 6.3 shall not prohibit the solicitation or hiring of any individual
who responds to a general advertisement or who contacts LICENSOR or its Affiliates on his or her
own initiative.
6.4 LICENSOR agrees that a monetary remedy for a breach of the agreements set forth in this
Section.6 will be inadequate and impracticable and further agree that such a breach would cause
LICENSEE and its Affiliates irreparable harm, and that LICENSEE and its Affiliates shall be
entitled to temporary and permanent injunctive relief without the necessity of proving actual
damages. In the event of such a breach, LICENSOR agrees that LICENSEE and its Affiliates shall be
entitled to such injunctive relief, including temporary restraining orders, preliminary injunctions
and permanent injunctions as a court of competent jurisdiction shall determine.
6.5 If any provision of this Section 6 is invalid in part, it shall be curtailed, as to time,
location or scope, to the minimum extent required for its validity under the laws of the
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16
United States (or any applicable jurisdiction within the United States) or the applicable foreign jurisdiction and shall be binding
and enforceable with respect to the parties as so curtailed.
6.6 Simultaneously with the execution of this Agreement, LICENSOR shall provide LICENSEE with
an executed letter agreement with QLT Inc., LICENSOR’s parent, substantially in the form of
Exhibit G hereto.
Section 7. Indemnification
7.1 (a) Subject to the terms and conditions of this Section 7, including, without
limitation, the terms and conditions set forth in Section 7.4 below, and notwithstanding
any investigation at any time made by or on behalf of either party hereto or any of the other
Indemnitees hereunder or any knowledge or information that any such Indemnitee may now have or
hereafter obtain, each party (each an “Indemnitor”) agrees to defend, hold harmless and indemnify
the other party, its employees, officers, directors, subsidiaries and/or parent corporations,
and/or Affiliates (individually, an “Indemnitee” and collectively, the “Indemnitees”) from and
against any claims, suits, or causes of action brought by a Third Party against any such Indemnitee
and from and against any and all judgments, decrees, losses, damages, liabilities, fines, costs and
expenses (including any amounts paid in settlement and attorney and expert witness fees)
(collectively, “Losses”) resulting from such Third Party claims, suits or causes of action,
including without limitation those arising on account of any injury or death of persons or damage
to property, in all such cases to the extent caused by, or arising out of, or resulting from,
(i) the indemnifying party’s exercise or practice (or any of its sublicensee’s exercise or
practice) of any license granted to it hereunder, (ii) except with respect to the breach by
LICENSOR of the representations or warranties set forth in Section 8.2 of this Agreement, which
shall be governed by Section 7.1(b), the breach by such party of any representation, warranty,
covenant or other provision of this Agreement, or (iii) the gross negligence or willful misconduct
of such party, except to the extent to which such claims, suits or actions are attributable to the
negligence or the willful misconduct of the Indemnitees or their licensees or sublicensees, or
(iv) any actual or alleged infringement of any United States or foreign Patent by the indemnifying
party’s manufacture, use or sale of any products covered by patents licensed to such indemnifying
party hereunder or any combinations thereof with other products, systems or methods, except to the
extent to which such claims, suits or actions are attributable to the negligence or the willful
misconduct of the Indemnitees or their licensees or sublicensees.
(b) Subject to the terms and conditions of this Section 7, including, without
limitation, the terms and conditions set forth in Section 7.4 below, LICENSOR agrees to
defend, hold harmless and indemnify LICENSEE or its Indemnitees (collectively, the “LICENSEE
Indemnitees”) from any Losses (including, for purposes of this Section 7.1(b) any Losses incurred
directly by the LICENSEE Indemnitees, in addition to Losses resulting from any Third Party claims)
to the extent cause by, or arising out of, or resulting from, the breach by LICENSOR of any
representation or warranty set forth in Section 8.2 of this Agreement; provided, however, that any
claim for indemnification under this Section 7.1(b) shall be brought no later than the twenty-four
(24) month anniversary of the Effective Date (except for claims based on fraud or intentional
misrepresentation, which may be brought at any time) and such claim shall be in writing, set forth
the specific basis for such claim to the extent then feasible and
17
the LICENSEE Indemnitee shall, in
good faith, have reasonable grounds to believe that such a claim may be made.
(c) LICENSEE (on behalf of itself and all the other LICENSEE Indemnitees) acknowledges and
agrees that, except in the case of fraud or intentional misrepresentation and except as otherwise
provided in the immediately following proviso, no claim for indemnification by any LICENSEE
Indemnitee pursuant to the terms of Section 7.1(b) shall be asserted by a LICENSEE Indemnified
Party until the aggregate amount of all Losses to which all of the LICENSEE Indemnitees shall be
entitled by reason of any and all claims for indemnification under Section 7.1(b) exceeds
[REDACTED: dollar amount]** in the aggregate (the “Basket”), in which case such LICENSEE
Indemnitee shall be entitled to recover the aggregate amount of all Losses in excess of the Basket.
(d) Notwithstanding anything contained herein to the contrary, in no event shall the
aggregate amount of Losses paid by LICENSOR under Section 7.1(b) exceed an aggregate amount equal
to [REDACTED: dollar amount]**; provided, however, that the foregoing limitation shall not apply in
the event of fraud or intentional misrepresentation, it being understood and agreed that in such
cases, LICENSEE (and any other LICENSEE Indemnitees) suffering Losses as a result thereof shall be
entitled to be paid an amount equal to all such Losses incurred by them.
(e) Any payment made by the Indemnitor pursuant to this Section 7.1 in respect of any claim
shall be net of (i) any actual insurance proceeds realized by Indemnitee in respect of such claim
and (ii) any net tax benefit actually realized by the Indemnitee or any of its Affiliates as a
result of the incurrence or payment of any Loss in respect of such claim. In computing the amount
of any such tax benefits, the Indemnitee and its Affiliates shall be deemed to recognize all other
items of income, gain, loss, deduction or credit before recognizing any items arising from the
receipt or accrual of any indemnity payment hereunder or the incurrence or payment of any
indemnified Losses for which indemnification is provided under this Section 7.1. For purposes of
this Agreement, the Indemnitee and any of its Affiliates shall be deemed to have “actually
realized” a net tax benefit to the extent that the amount of taxes payable by the Indemnitee or its
Affiliate is reduced below the amount of taxes that the Indemnitee or its Affiliate would have been
required to pay but for the receipt or accrual of the indemnity payment or the incurrence or
payment of such Losses for which indemnification is provided under this Section 7.1. The
Indemnitee shall use its reasonable efforts (which shall not include litigation) to make insurance
claims relating to any claim for which the Indemnitee is seeking indemnification pursuant to this
Section 7.1, provided that the Indemnitee shall not be obligated to make such an insurance claim if
such Indemnitee in its reasonable judgment believes that the cost of pursuing such an insurance
claim together with any corresponding increase in insurance premiums or other chargebacks to such
Indemnitee, as the case may be, would exceed the value of the claim for which such Indemnitee is
seeking indemnification.
(f) The indemnities set forth in this Section 7.1 shall be the exclusive remedies of the
party seeking indemnification for Losses hereunder, and no party shall be entitled to any further
indemnification rights, damages or other remedies in respect thereof, all of which each
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18
party (on
behalf of itself and each of its Indemnitees) hereby waive to the extent permitted by applicable
law.
7.2 The party seeking indemnification under Section 7.1 shall provide the indemnifying party
with prompt notice of the claim, demand or cause of action giving rise to the indemnification
obligation pursuant to this Section 7 and the exclusive ability to defend (with the reasonable
cooperation of the indemnified party, at the indemnifying party’s sole expense) or settle any such
claim, demand or cause of action. The indemnifying party shall assume the defense of any claim,
suit, action or proceeding giving rise to an indemnification obligation on such indemnifying party
under Section 7.1 above, shall retain reputable counsel at the indemnifying party’s own expense,
and shall pay any and all damages assessed against the indemnified party and/or its Indemnitees in
such claim, suit, action or proceeding. The indemnifying party has and shall have full power to
control, manage, litigate and/or settle all matters assumed under this provision; provided that the
indemnifying party shall first obtain the indemnified party’s prior written consent to any such
settlement which admits liability or materially adversely affects the rights granted to the
indemnified party hereunder, which consent will not be unreasonably delayed, conditioned or
withheld. Notwithstanding the foregoing, the indemnified party shall have the right to participate
in the defense of such asserted claim, suit, action or proceeding with separate counsel, if it
desires, at its own expense. If the indemnifying party does not assume the defense of the claim,
the indemnified party may assume the defense with counsel of its choice, but the cost of such
counsel shall be borne solely by the indemnifying party.
7.3 In the event that LICENSEE (or any of its Indemnitees) has made a claim for an
indemnification payment by LICENSOR under this Section 7, LICENSEE may immediately off-set the
amount of such claim against the milestone payments otherwise payable to LICENSOR under Section 4.2
of this Agreement, until such time as such claim for indemnification is denied by a final
non-appealable order of a court of competent jurisdiction; provided that the written notice
of claim sets forth the specific basis for any such claim to the extent then feasible and the
LICENSEE Indemnitee shall, in good faith, have reasonable grounds to believe that such a claim may
be made. Any claim withheld from the milestone payments otherwise payable to LICENSOR under
Section 4.2 prior to a final determination of such claim, shall accrue interest at a rate of
[REDACTED: percentage]** % per annum from the date the milestone payment was otherwise
payable to LICENSOR. In the event a final determination is made that the LICENSEE Indemnitee was
not entitled to be indemnified for such claim, LICENSEE shall pay to LICENSOR the amount of the
milestone payment that LICENSEE withheld pursuant to such claim, plus all accrued interest thereon,
within ten days following the final determination date of such claim.
7.4 WITHOUT LIMITING EACH PARTY’S INDEMNITY OBLIGATIONS UNDER THIS SECTION 7, IN NO EVENT
SHALL EITHER OF LICENSOR OR LICENSEE BE LIABLE FOR ANY INDIRECT, SPECIAL, CONSEQUENTIAL OR PUNITIVE
DAMAGES (INCLUDING, WITHOUT LIMITATION, DAMAGES FOR LOSS OF PROFITS OR EXPECTED SAVINGS OR OTHER
ECONOMIC LOSSES, OR FOR INJURY TO
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PERSONS OR PROPERTY) ARISING OUT OF OR IN CONNECTION WITH THIS
AGREEMENT OR ITS SUBJECT MATTER, REGARDLESS OF WHETHER SUCH PARTY KNOWS OR SHOULD KNOW OF THE
POSSIBILITY OF SUCH DAMAGES.
Section 8. Representations, Warranties and Covenants
8.1 Each party hereby represents, warrants, and covenants to the other party as follows:
(a) As of the Effective Date, it is a company or corporation duly organized, validly existing,
and in good standing under the laws of the jurisdiction in which it is incorporated, and has full
corporate power and authority and the legal right to own and operate its property and assets and to
carry on its business as it is now being conducted and as contemplated in this Agreement,
including, without limitation, the right to grant the licenses granted by it hereunder.
(b) As of the Effective Date, (i) it has the corporate power and authority and the legal right
to enter into this Agreement and perform its obligations hereunder; (ii) it has taken all necessary
corporate action on its part required to authorize the execution and delivery of this Agreement and
the performance of its obligations hereunder; and (iii) this Agreement has been duly executed and
delivered on behalf of such party, and constitutes a legal, valid, and binding obligation of such
party that is enforceable against it in accordance with its terms.
(c) It will not enter into any agreement that would prevent it from granting the rights
granted to the other party under this Agreement.
8.2 LICENSOR hereby represents and warrants to LICENSEE, as of the Effective Date as
follows:
(a) Exhibit H sets forth all registered patents and patent applications, and
Exhibit I sets forth all registered trademark and trademark applications, currently owned
or co-owned by LICENSOR or its Affiliates, in each case covering or claiming Atrigel, a method of
making Atrigel, improvements to Atrigel, a method of using Atrigel, products formed using Atrigel,
or the combination of Atrigel with any active pharmaceutical ingredient. LICENSOR owns all right,
title and interest in and to, or has valid and enforceable, transferable licenses to, all Licensed
Technology and Licensed Trademarks, except for those Licensed Patents described on
Exhibit C as jointly owned. LICENSOR owns or Controls, and is free to disclose to
LICENSEE, all Licensed Know-How, subject only to LICENSOR’s obligations under any Restricted
Agreement described on Exhibit K. No Restricted Agreement or Existing Out-License has any
provisions obligating LICENSOR to negotiate and/or grant rights under the Licensed Technology for
Atrigel-formulated [REDACTED: description of intellectual property] ** or
Atrigel-formulated [REDACTED: description of intellectual property]**. LICENSOR and its Affiliates
are, and to the knowledge of LICENSOR, its licensees are, in compliance in all material respects
with all their respective contractual obligations relating to the use of the Licensed Technology
and/or Licensed Trademarks pursuant to any license or other
| ** | Confidential Treatment Requested |
20
agreement. To the knowledge of
LICENSOR, there is no infringement or misappropriation of any of the Licensed Technology by any
Third Party, including by any employee or former employee of LICENSOR or its Affiliates or
licensees. Except as set forth on Exhibit J, to the knowledge of
LICENSOR, the practice of the Licensed Technology to manufacture or use Atrigel, by itself, in
the form currently manufactured for or used by LICENSOR, its Affiliates, does not infringe any
Patents or misappropriate the trade secrets of any Third Party. There is no pending or, to the
knowledge of LICENSOR or its Affiliates, threatened, claim or litigation contesting the validity,
enforceability or ownership of the Licensed Technology or Licensed Trademarks or the right of
LICENSOR or its Affiliates to exercise any rights therein nor, to the knowledge of LICENSOR or its
Affiliates, is there any legitimate basis for any such claim. Furthermore, except as set forth in
Exhibit J, to the knowledge of LICENSOR or its Affiliates, there is no pending or
threatened claim or litigation contesting the right of LICENSOR’s licensees to exercise any rights
to the Licensed Technology, nor, to the knowledge of LICENSOR or its Affiliates, is there any
legitimate basis for any such claim.
(b) Exhibit K sets forth a complete list of all (i) licenses, sublicenses and other
agreements in force and effect as of the Effective Date in which LICENSOR or any sublicensee of
LICENSOR, including its Affiliates, has granted to any Third Party the right to make, use, sell,
offer for sale, have made or import Atrigel under the Licensed Technology and/or Licensed
Trademarks, except for limited internal use rights under confidentiality, feasibility study and
material transfer agreements, and (ii) all other forbearances to ▇▇▇, settlement agreements and
licensing or cross-licensing agreements to which LICENSOR or its Affiliates is a party relating to
the Licensed Technology and/or Licensed Trademarks. Except for the joint Patents set forth in
Exhibit C, no present or former employee, officer, director or other Affiliate of LICENSOR
or its Affiliates, or agent or outside contractor of any of LICENSOR or its Affiliates, holds any
right, title or interest, directly or indirectly, in whole or in part, in or to any of the Licensed
Patents or, to the knowledge of LICENSOR, in or to any other Licensed Technology or Licensed
Trademarks.
(c) The rights licensed to LICENSEE hereunder for the development of Licensed Products do not
conflict with the rights licensed to any party of the Existing Out-License Agreements nor with any
rights granted by LICENSOR (or any of its predecessors) to any Third Party or Affiliate, including,
without limitation, any rights granted by LICENSOR under the feasibility study and similar
agreements existing as of the Effective Date.
(d) To the knowledge of LICENSOR, no employee, independent contractor, consultant or agent of
LICENSOR or its Affiliates has misappropriated any trade secrets or other confidential information
of any Third Party in the course of the performance of his or her duties as an employee,
independent contractor, consultant or agent of LICENSOR or its Affiliates.
(e) Except as set forth in Exhibit L, each employee of, or consultant to, LICENSOR or
its Affiliates has signed documents transferring to LICENSOR or its Affiliates any and all rights,
title and interest in and to any ideas, inventions or improvements or other Licensed Technology, in
all cases, that was generated in the course of their employment or while providing services to
LICENSOR or its Affiliates.
21
The representations and warranties set forth in this Section 8.2 shall survive for a period of
24 months following the Effective Date. The indemnity provisions of Section 7.1(b) shall
constitute LICENSEE’S sole and exclusive remedy and LICENSOR’S sole and exclusive liability to
LICENSEE arising out of, or related to, any breach of this Section 8.2.
8.3 EXCEPT AS EXPRESSLY STATED IN THIS AGREEMENT (AND WITHOUT LIMITING THE TERMS OF THE ASSET
PURCHASE AGREEMENT), NO REPRESENTATIONS OR WARRANTIES WHATSOEVER, WHETHER EXPRESS OR IMPLIED,
INCLUDING, WITHOUT LIMITATION, WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
NON-INFRINGEMENT, OR NON-MISAPPROPRIATION OF THIRD PARTY INTELLECTUAL PROPERTY RIGHTS, IS MADE OR
GIVEN BY OR ON BEHALF OF A PARTY HEREUNDER. EXCEPT AS EXPRESSLY STATED IN THIS AGREEMENT (AND
WITHOUT LIMITING THE TERMS OF THE ASSET PURCHASE AGREEMENT), ALL REPRESENTATIONS AND WARRANTIES,
WHETHER ARISING BY OPERATION OF LAW OR OTHERWISE, ARE HEREBY EXPRESSLY EXCLUDED.
Section 9. Term of Agreement; Termination
9.1 The term of the licenses set forth herein shall be from the Effective Date until the last
to expire of the Licensed Patents. Upon expiration of the last to expire of the Licensed Patents,
LICENSEE shall have an irrevocable, perpetual, worldwide, royalty free, exclusive license to make,
have made, use, research, develop, sell, offer for sale, export and/or import Licensed Products
(subject to the provisions of this Agreement) under any remaining Licensed Technology applicable to
such Licensed Products. All other licenses granted hereunder shall remain in full force and effect
for the full duration of any intellectual property subject to such license and shall survive any
expiration or termination of this Agreement.
9.2 The termination for whatever reason of this Agreement shall not destroy or diminish the
binding force and effect of any of the terms and conditions herein that expressly or by implication
come into or continue in effect on or after such termination.
Section 10. Notices
Notices and other communications shall be sent by facsimile, express courier service, or by
registered or certified mail to the following address and shall be effective upon mailing:
If to LICENSOR:
QLT USA, Inc.
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: President
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: President
Telephone: (▇▇▇) ▇▇▇-▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
22
with copies to (which shall not constitute notice):
▇▇▇▇▇▇▇▇ & ▇▇▇▇▇▇▇▇ LLP
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, Esq.
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, Esq.
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
and
▇▇▇▇▇▇▇▇ & ▇▇▇▇▇▇▇▇ LLP
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
If to LICENSEE:
Reckitt Benckiser Pharmaceuticals Inc.
▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇ ▇▇▇▇▇▇, Esq.
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attention: ▇▇▇▇ ▇▇▇▇▇▇, Esq.
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
with copies to (which shall not constitute notice):
▇▇▇▇▇▇▇ ▇▇▇▇ & ▇▇▇▇▇▇▇▇▇ LLP
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, Esq.
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇, Esq.
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
and
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ & Perle LLP
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Attention: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇, Esq.
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇-▇▇▇▇
Attention: ▇▇▇▇ ▇. ▇▇▇▇▇▇▇, Esq.
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
or to such other address or fax number as the addressee may have specified in a notice duly given
to the sender as provided herein; provided, however, that any notice or
communication required under Section 5.1 may be made by regular mail, email or facsimile
transmission. Such notice or other communication will be deemed to have been given as of the date
so delivered, telecopied or mailed, subject to confirmation of receipt. Any notice sent by
facsimile transmission will be deemed to have been given or received at the time of facsimile
transmission. Any notice mailed as aforesaid will be deemed to have been received when so
delivered, and if by couriered as aforesaid will be deemed to have been received on the expiration
of two days
23
after it is couriered,
provided that if there will be at the time of sending or between the time of sending and the actual
receipt of the notice a strike, slow down or labor dispute which might affect the delivery of the
notice by courier, then the notice will only be effected if actually received.
Section 11. Confidentiality
11.1 LICENSOR and LICENSEE both agree to hold in confidence and not disclose to any Third
Party and to not use except as provided in this Agreement (such as for the exercise of the licenses
granted herein or performance of obligations hereunder) all proprietary and/or confidential
information (except as is reasonably necessary to obtain patent rights thereon) received by it from
the other hereunder (or in connection with the Asset Purchase Agreement or negotiation thereof,
including any and all information disclosed under the Mutual Confidential Disclosure Agreement
between the parties dated [REDACTED: date]**), without prior written permission of the
disclosing party. Confidential Information within assets purchased by LICENSEE pursuant to the
Asset Purchase Agreement shall be deemed the Confidential Information of LICENSEE hereunder (and
LICENSEE shall be deemed the disclosing party thereof under this Section 11) and Confidential
Information within the Excluded Assets (as defined in the Asset Purchase Agreement) shall be deemed
Confidential Information of LICENSOR hereunder (and LICENSOR shall be deemed the disclosing party
thereof under this Section 9). In any event, Confidential Information hereunder shall not include:
(a) information which at the time of disclosure to the receiving party is in the public
domain, as evidenced in writing;
(b) information which after disclosure to the receiving party becomes part of the public
domain by publication or otherwise through no fault of the receiving party;
(c) information which was in the possession of the receiving party prior to the time of
disclosure as shown by its written records;
(d) information which is disclosed to the receiving party from a Third Party (other than an
Affiliate of the disclosing party) with a valid right to disclose it, provided that the receiving
party reasonably and in good faith concludes that the Third Party is not prohibited from disclosing
such information to the receiving party, whether by a contractual, legal or fiduciary obligation to
the disclosing party or its Affiliates, such Third Party imposing no obligation of confidentiality
on the receiving party and who to the knowledge of the receiving party did not acquire any such
information, directly or indirectly, from the disclosing party; and
(e) information which is independently developed by employees of the receiving party without
access to or use of the confidential information of the disclosing party.
The receiving party of any Confidential Information shall take reasonable precautions
(equivalent to the measures that it takes to protect its own information of like
| ** | Confidential Treatment Requested |
24
importance) to
prevent the unauthorized or accidental disclosure of Confidential Information of the disclosing
party.
11.2 LICENSOR and LICENSEE both agree that they shall cause all employees, consultants,
representatives and agents to enter into appropriate secrecy agreements (except if already subject
to such agreements, such as an existing standard employee confidentiality agreement) when
information which either party is bound to treat confidentially as set forth above in Section 11.1
must necessarily be disclosed to such persons or parties. The receiving party shall be responsible
for the actions or inactions of its employees, agents, representatives and/or Affiliates in the
event of a breach of the foregoing obligations.
11.3 LICENSOR and LICENSEE each hereby agree that the obligations of confidentiality under
this Agreement shall remain in effect during the term of this Agreement and for ten (10) years
thereafter
11.4 Notwithstanding the provisions of Section 11.1 hereinabove, each party may disclose
Confidential Information of the other party:
(a) to the extent and to the persons and entities required by an applicable governmental law,
rule, regulation or order; provided, however, that the responding party shall first (to the extent
practicable) have given prompt notice to the other party hereto to enable it to seek any available
exemptions from or limitations on or protective orders in respect of such disclosure requirement
and shall reasonably cooperate in such efforts by the other party. If the other party does not
obtain such relief after a period that is reasonable under the circumstances (and, in any case,
prior to the expiration of any response deadline imposed by the applicable court or governmental
agency or authority, or by applicable law), then the responding party may disclose that portion of
the Confidential Information of the other party which its counsel advises the responding party that
the responding party is legally compelled to disclose to such court, agency, or authority, at the
same time providing the other party with a copy of the Confidential Information so disclosed, to
the extent legally permissible; provided, however, that the responding party shall use those
commercially reasonable efforts requested of it by the other party (at the other party’s expense)
in attempting to obtain confidential treatment (such as a protective order or similar assurance)
for such Confidential Information as so disclosed. To the extent that any Confidential Information
may include material subject to the attorney-client privilege, work product doctrine or any other
applicable privilege concerning pending or threatened legal proceedings or governmental
investigations, the parties understand and agree that they have a commonality of interest with
respect to such matters and it is their mutual desire, intention and understanding that the
disclosure of such material is not intended to, and shall not, waive or diminish in any way the
confidentiality of such material or its continued protection under the attorney-client privilege,
work product doctrine or any other applicable privilege and any such Confidential Information shall
remain entitled to all protection under these privileges, this Agreement, and under the joint
defense doctrine;
(b) to the extent required to comply with applicable legal requirements including without
limitation as part of regular securities law reporting requirements and/or in accordance with
securities regulatory authority or securities exchange rules, demands and/or practice; provided
that the disclosing party requests confidential treatment of at least the
25
commercial terms and
sensitive technical terms hereof to the extent such confidential treatment is
reasonably available to such party and the other party is given the opportunity to review any
such disclosure in advance to the extent possible;
(c) to the extent required in connection with a party’s performances under this Agreement or
the development of i) the Licensed Products and/or improvements to the Licensed Technology (but
excluding any Confidential Information of LICENSOR disclosed to LICENSEE, but not forming a part of
the Licensed Technology), in respect of LICENSEE, and ii) any products other than the Licensed
Products and/or improvements to the Licensed Technology, in respect of the LICENSOR, including to a
party’s Affiliates and its and their officers and employees, and actual and potential sublicensees
and licensees, potential acquirers, legal and financial advisors, consultants, manufacturers,
clinical investigators, contractors and business partners; provided, however, that the disclosing
party shall treat such Confidential Information with the same degree of care that its treats its
own Confidential Information, including by ensuring that its disclosees are restricted solely to
those having a need to know the Confidential Information in question for the applicable permitted
purpose and are under obligations of confidentiality and non-use at least equivalent in scope (and
duration) to those set forth in Section 11.1 with a duration of no less than ten (10) years from
the date of the agreement under which such Confidential Information is disclosed; provided, however
with respect to the Existing Out-Licensees, the existing confidentiality and non-use provisions
contained in the Existing Out-Licenses shall be deemed sufficient to satisfy the foregoing
obligation (and such provisions need not be amended to comply with the foregoing); and
(d) to the extent such disclosure is necessary to prosecute or defend litigation or otherwise
establish rights or enforce obligations under this Agreement; provided, however,
that prior to any such disclosure, such party shall give the other party reasonable advance notice
of any such disclosure and shall cooperate with the other party in protecting against any such
disclosure and/or obtaining a protective order narrowing the scope of such disclosure and/or use of
the Confidential Information.
12. Miscellaneous
12.1 This Agreement is binding upon the parties hereto, and their successors and assigns;
provided, however, that it shall not be assignable without the prior written consent of both
parties, except that either party may assign this Agreement without the prior written consent of
the other party, to an Affiliate or to a Third Party with which a party merges or amalgamates or to
which it sells all or substantially all of its voting stock or all or substantially all of the
assets of the business to which this Agreement relates. If LICENSOR sells or assigns its rights as
described in the first sentence of this Section 12.1, then LICENSOR shall assign this Agreement to
such purchaser and/or assignee and require that such purchaser and/or assignee agree to be bound by
and comply with this Agreement.
12.2 The terms and conditions stated herein and in the Asset Purchase Agreement comprise the
entire agreement between LICENSOR and LICENSEE with respect to the subject matter hereof,
superseding all prior agreements relating thereto, whether written or verbal, and may not be
modified, altered or amended except in a document referring specifically to this Agreement and
signed by a duly authorized officer of each party hereto. This Agreement will in
26
all events be construed as a whole, according to its fair meaning, and not strictly for or
against a party merely because that party (or the party’s legal representative) drafted the
Agreement. The headings, titles, and captions contained in this Agreement are merely for reference
and do not define, limit, extend, or describe the scope of this Agreement or any provision herein.
Unless the context requires otherwise, (a) the gender (or lack of gender) of all words used in this
Agreement includes the masculine, feminine, and neuter, and (b) the word “including” means
“including, without limitation.”
12.3 Except to the extent required by applicable laws including without limitation as part of
regular securities law reporting requirements and/or in accordance with securities regulatory
authority or securities exchange rules, both parties agree not to disclose or publicly refer to any
provisions of this Agreement, except with the written consent of the other party or as expressly
authorized herein; provided, however, that either party may disclose this Agreement to its
advisors, investors, accountants, attorneys, and to its actual and potential sublicensees,
collaborators, assignees, targets and acquirers in accordance with Section 11.4(c). Notwithstanding
the foregoing, a party may disclose or publicly refer to any provisions of this Agreement that were
already publicly disclosed in a prior mutually approved press release (or pursuant to the
requirements of applicable law) without again obtaining the consent of the other party with respect
to such subject matter that was previously approved for disclosure (or previously disclosed as
required by applicable law).
12.4 This Agreement shall not be binding upon the parties until it has been signed herein
below by or on behalf of each party. No amendment or modification hereof shall be valid or binding
upon the parties unless made in writing and signed by both parties as aforesaid.
12.5 If any provision of this Agreement is found by competent authority to be invalid, illegal
or unenforceable in any respect for any reason, it shall, if possible be narrowed, shortened or
interpreted to achieve the intent of the parties and the validity, legality and enforceability of
any such provision in every other respect and the remainder of this Agreement shall continue in
effect so long as the Agreement still expresses the intent of the parties.
12.6 Failure or delay on the part of either party to exercise any right, remedy, power or
privilege hereunder shall not operate or be construed to operate as a waiver thereof. A waiver, to
be effective, must be in writing and signed by the party making the waiver. No written waiver of
any term or condition of this Agreement shall operate or be construed to operate as a waiver of any
other term or condition, nor shall any written waiver of any breach or default operate or be
construed to operate as a waiver of any other breach or default of the same type as the earlier
waived breach or default.
12.7 The parties to this Agreement agree and declare that no person or entity is an intended
third-party beneficiary to this Agreement. Further, the parties agree and declare that no person
or entity shall have the power to enforce any provision of this Agreement or shall have a cause of
action under this Agreement except the parties hereto.
12.8 All rights and licenses granted under or pursuant to this Agreement (other than with
respect to trademarks) by LICENSOR to LICENSEE are, and shall otherwise be
deemed to be, for purposes of Section 365(n) of the U.S Bankruptcy Code, 11 U.S.C. Section
27
101, et seq., (the “Bankruptcy Code”), licenses of rights to “intellectual property” as defined
under Section 101 of the Bankruptcy Code. In the event that LICENSOR as a debtor-in–possession or a
trustee-in-bankruptcy under the Bankruptcy Code rejects this Agreement or LICENSEE’s right to
continue the licenses under this Agreement, LICENSEE may elect to retain its license rights
hereunder (including, without limitation, its rights of exclusivity) in accordance with Section 365
(n) of the Bankruptcy Code, provided that LICENSEE continues to meet its obligations under this
Agreement and pays LICENSOR (or as otherwise directed by the Bankruptcy Court or provided under
the Bankruptcy Code) any amounts payable by LICENSEE hereunder if any amounts are still outstanding
and/or shall become due and payable pursuant to the terms of this Agreement minus (to the extent
permitted by Section 365 (n) of the Bankruptcy Code) any costs incurred by LICENSEE in connection
with LICENSEE’s performance of obligations required to be performed by LICENSOR under this
Agreement and not performed by LICENSOR. Thereafter, in the manner provided for by Section 365 (n)
of the Bankruptcy Code, neither LICENSOR as debtor-in-possession, nor a trustee-in-bankruptcy,
shall interfere with any of the license rights of LICENSEE under this Agreement
12.9 This Agreement shall be construed, and the legal relations between the parties hereto
shall be determined, in accordance with the law of the State of New York, USA, as such law applies
to contracts signed and fully performed in such State. Each party to this Agreement agrees that
any legal action or proceeding against it arising out of or in connection with this Agreement or
for recognition or enforcement of any judgment rendered in any such action or proceeding may only
be brought in the United States District Court for the Southern District of New York, New York, and
by execution and delivery of this Agreement, each party hereby irrevocably accepts and submits to
the jurisdiction of each of the aforesaid courts in personam, generally and unconditionally with
respect to any such action or proceeding for itself and in respect of its property, assets and
revenues. Each party also irrevocably waives, to the fullest extent permitted by law, any
objection it may now or hereafter have to the laying of venue of any such action or proceeding
brought in any such court and any claim that any such action brought in such court has been brought
in an inconvenient forum.
12.10 WAIVER OF JURY TRIAL. EACH OF THE PARTIES HERETO HEREBY IRREVOCABLY WAIVES ANY AND ALL
RIGHT TO TRIAL BY JURY IN ANY LEGAL PROCEEDING ARISING OUT OF OR RELATED TO THIS AGREEMENT OR THE
TRANSACTIONS CONTEMPLATED HEREBY.
12.11 Each party shall act solely as an independent contractor, and nothing in this Agreement
shall be construed to give either party the power or authority to act for, bind, or commit the
other party in any way. Nothing herein shall be construed to create the relationship of partners,
principal and agent, or joint-venturers between the parties.
28
IN WITNESS WHEREOF, the parties have executed this Agreement in duplicate originals by their
duly authorized officers as of the Effective Date.
| Agreed to: | Agreed to: | |||||||||
| RECKITT BENCKISER | QLT USA, INC. | |||||||||
PHARMACEUTICALS INC. |
||||||||||
By:
|
/s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇ | By: | /s/ ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ | |||||||
Name:
|
▇▇▇▇▇ ▇▇▇▇▇▇▇ | Name: | ▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ | |||||||
Title:
|
President | Title: | President | |||||||
Date:
|
8-25-08 | Date: | 8-25-08 | |||||||
29
CONFIDENTIAL TREATMENT REQUESTED BY QLT INC.
Exhibit A
Existing Dental Products
[REDACTED: description of dental products]**
| ** | Confidential Treatment Requested |
A-1
Exhibit B
Existing Out-License Agreements
PART 1. Existing Out-License Agreements
[REDACTED: description of license agreements] **
PART 2. Existing Out-License Agreements under which Licensee and/or the Existing Out-Licensee has
rights in respect of the prosecution, maintenance, defense and/or enforcement of the Licensed
Patents and/or Licensed Trademarks
[REDACTED: description of license agreements] **
| ** | Confidential Treatment Requested |
B-1
EXHIBIT C
Licensed Patents
Licensed Patents
[REDACTED: list of patents] **
| ** | Confidential Treatment Requested |
C-1
Exhibit D
Licensed Trademarks
[REDACTED: list of trademarks] **
| ** | Confidential Treatment Requested |
D-1
Exhibit E
Eligard Trademarks
| 1. | Eligard® | |
| 2. | Leuprogel™ |
E-1
Exhibit F
Feasibility Study Agreements
[REDACTED: description of feasibility study agreements] **
| ** | Confidential Treatment Requested |
F-1
Exhibit G
Form of Letter Agreement with QLT Inc.
Reckitt Benckiser Pharmaceuticals, Inc.
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August 25, 2008
QLT Inc.
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Re: Covenant Not to Compete; Non-Solicit
Ladies and Gentlemen:
Reference is hereby made to (i) that certain Asset Purchase Agreement, dated as of August 25,
2008, by and between QLT USA, Inc. (“QLT USA”) and Reckitt Benckiser Pharmaceuticals, Inc.
(the “Buyer” or “LICENSEE”), a copy of which is attached hereto as Exhibit
A (the “Purchase Agreement”) and (ii) that certain License Agreement, dated as of
August 25, 2008, by and between QLT USA and the Buyer, a copy of which is attached hereto as
Exhibit B (the “License Agreement”). Capitalized terms used herein and not defined
herein shall have the meanings set forth in the License Agreement, unless specified otherwise. In
consideration of the mutual covenants set forth below and other good and valuable consideration,
the receipt and sufficiency of which are hereby acknowledged, and in order to induce the Buyer to
enter into the Purchase Agreement and the License Agreement with QLT USA, the parties hereto hereby
agree as follows:
1. Covenant Not To Compete; Non-Solicit. QLT Inc. (“you” or “Parent”)
hereby agrees to be bound by Sections 6.1 to 6.5 of the License Agreement as if Parent were
a party to such License Agreement as LICENSOR, and all references to “LICENSOR” in Sections 6.1
to 6.5 of the License Agreement shall be deemed to refer to Parent.
2. Governing Law/Choice of Forum. This Agreement shall be construed, performed and
enforced in accordance with, and governed by, the laws of the State of New York, without giving
effect to the principles of conflicts of laws thereof. Each party to this Agreement agrees that
any legal action or proceeding against it arising out of or in connection with this
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Agreement or for recognition or enforcement of any judgment rendered in any such action or
proceeding may only be brought in the United States District Court for the Southern District of New
York, New York, and by execution and delivery of this Agreement, each party hereby irrevocably
accepts and submits to the jurisdiction of each of the aforesaid courts in personam, generally and
unconditionally with respect to any such action or proceeding for itself and in respect of its
property, assets and revenues. Each party also irrevocably waives, to the fullest extent permitted
by law, any objection it may now or hereafter have to the laying of venue of any such action or
proceeding brought in any such court and any claim that any such action brought in such court has
been brought in an inconvenient forum.
3. WAIVER OF JURY TRIAL. EACH OF THE PARTIES HERETO HEREBY IRREVOCABLY WAIVES ANY AND
ALL RIGHT TO TRIAL BY JURY IN ANY LEGAL PROCEEDING ARISING OUT OF OR RELATED TO THIS AGREEMENT OR
THE TRANSACTIONS CONTEMPLATED HEREBY.
4. Amendment. No modifications of this Agreement or waiver of the terms and
conditions hereof will be binding unless approved in writing by the parties hereto. It is further
agreed that no failure or delay in exercising any right, power or privilege hereunder will operate
as a waiver thereof, nor will any single or partial exercise thereof preclude any other or further
exercise thereof or the exercise of any right, power or privilege hereunder.
5. Entire Agreement. This Agreement contains the entire agreement between the parties
hereto concerning the subject matter hereof and supersedes all previous agreements, written or
oral, relating to the subject matter hereof.
6. Notices.
If to Parent:
QLT Inc.
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with a copies to (which shall not constitute notice):
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Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
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Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
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and
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If to the Buyer:
Reckitt Benckiser Pharmaceuticals, Inc.
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with copies to (which shall not constitute notice):
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and
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7. Counterparts. This Agreement may be executed in multiple counterparts, each of
which shall be deemed to be an original, but both of which shall constitute the same agreement.
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Please confirm your agreement with the foregoing by signing and returning one copy of this
Agreement, whereupon this Agreement shall become a binding agreement between Parent and LICENSEE as
of the date first written above.
| Very truly yours, RECKITT BENCKISER PHARMACEUTICALS INC. |
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| By: | ||||
| Name: | ||||
| Title: | ||||
ACCEPTED AND AGREED
AS OF THE DATE FIRST WRITTEN ABOVE:
AS OF THE DATE FIRST WRITTEN ABOVE:
QLT INC.
By: |
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Title: |
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EXHIBIT H
Registered Patents and Patent Applications
Registered Patents and Patent Applications
[REDACTED: description of patents and patent applications] **
| ** | Confidential Treatment Requested |
H-1
Exhibit I
All LICENSOR Trademarks
| 1. | Eligard® | |
| 2. | Leuprogel™ | |
| 3. | Atrix™ | |
| 4. | Sunburst Logo |
I-1
Exhibit J
Exceptions to Intellectual Property Representations and Warranties
[REDACTED: exceptions to Intellectual Property Representations and Warranties]**
| ** | Confidential Treatment Requested |
J-1
Exhibit K
List of Licenses and Sublicenses Granted by LICENSOR
| 1. | Existing Out-License Agreement (See Exhibit B) | |
| 2. | The following additional agreements |
[REDACTED: description of additional agreements] **
| 3. | Forbearance to ▇▇▇ and Settlement Agreements |
[REDACTED: description of additional agreements] **
| ** | Confidential Treatment Requested |
K-1
Exhibit L
Employees or Consultants Not Having Signed Documents Transferring Rights to LICENSOR
| 1. | [REDACTED: exceptions to Representation and Warranty]** |
| ** | Confidential Treatment Requested |
L-1
Exhibit M
List of agreements under which Know-how included within Licensed Technology is subject to certain
out-licenses.
[REDACTED: list of agreements] **
| ** | Confidential Treatment Requested |
M-1