LICENSE AGREEMENT
Execution
Copy
THIS
LICENSE AGREEMENT (this "Agreement")
is
made and entered into effective as of October 12, 2005 (the "Effective
Date"),
by
and between Access Pharmaceuticals, Inc., a Delaware corporation ("Licensor")
and
ULURU, Inc., a Delaware corporation ("Licensee").
RECITALS:
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A.
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Licensor
and Licensee have entered into an Asset Sale Agreement of even
date
herewith (the "ASA")
whereby Licensor is selling certain of its assets and liabilities
to
Licensee as of the Closing Date (as defined
therein).
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B.
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Pursuant
to the ASA, Licensor has retained ownership of certain patents
and patent
applications, including certain patent applications related to
its
nanoparticle aggregate technology (as described in Exhibit A
attached hereto, the "Patents").
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C.
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Licensee
desires to obtain from Licensor, and Licensor desires to grant
to
Licensee, an exclusive, fully-paid up, worldwide license under
the Patent
Rights (as defined below) in the Field of Use described below,
on the
terms and conditions set forth in this
Agreement.
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NOW,
THEREFORE, in consideration of the foregoing recitals and the mutual
representations, warranties, covenants and agreements contained herein, the
parties hereto agree as follows:
| 1. |
Definitions.
Capitalized terms used but not defined herein shall have the meanings
set
forth in the ASA.
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| (a) |
"Affiliate"
when
used to indicate a relationship with any person or entity, means
(i) any corporation, firm, partnership or other entity, whether de
jure or de facto, which directly or indirectly owns, is owned by
or is
under common ownership with such person or entity to the extent of
at
least fifty percent (50%) of the equity (or such lesser percentage
which
is the maximum allowed to be owned by a foreign corporation in a
particular jurisdiction) having the power to vote on or direct the
affairs
of the entity, or (ii) any person, firm, partnership, corporation or
other entity actually controlled by, controlling or under common
control
with such person or entity.
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| (b) |
"Confidential
Information"
means any information which is disclosed by Licensee or Licensor
during
the term of this Agreement which is or should be reasonably understood
by
the receiving party to be confidential or proprietary to the disclosing
party, including, without limitation, any non-public information
of
Licensee or Licensor, and any scientific or technical data, know-how
or
expertise of Licensee or Licensor that relates to a Licensed Product
(whether existing at or after the Effective Date); provided,
however,
that "Confidential Information" shall not include information that
(i) was
in the receiving party's possession or was known to it prior to its
receipt from the disclosing party, as evidenced by the receiving
party's
written records; (ii) is or becomes public knowledge without the
fault of
the receiving party; (iii) is or becomes rightfully available on
an
unrestricted basis to the receiving party from a source other than
a party
owing an obligation of confidentiality to the disclosing party; or
(iv) is
independently developed by employees of the receiving party who have
not
had direct or indirect access to the disclosing party's Confidential
Information, as evidenced by the receiving party's written
record.
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| (c) |
"FDA"
means the Food and Drug Administration of the U.S. Department of
Health
and Human Services.
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| (d) |
"Field
of Use"means all applications of the Patent Rights excluding subcutaneous
or intramuscular drug delivery implants.
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| (e) |
"Improvements"means,
individually and collectively, all discoveries, inventions, know-how,
techniques, methodologies, modifications, improvements, designs and
data
(whether or not protectable under patent, trade secrecy or similar
laws)
relating to additions, developments, enhancements, updates and other
changes in or to the Patent Rights.
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"Licensed
Product"means
any product or device that: (i) is developed, designed, modified,
improved, manufactured, used, imported, sold or offered for sale
by or on
behalf of the Licensee or its Affiliates (or its or their sublicensees)
that would, in the absence of this Agreement, infringe a Valid and
Enforceable claim in the Patent Rights; or (ii) incorporates the
Patent
Rights.
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"Patent
Rights"means
each and all of the following: (i) all right, title and interest
of
Licensor and its Affiliates in the Patents, any Valid and Enforceable
claim in any patent issuing from any patent applications, and any
Valid
and Enforceable claim in any issued patent, claiming priority to
any of
the foregoing, including any reissues, re-examinations, divisionals,
continuations and continuations-in-part, and extensions thereof;
and (ii)
any corresponding foreign patents or patent applications related
or
claiming priority thereto.
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"Valid
and Enforceable"means,
with respect to any patent claim, a claim in any unexpired patent
which
has not been held invalid or unenforceable by a decision of a court
or
other governmental agency of competent jurisdiction, unappealable
or
unappealed within the time period allowed for appeal, or which has
not
been admitted to be invalid through reissue, reexamination or
disclaimer.
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2. License.
| (a) |
Grant.Licensor
hereby grants to Licensee and its Affiliates an exclusive, worldwide,
nontransferable right and license, with the right to grant sublicenses
as
set forth in Section 2(b), under the Patent Rights (including, without
limitation, any Improvements conceived or reduced to practice by
an
employee, agent, or consultant of Licensor) to develop, design, modify,
improve, make, have made, use, import, offer to sell and sell the
Licensed
Products solely in the Field of Use during the term of this Agreement.
Licensee hereby acknowledges that: (i) Licensor is the sole and exclusive
owner of all right, title and interest in and to the Patent Rights,
and
(ii) Licensor retains the right to use the Patent Rights for its
own
purposes and to use and grant to others licenses to use the Patent
Rights
outside the Field of Use. Except as set forth in this Agreement,
Licensee
shall not have any right, title or interest in or to the Patent Rights.
Licensee and its Affiliates shall have no right to manufacture, use,
import, offer to sell or sell Licensed Products outside of the Field
of
Use. Licensee will own all rights, title and interest in and to any
Improvement conceived or reduced to practice by an employee, agent,
or
consultant of Licensee or its Affiliates.
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| (b) |
Sublicenses.Licensee
and its Affiliates may grant sublicenses under the Patent Rights
without
the prior written consent of the Licensor solely in the Field of
Use;
provided,
however, that (i) such sublicenses are no less protective of Licensor's
rights as the provisions set forth in this Agreement, and to the
extent
applicable, shall include all of the rights and obligations due to
Licensor hereunder; and (ii) Licensee makes payments to Licensor
based
upon milestones and sales of Licensed Products by its Affiliates
and such
sublicensees in accordance with Section 3, as if such milestones
and sales
of Licensed Product were reached and/or made by Licensee.
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| (c) |
Patent
Marking.Licensee,
its Affiliates and all sublicensees shall xxxx all Licensed Products
in
accordance with the statutes of any country where a patent application
has
been filed or a patent issued relating to the Patent Rights. To the
extent
the Licensed Product cannot be marked, such marking shall be included
in
the literature and/or marketing materials describing the Licensed
Product.
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3. Payments.
| (a) |
Milestone
Xxxxxxxx.Xx
consideration of the licenses granted herein, Licensee shall make
the
milestone payments to Licensor as set forth in Section 3.2 of the
ASA.
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| (b) |
Notice
of Triggering Events.
Licensee shall provide Licensor with prompt written notice of: (i)
the
commencement of Phase II clinical testing of any Licensed Product;
(ii)
execution of any agreement by and between Licensee or its Affiliates
and
any third party with respect to any Patent Rights or a Licensed Product;
and (iii) the first commercial sale of each Licensed Product
("First
Commercial Sale").
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| (c) |
Books
and Records.Licensee
agrees to keep, and shall cause its Affiliates and sublicensees to
keep,
complete and accurate books of account and records covering all
transactions relating to this Agreement, including Annual Net Sales
as
reported pursuant to Section 3.2 of the ASA. All such books of account
and
records shall be kept available for at least two (2) years after
the
termination or expiration of this
Agreement.
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| (d) |
Expenses.Unless
otherwise specifically set forth herein, all fees, costs and expenses
incurred by Licensee in developing, manufacturing, promoting, marketing
and selling Licensed Products or otherwise incurred under this Agreement
shall be borne solely by Licensee.
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4. Regulatory
Approval and Commercialization.
| (a) |
Regulatory
Approvals.Licensee
shall be responsible, at its expense, for filing, obtaining, and
maintaining all necessary
authorizations from the FDA and any comparable foreign regulatory
authorities for the marketing and sale of Licensed Products in the
United
States and such foreign countries as Licensee, in its sole discretion,
determines. Licensee's
obligations under this Section 4(b) shall include the preparation
and
filing of any required submissions and the establishment and oversight
of
any required clinical investigations and clinical follow-up relating
to
future commercial sale of the Licensed
Products.
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| (b) |
Manufacturing
and Sales.Upon
receipt of a substantially equivalent letter from the FDA clearing
the
Licensed Product for marketing, Licensee shall be responsible for
manufacturing, marketing and selling such Licensed Product and Licensee
shall use commercially reasonable efforts to market and sell such
Licensed
Product.
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| 5. |
Licensee's
Representations and Warranties.Licensee
hereby represents and warrants to Licensor that as of the date
hereof:
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| (a) |
Licensee
is a corporation duly organized, validly existing and in good standing
under the laws of the State of Delaware, and this Agreement has been
duly
authorized by all necessary corporate action on the part of
Licensee.
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| (b) |
This
Agreement is the legal, valid and binding obligation of Licensee,
enforceable against Licensee in accordance with its
terms.
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| (c) |
Neither
the execution and delivery of this Agreement nor the compliance with
the
terms and conditions hereof will conflict with, result in a breach
or
violation by Licensee of or constitute a default under any of the
terms,
conditions or provisions of any contract, agreement or other instrument
to
which Licensee is or may be bound or
affected.
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| (d) |
Licensee
will comply with all applicable laws in performing its obligations
under
this Agreement.
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| 6. |
Licensor's
Representations and Warranties.Licensor
hereby represents and warrants to Licensee that as of the date
hereof:
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| (a) |
Licensor
is a corporation duly organized, validly existing and in good standing
under the laws of the State of Delaware, and this Agreement has been
duly
authorized by all necessary corporate action on the part of
Licensor.
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| (b) |
This
Agreement is the legal, valid and binding obligation of Licensor,
enforceable against Licensor in accordance with its
terms.
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| (c) |
Neither
the execution and delivery of this Agreement nor the compliance with
the
terms and conditions hereof will conflict with, result in a breach
or
violation by Licensor of or constitute a default under any of the
terms,
conditions or provisions of any contract, agreement or other instrument
to
which Licensor is or may be bound or
affected.
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| (d) |
Licensor
will comply with all applicable laws in performing its obligations
under
this Agreement.
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EXCEPT
FOR THE REPRESENTATIONS AND WARRANTIES IN SECTIONS 5 AND 6, THE PATENT RIGHTS
ARE LICENSED ON AN "AS IS" BASIS, AND NO PARTY MAKES ANY OTHER EXPRESS OR
IMPLIED WARRANTY HEREUNDER, INCLUDING, WITHOUT LIMITATION, ANY IMPLIED WARRANTY
OF TITLE, NON-INFRINGEMENT, OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE, AND EACH HEREBY DISCLAIMS THE SAME.
7. Term
and Termination.
| (a) |
Term.The
term of this Agreement shall commence on the Effective Date and shall
remain in force, unless terminated earlier in accordance with Section
7(b), until the last to expire of the Patent
Rights.
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| (b) |
Termination.Notwithstanding
the provisions of Section 7(a), this Agreement may be terminated
upon
mutual written agreement of the parties.
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| (c) |
Rights
and Obligation on Xxxxxxxxxxx.Xx
the event of termination or expiration of this Agreement for any
reason,
the parties shall have the following rights and
obligations:
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| (i) |
Licensee
shall remain responsible for any payment due to Licensor that has
accrued
prior to the effective date of
termination.
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| (ii) |
The
licenses granted to Licensee under Sections 2(a) and 2(b) above shall
immediately terminate and be of no further force and effect. Licensor,
at
its sole discretion, shall determine whether any or all sublicenses
entered into by and between Licensee and its sublicensees prior to
the
effective date of termination of this Agreement shall be canceled
or
assigned to Licensor.
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| (iii) |
Sections
1, 2(c), 3, 5, 6, 7, 8, 9, 10, 11 and 12 shall survive termination
of this
Agreement.
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| (iv) |
Subject
to its obligations under Section 3, Licensee, its Affiliates and
sublicensees shall be permitted to sell any inventory of Licensed
Product
in fully-finished form on hand at the effective date of termination.
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| (v) |
Each
party will return to the other party or certify in writing to the
other
party that it has destroyed all documents and other tangible items
it or
its employees or agents have received or created pursuant to this
Agreement pertaining, referring or relating to the Confidential
Information of the other party.
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8. Patent
Prosecution and Infringement.
| (a) |
Patent
Matters.Licensor
shall pay when due all maintenance fees for the Patent Rights in
accordance with applicable laws and regulations. Licensor shall have
sole
responsibility for the prosecution of the Patent Rights before the
applicable governing examining authority, except that the Licensee
shall
have the right to participate, at its own expense, in the prosecution
on
any patent claims before the applicable examining authority that
encompass
subject matter in the Field of Use, including, but not limited to,
the
drafting and submitting to the examining authority of new patent
claims in
the Field of Use either in a pending, continuation or divisional
application ("New Patent Claims") and to review and approve any
submissions to the examining authority by Licensor that pertain to
claims
encompassing subject matter in the Field of Use. In the event Licensee
requests that Licensor prosecute any New Patent Claims, Licensor
shall
prosecute such New Patent Claims at Licensee's expense, subject to
Licensee's right to participate as set forth above. Licensor shall
keep
Licensee promptly apprised of all proceedings concerning prosecution
of
the Patent Rights before the applicable examining authority and timely
provide copies of all correspondence, filings and actions with such
authorities. If Licensor intends to abandon any of the Patent Rights,
it
shall so notify Licensee of its intent at least 30 days prior to
such
abandonment and shall assign any such rights to prosecute to Licensee.
Following such assignment, Licensee shall have the right to prosecute
such
abandoned Patent Rights in its own name at its own expense. Licensee
and
Licensor shall cooperate fully with each other to execute all necessary
documentation to enable each party to perform its duties and exercise
its
rights under the terms of this Section
8(a).
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| (b) |
Infringement.(i)
When information comes to the attention of Licensor or Licensee to
the
effect that any of the Patent Rights in the Field of Use have been
or are
threatened to be infringed or misappropriated by a third party, Licensee,
or Licensor, should Licensee decline to do so (as shall be evidenced
by
Licensee delivering notice to Licensor of its election not to take
action)
(as applicable, the "Prosecuting
Party"),
shall have the right, but not the obligation, at its expense, to
take such
action as the Prosecuting Party may deem necessary to prosecute or
prevent
such infringement or misappropriation, including the right to bring
or
defend any suit, action or proceeding involving any such disclosure,
infringement or misappropriation. Licensor or Licensee, as applicable,
shall notify the other party hereto promptly of the receipt of any
such
information with respect to third party infringement or misappropriation
and of the commencement of any such suit, action or proceeding related
thereto. If the Prosecuting Party determines that it is necessary
or
desirable for the other party hereto to join any such suit, action
or
proceeding, the other party hereto shall execute all documents and
perform
such other acts as may be reasonably required. The
Prosecuting Party will reimburse the other party for its reasonable
expenses incurred in connection with such matters, after the Prosecuting
Party's reimbursement of its own costs and expenses.
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(i)
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The
Prosecuting Party may collect for its own use all damages, profits,
settlements and awards of whatever nature recoverable from such
suit or in
settlement thereof, and shall have the right to first reimburse
itself,
out of any such sums recovered in such suit or in settlement thereof
for
all costs and expenses, including reasonable attorneys' fees, reasonably
involved in the prosecution of such suit. Any funds that shall
remain from
said recovery shall then be used to reimburse the cooperating party,
if
applicable, for its reasonable expenses, with the remainder to
be retained
by the Prosecuting Party.
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9. Indemnification.
| (a) |
Indemnification
by Licensor.
Licensor shall indemnify, hold harmless, defend and protect Licensee
and
its Affiliates, sublicensees, successors, assigns, employees,
representatives and agents ("Licensee
Indemnitees")
from and against any and all claims, causes of action, costs, expenses,
losses, damages and liabilities (including, without limitation, reasonable
attorneys' fees) ("Losses")
imposed upon the Licensee Indemnitees by a third party arising out
of or
resulting from (i) the breach of Licensor's representations, warranties
or
obligations under this Agreement; or (ii) any
negligence or intentional misconduct by Licensor (or its Affiliates
agents, consultants or employees) in performing its obligations under
this
Agreement. The
foregoing indemnification action shall not apply in the event and
to the
extent that a court of competent jurisdiction determines that such
Losses
arose as a result of any Licensee Indemnitees' negligence, intentional
misconduct or breach of this Agreement or are the subject of Section
9(b).
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| (b) |
Indemnification
by Licensee.
Licensee shall indemnify, hold harmless, defend and protect Licensor
and
its Affiliates, successors, assigns, employees, representatives and
agents
("Licensor
Indemnitees"),
from and against any and all Losses imposed upon the Licensor Indemnitees
by a third party arising out of or resulting from (i) the breach
of
Licensee's representations, warranties or obligations under this
Agreement, (ii) any
negligence or intentional misconduct by Licensee (or its Affiliates
agents, consultants or employees) in performing its obligations under
this
Agreement; or
(iii) any claim related to the development, design, manufacture,
use,
import, offer or sale of the Licensed Products by Licensee. The
foregoing indemnification action shall not apply in the event and
to the
extent that a court of competent jurisdiction determines that such
Losses
arose as a result of any Licensor Indemnitees' negligence, intentional
misconduct or breach of this Agreement or are the subject of Section
9(a).
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| (c) |
Procedure.
If a claim by a third party is made against an indemnified party
and if
the indemnified party intends to seek indemnity with respect thereto
under
this Section 9, such indemnified party shall promptly notify the
indemnifying party of such claim; provided
that failure to give timely notice shall not affect the rights of
the
indemnified party so long as the failure to give timely notice does
not
adversely affect the indemnifying party's ability to defend such
claim
against a third party. The indemnifying party shall be entitled to
assume
the defense thereof, with counsel selected by the indemnifying party.
The
indemnifying party shall have control of the defense of any such
action,
including any appeals and negotiations for the settlement or compromise
thereof and shall have full authority to enter into a binding settlement
or compromise; provided
that the indemnifying party shall not enter into any settlement or
compromise which may adversely affect the indemnified party without
the
indemnified party's consent, which consent shall not be unreasonably
withheld. If the indemnifying party assumes the defense of such claim,
the
indemnifying party shall not be responsible for any legal or other
expenses subsequently incurred by such indemnified party in connection
with the defense thereof. The indemnified party may participate,
at its
own cost and expense, in the defense of any such claim; provided
that the indemnifying party shall control such
defense.
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| (d) |
Cooperation
as to Indemnified Liability.
Each indemnified party hereto shall, at the expense of the indemnifying
party, cooperate fully with the indemnifying party with respect to
access
to books, records, or other documentation within the indemnified
party's
control, if deemed reasonably necessary or appropriate by the indemnifying
party in the defense of any claim that may give rise to indemnification
hereunder.
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| 10. |
Confidentiality.(a)
Confidential Information. Confidential Information of each party
is the
exclusive property of such party. Confidential Information of either
party
may be used by the other party only in connection with the performance
of
or as authorized by this Agreement. Each party will protect the
confidentiality of Confidential Information of the other party in
the same
manner that it protects the confidentiality of its own proprietary
and
confidential information, including, without limitation, by entering
into
appropriate confidentiality agreements with Affiliates, sublicensees,
employees, independent contractors and subcontractors. Access to
and use
of Confidential Information will be restricted to those of Licensor's
and
Licensee's Affiliates, employees or contractors engaged in a use
permitted
under this Agreement and who have been apprised of the confidential
nature
of such information. Each party will be responsible for any breaches
of
this Section 10 by its Affiliates, employees or contractors. Confidential
Information may not be copied or reproduced without the disclosing
party's
prior written consent, except as necessary for use in connection
with this
Agreement. Upon request of the other party or termination of this
Agreement, each party shall return all such Confidential Information
to
the other party.
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(b) Disclosure
Upon Process. In
the
event either party receives a subpoena, or other validly-issued administrative
or judicial process, requesting that Confidential Information of the other
party
be disclosed, it will promptly notify the other party of such receipt. The
party
receiving such request will thereafter be entitled to comply with such subpoena
or other process, only to the extent required by law.
(c) Breach. If
either
party learns of any breach of this Section 10, it shall promptly notify the
other party. Breach or threatened breach of this Section 10 could cause
irreparable harm to the affected party and such party shall be entitled,
without
first exhausting other remedies or procedures, to equitable relief, including
injunctive relief, in addition to all of its other rights and remedies at
law or
in equity that may be available to it.
| 11. |
Limitation
of Liability.
EXCEPT FOR: (i) BREACH OF CONFIDENTIALITY OBLIGATIONS UNDER SECTION
9,
(ii) AMOUNTS PAYABLE WITH RESPECT TO THIRD PARTY INDEMNIFICATION
CLAIMS,
AND (iii) AMOUNTS PAYABLE WITH RESPECT TO LICENSOR'S FAILURE TO PROSECUTE
AND MAINTAIN THE PATENT RIGHTS AS PROVIDED HEREIN, NEITHER PARTY
SHALL BE
LIABLE TO THE OTHER FOR LOST PROFITS OR FOR ANY INDIRECT, INCIDENTAL,
CONSEQUENTIAL, SPECIAL, PUNITIVE OR EXEMPLARY DAMAGES IN CONNECTION
WITH
THIS AGREEMENT OR THE TRANSACTIONS CONTEMPLATED BY THIS AGREEMENT,
HOWEVER
CAUSED, UNDER ANY THEORY OF LIABILITY.
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12. Miscellaneous.
(a) Expenses. Except
as
otherwise specified in this Agreement, all costs and expenses, including,
without limitation, fees and disbursements of counsel, financial advisors
and
accountants, incurred in connection with this Agreement and the transactions
contemplated hereby shall be paid by the party incurring such costs and
expenses.
(b) Further
Assurances and Actions. Each
of
the parties hereto, upon the request of the other party hereto, whether before
or after the Effective Date and without further consideration, shall, and
shall
cause their respective Affiliates to, do, execute, acknowledge and deliver
or
cause to be done, executed, acknowledged or delivered all such further acts,
deeds, documents, assignments, transfers, conveyances, powers of attorney
and
assurances as may be reasonably necessary to effect complete consummation
of the
transactions contemplated by this Agreement.
(c) Announcements. No
party
shall make a public announcement regarding the execution of this Agreement
without the prior written consent of the other party; provided that nothing
herein shall restrict Licensor or Licensee from making any public announcement
of the execution of this Agreement to the extent that such announcement is
required by law; provided that, prior to any such disclosure, the disclosing
party shall provide the other party a reasonable time to review and comment
upon
such disclosure. Additionally, Licensee may disclose this Agreement and the
transactions contemplated hereby, to the extent reasonably necessary, in
connection with any registration of one (1) or more of the Licensed Products
with
any
state or Federal agency. Once the Agreement is executed, the Licensee shall
be
free to make public announcements regarding advancements in the development
and
commercialization of the technology and other relevant issues deemed appropriate
by the Licensee without any prior consent of the Licensor.
(d) Notices. All
notices, requests, claims, demands and other communications hereunder shall
be
in writing and shall be given or made (and shall be deemed to have been duly
given or made upon receipt) by delivery in person, by courier service, by
telecopy or by registered or certified mail (postage prepaid, return receipt
requested) to the respective parties at the following addresses (or at such
other address for a party as shall be specified in a notice given in accordance
with this Section):
if
to
Licensor, then:
Access
Pharmaceuticals, Inc.
0000
Xxxxxxxx Xxxxxxx
Xxxxx
000
Xxxxxx,
XX 00000
Telephone :
(000) 000-0000
Telecopy :
(000) 000-0000
Attn:
Chief
Executive Officer
with
a
copy to:
Xxxxxxx
XxXxxxxxx LLP
000
Xxxxxxx Xxxxxx
Xxxxxx,
XX 00000
Telephone:
(000) 000-0000
Telecopy:
(000) 000-0000
Attn:
Xxxx X. Xxxxxxxxx III, Esq.
if
to
Licensee, then:
ULURU,
Inc.
0000
Xxxxxxxxx Xxxxx
Xxxxxx,
XX 00000
Telephone:
(000) 000-0000
Telecopy:
(000) 000-0000
Attn: Xxxxx
X.
Xxxx
with
a
copy to:
McGuireWoods
LLP
0000
Xxxxxx xx xxx Xxxxxxxx, 0xx Xxxxx
Xxx
Xxxx,
XX 00000
Telephone:
(000) 000-0000
Telecopy:
(000) 000-0000
Attn:
Xxxxx X. Xxxxx, Esq.
(e) Applicable
Law. This
Agreement shall be governed by and construed in accordance with the laws
of the
State of Delaware without giving effect to principles of conflict of laws.
Each
party to this Agreement expressly and irrevocably (a) consents that legal
action
or proceeding against it arising out of this Agreement may be brought in
any
court of the State of Delaware or in the U.S. District Court for the District
of
Delaware, (b) consents and submits to the personal jurisdiction of any of
such
courts solely for purposes of such action or proceeding, (c) consents to
the
service of any complaint, summons, notice or other process solely for purposes
of such action or proceeding by delivery thereof to him, her or it by hand
or by
any other manner provided for in Section 12(d) and (d) waives any claim or
defense solely for purposes of such action or based on any alleged lack of
personal jurisdiction, improper venue or forum non conveniens or any similar
basis. Nothing in this Section shall affect or impair in any manner or to
any
extent the right of any party to commence legal proceedings or otherwise
proceed
against any other party in any jurisdiction or to serve process in any manner
permitted by law.
(f) Entire
Agreement; Amendments. This
Agreement and the Asset Sale Agreement, including the Exhibits hereto and
thereto, constitute the entire agreement among the parties hereto with respect
to the transactions provided for herein and as stated herein and in the
agreements, instruments and documents executed and to be executed and delivered
in connection herewith, contains all of the agreements between the parties
hereto. There are no verbal agreements or understandings between the parties
hereto not reflected in this Agreement. This Agreement may not be amended
or
modified in any respect except by written instrument executed by each of
the
parties hereto.
(g) Counterparts. This
Agreement may be executed in two (2) or more counterparts, each of which
shall
be deemed to be an original and all of which together, shall constitute the
same
Agreement.
(h) No
Third Party Beneficiaries. This
Agreement shall be binding upon and inure solely to the benefit of the parties
hereto and their permitted successors and assigns and nothing herein, express
or
implied, is intended to or shall confer upon any person or entity, any legal
or
equitable
rights,
benefits or remedies.
(i) Assignment. Neither
party may assign its rights or obligations under this Agreement without the
prior written consent of the other party and any purported assignment in
violation hereof shall be null and void; provided that either party may assign
its rights and obligations under this Agreement, without the prior written
consent of the other party, to (i) an Affiliate, or (ii) a successor of the
assigning party's business or the applicable business unit by reason of merger,
sale of all or substantially all of the assets of the business or applicable
business unit, provided that such successor to the business or applicable
business unit agrees in writing to be bound by this Agreement. Such consent
shall not be unreasonably withheld or delayed. Any permitted assignee shall
assume all obligations of its assignor under this Agreement. No assignment
shall
relieve either party of its responsibility for the performance of any obligation
that accrued prior to the effective date of such assignment
hereunder.
(j) Severability. If
any
term or other provision of this Agreement is invalid, illegal or incapable
of
being enforced by any law or public policy, all other terms and provisions
of
this Agreement shall nevertheless remain in full force and effect so long
as the
economic or legal substance of the transactions contemplated hereby is not
affected in any manner materially adverse to any party. Upon such determination
that any term or other provision is invalid, illegal or incapable of being
enforced, the parties hereto shall negotiate in good faith to modify this
Agreement so as to effect the original intent of the parties as closely as
possible in an acceptable manner in order that the transactions contemplated
hereby are consummated as originally contemplated to the greatest extent
possible.
(k) WAIVER
OF JURY TRIAL. EACH
OF
THE PARTIES HERETO IRREVOCABLY AND UNCONDITIONALLY WAIVES TRIAL BY JURY IN
ANY
LEGAL ACTION OR PROCEEDING RELATING TO THIS AGREEMENT, THE ANCILLARY AGREEMENTS,
INSTRUMENTS AND DOCUMENTS CONTEMPLATED HEREBY OR THE TRANSACTIONS CONTEMPLATED
HEREBY AND FOR ANY COUNTERCLAIM THEREIN.
(l) No
Waiver of Remedies. No
delay
on the part of Licensee or Licensor in exercising any right, power or privilege
hereunder shall operate as a waiver thereof, nor shall any waiver on the
part of
either Licensee or Licensor of any right, power or privilege hereunder nor
shall
any single or partial exercise of any right, power or privilege hereunder
preclude any other or further exercise thereof or the exercise of any other
right, power or privilege hereunder. The waiver of any terms or conditions
of
this Agreement shall not be construed as a waiver of any subsequent breach
or a
subsequent waiver of the same term or condition, or waiver of any other term
or
condition, of this Agreement. The failure of any party to assert any of its
rights hereunder shall not constitute a waiver of any of such
rights.
(m) Relationship. This
Agreement shall not constitute either party as the legal representative,
partner, joint venturer or agent of the other party hereto, nor shall either
party have the right or authority to assume, create, or incur any liability
or
any obligation of any kind, express or implied, against or in the name of
or on
behalf of the other party hereto.
[The
remainder of this page is intentionally left blank.]
BUSDOCS/1502447.4
IN
WITNESS WHEREOF, the parties hereto have executed this Agreement as of the
Effective Date.
ACCESS
PHARMACEUTICALS, INC.
By /s/
Xxxxxxxx Xxxxxxx
Name: Xxxxxxxx
Xxxxxxx
Title: Acting
CEO
ULURU,
INC.
By /s/
Xxxxx X. Xxxx
Name: Xxxxx
X.
Xxxx
Title: President
and CEO
[Signature
Page to License Agreement]
BUSDOCS/1502447.4
EXHIBIT
A
PATENT
RIGHTS
Nanoparticle
aggregate patent pending technology injectable hydrogel nanoparticle
technology:
Patent
application 10/289,756 “Shape Retentive Hydrogel Particle Aggregates and Their
Uses”
Patent
application 10/960,461 “Aggregates Resulting from Injectable Hydrogel
Nanoparticle Suspensions and their Uses”
XXXXXXXXXXX:
2340913 v03 07/18/2005
