Exhibit 10.7
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "Agreement"), dated as of April 26th, 2001, by
and between XXXX XXXXXXX X'XXXX ("OWNER") and ASTRALIS, LLC, a New Jersey
limited liability company ("LICENSEE").
RECITALS
WHEREAS, OWNER is the owner of United States patent application Serial No.
09-809003, filed March 16, 2001 entitled "Compositions and Methods for the
Treatment and Clinical Remission of Psoriasis" (the "Invention").
WHEREAS, LICENSEE desires to obtain an exclusive license to use and
exploit the Invention and the technology related thereto, including the ability
to license foreign patent rights, and OWNER desires to grant such exclusive
license, upon the terms and conditions set forth in this Agreement;
NOW, THEREFORE, in consideration of the foregoing recitals and the mutual
covenants and agreements of the parties contained in this Agreement, the parties
hereby agree as follows:
1. DEFINITIONS.
For the purposes of this Agreement, the following terms shall have the
meanings set forth in this Section 1:
1.1 "Combination Product(s)" shall mean any product containing both a
pharmaceutically active agent or ingredient which constitutes a Licensed Product
and one or more other pharmaceutically active agents or ingredients which do not
constitute Licensed Products.
1.2 "Confidential Information" shall mean all tangible or intangible
information, whether oral, written or in any other medium, directly relating to
the Invention. "Confidential Information" shall include, by way of example but
not limitation, the Invention and any derivations thereof, all trade secrets,
copyrightable works, patentable works, know-how, designs, innovations,
discoveries, formulations, specifications, improvements, processes, response
rates, product data, supplier lists, customer lists, price lists, purchase and
sales records, other sales information financial information, marketing
information, computer programs, manuals or documentation of any kind.
"Confidential Information" shall not include information which is or becomes
generally available to the public (other than as a result of a disclosure by the
LICENSEE or any Sublicensee or their representatives).
1.3 "Licensed Product(s)" shall mean tangible materials which, in the
course of manufacture, use, or sale would, in the absence of this Agreement,
infringe upon one or more claims of the Patent Rights.
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1.4 "Patent Rights" shall mean the U.S. patents and patent applications,
and any non-U.S. patent applications for the Invention, including any and all
and division(s), continuation(s) or continuation-in-part(s) thereof, together
with the equivalent thereof issuing thereon or any reissue or extension thereof.
1.5 "Sublicensee" shall mean any third party to whom LICENSEE has granted
a license to make, have made, use and/or sell the Licensed Product(s).
2. GRANT OF EXCLUSIVE RIGHT TO LICENSEE TO DEVELOP AND SUBLICENSE FOR A
LIMITED PERIOD OF TIME.
2.1 OWNER hereby grants to LICENSEE the exclusive right and license to use
and exploit the Invention and the Patent Rights and, to make, have made, use,
sell and import Licensed Product(s) and/or Combination Products throughout the
world during the term of this Agreement.
2.2 OWNER shall retain the right to Manufacture and use Licensed
Product(s) in its own laboratories or in the laboratories of third parties
exclusively for scientific purposes and for continued research.
2.3 Subject to the provisions of Section 2.4, LICENSEE shall have the
right to grant a sublicense with respect to the rights and license granted to
LICENSEE under this Agreement.
2.4 Unless the parties otherwise agree, the right of LICENSEE to grant a
sublicense is subject to the fulfillment of the following terms and conditions:
(a) Any sublicense must be in writing and must explicitly provide
that the Sublicensee shall have, at a minimum, the same obligations to OWNER as
the obligations of LICENSEE under this Agreement.
(b) LICENSEE shall not grant to any third-party any right to the
Invention which extends beyond the termination of the license under this
Agreement.
3. ROYALTIES.
3.1 For the rights and license granted hereunder, LICENSEE shall pay to
OWNER a royalty payment of Ten Dollars ($10.00) within ten (10) days after the
execution of this License Agreement.
4. PATENT PROSECUTION AND MAINTENANCE.
4.1 During the term of this Agreement, OWNER shall have primary
responsibility for the prosecution, filing and maintenance of all Patent Rights;
PROVIDED, HOWEVER, LICENSEE shall have a reasonable opportunity to consult with
OWNER regarding such matters,
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and shall cooperate with OWNER in such prosecution, filing and maintenance.
OWNER will be obligated to pursue the patent in good faith.
4.2 During the term of this Agreement, LICENSEE shall pay all fees and
costs relating to the filing, prosecution, and maintenance of the Patent Rights.
OWNER is not financially obliged to maintain and prosecute patents or any Patent
Rights during the term of this Agreement.
4.3 LICENSEE shall cause each of its employees and agents to take all
actions and to execute, acknowledge and deliver all instruments or agreements
reasonably requested by OWNER for the perfection, maintenance, enforcement or
defense of OWNER's rights to or in the Invention and the Patent Rights.
5. INFRINGEMENT.
5.1 LICENSEE and OWNER shall each inform the other promptly in writing if
either of them become aware of any alleged infringement of Patent Rights by a
third party.
5.2 OWNER shall have the right, in his discretion, to elect to prosecute
any claims arising from the infringement of the Patent Rights. In the event that
OWNER chooses not to prosecute any claim for infringement within thirty (30)
days of when he becomes aware of such infringement, or if the OWNER fails to
diligently pursue any infringement action, LICENSEE shall have the right to
pursue the infringement action. In such event, LICENSEE shall have the right, if
OWNER is a legally indispensable party, to bring such suit or action in the name
of OWNER. OWNER shall have the right to join any such suit or action brought by
LICENSEE.
5.3 LICENSEE shall pay all reasonable attorneys' fees and other costs
incurred by OWNER or LICENSEE in an infringement action, including any action
described in Section 5.6.
5.4 LICENSEE shall be entitled to retain all amounts received by either
OWNER or LICENSEE from any infringement action if this Agreement has not been
terminated.
5.5 LICENSEE shall not enter into any settlement, consent judgment or
other voluntary final disposition of any infringement action without the prior
written consent of OWNER, which consent shall not be unreasonably withheld or
delayed.
5.6 In the event that any person commences an action alleging the
invalidity or non-infringement of any of the Patent Rights against LICENSEE,
LICENSEE shall promptly notify OWNER, and the parties shall consult concerning
the action to be taken. OWNER, at its option, shall have the right within thirty
(30) days after commencement of such action to intervene and assume the defense
of the action, with counsel selected by OWNER. LICENSEE shall have the right to
join in the defense of any such suit or action by OWNER. In such event, OWNER
will confer with LICENSEE prior to making any decision regarding settlement or
other significant decisions regarding the action and no such decision will be
made without LICENSEE's consent, which consent will not be unreasonably withheld
or delayed.
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6. COMMERCIALIZATION AND FOOD AND DRUG ADMINISTRATION APPROVAL.
6.1 LICENSEE shall use its best efforts, either directly or through a
Sublicensee, to bring one or more Licensed Products to market through a vigorous
and diligent program for exploitation of the Patent Rights to attain maximum
commercialization of Licensed Products.
6.2 LICENSEE shall use its best efforts, either directly or through a
Sublicensee, to obtain approval of the US Food and Drug Administration for the
commercial sale of Licensed Products in the United States of America.
7. REPRESENTATIONS AND WARRANTIES.
7.1 OWNER represents and warrants to LICENSEE that:
(a) This Agreement constitutes the legal, valid and binding obligation of
OWNER, enforceable against the OWNER in accordance with its terms.
(b) No authorization or approval or other action by, and no notice to or
filing with, any governmental authority or regulatory bodies is required for the
due execution, delivery and performance of this Agreement by the OWNER.
(c) To OWNER's knowledge, OWNER has the sole, exclusive and unencumbered
right to grant the licenses and rights granted to LICENSEE under this Agreement.
(d) OWNER has not granted any option, license, right or interest in or to
the Invention to any third party which would conflict with the rights granted by
this Agreement.
7.2 LICENSEE represents and warrants to OWNER that:
(a) LICENSEE has duly authorized the execution, delivery and performanTce
of this Agreement and this Agreement constitutes the legal, valid and binding
obligation of the LICENSEE, enforceable against the LICENSEE in accordance with
its terms.
(b) No authorization or approval or other action by, and no notice to or
filing with, any governmental authority or regulatory bodies is required for the
due execution, delivery and performance of this Agreement by the LICENSEE.
8. TERM; TERMINATION.
8.1 This Agreement shall have a term commencing on the date of this
Agreement and expiring on the last date of expiration of any patent included in
the Patent Rights, unless terminated on an earlier date in accordance with the
provisions of this Section 8.
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8.2 The occurrence of any of the following shall constitute an event of
default under this Agreement (an "Event of Default"):
(a) The institution of any bankruptcy, insolvency or similar
proceeding by or against LICENSEE in any jurisdiction, the appointment of a
receiver for LICENSEE's business or a substantial part of its assets or an
assignment for the benefit of LICENSEE's creditors.
(b) The dissolution or liquidation of LICENSEE.
8.3 Upon the occurrence of any Event of Default listed in Section 8.2(a),
(b) or (c), OWNER shall have the right to terminate this Agreement upon giving
written notice to the LICENSEE thirty (30) days prior to the effective date of
termination, and if the cause for such notice is not cured within such period,
then at the expiration of such thirty (30) day period, this Agreement and all
rights and licenses granted to the LICENSEE hereunder shall automatically
terminate. Upon the occurrence of any Event of Default listed in Section 8.2(a),
OWNER shall have the right to terminate this Agreement upon notice to LICENSEE.
8.4 In the event of termination of the license rights granted hereunder
for any reason(s) whatsoever:
(a) The obligations of the parties under Section 9 shall remain in
full force and effect;
(b) The OWNER agrees to negotiate with sublicensee in good faith;
and
(c) LICENSEE shall return, deliver, and assign to OWNER all records
regardless of medium containing any Confidential Information, together with all
other documents which relate to or describe the manufacture, use, sale, or
characteristics of the Invention and/or Licensed Products and or Patent Rights
which are in its possession, custody, or control.
8.6 The termination of this Agreement shall not affect or prejudice any
other provisions of this Agreement which are expressly or by implication
provided to continue in effect after such termination.
9. NONDISCLOSURE OF CONFIDENTIAL INFORMATION.
9.1 Neither party shall use any Confidential Information of the other
party for any purpose except to exercise its rights and perform its obligations
under this Agreement. Neither party shall disclose any Confidential Information
of the other party to third parties or to such party's employees, except to
those employees of the receiving party with a need to know. Notwithstanding the
above, either party may disclose information on a "need-to-know" basis to
potential business associates with the approval of the other party, which will
not be unreasonably withheld or delayed.
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9.2 Each party shall take reasonable measures to protect the secrecy of
and avoid disclosure and unauthorized use of the Confidential Information of the
other party. Without limiting the foregoing, each party shall take at least
those measures that it takes to protect its own most highly confidential
information, and shall ensure that its employees who have access to Confidential
Information of the other party a non-use and non-disclosure agreement in content
similar to the provisions hereof prior to any disclosure of Confidential
Information to such employees. Neither party shall make any copies of the
Confidential Information of the other party under the other party previously
approves the same in writing. Each party shall reproduce the other party's
proprietary rights notices on any such approved copies, in the same manner in
which such notices were set forth in or on the original.
10. DISPUTE RESOLUTION.
10.1 The parties hereby agree that they will attempt in good faith to
resolve any controversy or claim arising out of or relating to this Agreement
promptly by negotiation. If a controversy or claim should arise hereunder, the
representatives of the parties will meet in Xxxxxx County, New Jersey, within
thirty (30) days, to confer at least once and will attempt to resolve the
matter. If the matter has not been resolved within fourteen (14) days of their
first meeting, the representatives shall have the right to refer the matter to
arbitration, subject to rights to injunctive relief and specific performance,
and unless otherwise specifically provided for herein, any controversy or claim
arising out of or relating to this Agreement, or the breach thereof, will be
settled as set forth in Section 10.2.
10.2. Except as provided in Section 10.3, all disputes, controversies or
differences which may arise between the parties out of or in relation to this
Agreement or any default or breach thereof may be resolved by arbitration in
accordance with the then-current rules of American Arbitration Association by
one or more arbitrators appointed in accordance with such rules. Any arbitration
shall take place in Xxxxxx County, New Jersey. Any decision or award resulting
from the arbitration provided for in this Section 10.2 shall be final and
binding on the parties.
10.3 Notwithstanding Section 10.3, either party has the right to bring
suit in a court of competent jurisdiction against the other party for any breach
of such other party's duties of confidentiality pursuant to Section 9 of this
Agreement. Judgment upon the arbitrator's award may be entered in any court of
competent jurisdiction.
11. MISCELLANEOUS.
11.1 Entire Agreement; Modifications. Except as otherwise provided in that
certain Operating Agreement of Astralis, LLC dated ____, 2001, this Agreement
constitutes the parties' entire agreement with respect to the subject matter of
this Agreement and supersedes all agreements, representations, warranties,
statements, promises and understandings, whether oral or written, with respect
to the subject matter of this Agreement. This Agreement may not be amended,
altered or modified except by a writing signed by both of the parties.
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11.2 Waivers Strictly Construed. With regard to any power, remedy or right
provided in this Agreement or otherwise available to any party under this
Agreement; (i) no waiver or extension of time shall be effective unless
expressly set forth in a writing signed by the waiving party; and (ii) no
alteration, modification or impairment shall be presumed to be given to LICENSEE
by reason of any previous waiver, extension of time, delay or omission in
exercise, or other indulgence.
11.3 Successors And Assigns. Except as provided herein to the contrary,
this Agreement shall inure to the benefit of and be binding upon the parties to
this Agreement and their respective successors and permitted assigns. Except as
otherwise provided in Section 2 hereof; PROVIDED, HOWEVER, that LICENSEE may
assign its rights under this Agreement in connection with a merger,
consolidation or sale of substantially all of the assets of LICENSEE if the
successor entity agrees in writing prior to the assignment to be bound by all
the terms and conditions of this Agreement. Any attempt by LICENSEE to assign or
delegate any portion of this Agreement in violation of this Section 11 and
Section 2 shall be null and void.
11.4 Notices. All notices under this Agreement will be in writing and will
be delivered by personal service or facsimile or certified mail (or, if
certified mail is not available, then by first class mail), postage prepaid, to
such address as may be designated from time to time by the relevant party, and
which will initially be as set forth in Section 11.4(b). Any notice sent by
certified mail will be deemed to have been given three (3) days after the date
on which it is mailed. All other notices will be deemed given when received. No
objection may be made to the manner of delivery of any notice actually received
in writing by an authorized agent of a party. Notices will be addressed as
follows or to such other address as the party to whom the same is directed will
have specified in conformity with the foregoing:
If to LICENSEE: ASTRALIS, LLC
000 Xxxxxxxx Xxxxxxxx, Xxxxx 000
Xxxxxxx Xxxx, Xxx Xxxxxx 00000
Attn: Xxxx Ajnsztajn
If to OWNER: Xxxx Xxxxxxx X'Xxxx
Terraza D Club Hipico
Calle Colombia
Quinta SUNSET
Caracas, Venezuela
11.5 Governing Law; Consent To Jurisdiction. This Agreement shall be
governed by, and construed and enforced in accordance with, the laws of the
State of New Jersey without regard to the conflict of laws rules of the State of
New Jersey or any other jurisdiction that would call for the application of the
laws of any jurisdiction other than the State of New Jersey. Each party hereto
hereby irrevocably consents, for itself and its legal representatives, partners,
successors and assigns, to the exclusive jurisdiction of the Courts of the State
of New Jersey for all purposes in connection with any action or proceeding that
arises from or relates to this
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Agreement, and further agrees that, subject to Section 8, any action arising
from or relating to this Agreement shall be instituted and prosecuted only in
the courts of the State of New Jersey, and hereby waives any rights it may have
to personal service of summons, complaint, or other process in connection
therewith, and agrees that service may be made by registered or certified mail
to such party at the address set forth in Section 11.4.
11.6 Headings. The section headings in this Agreement are inserted only as
a matter of convenience, and in no way define, limit, or extend or interpret the
scope of this Agreement or of any particular section.
11.7 Severability. In case any one or more of the provisions contained in
this Agreement shall, for any reason, be held to be invalid, illegal or
unenforceable in any respect, such invalidity, illegality or unenforceability
shall not affect any other provisions of this Agreement, and this Agreement
shall be construed as if such invalid, illegal or unenforceable provision had
never been contained in this Agreement. To the extent permitted by applicable
law, the parties hereby waive any provision of law that would render any
provision of this Agreement prohibited or unenforceable in any respect.
11.8 Counterparts. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original, but all of which
together shall constitute one and the same instrument.
11.9 Legal Counsel. Legal Counsel. The parties hereto acknowledge and
agree that XXXXX, DANZIG, SCHERER, XXXXXX & XXXXXXXX LLP ("Xxxxx") has acted as
counsel to the LICENSEE and may continue to do so in the sole and absolute
discretion of the LICENSEE and Xxxxx. The parties further acknowledge and agree
that Xxxxx is acting as counsel to the LICENSEE with respect to the transactions
contemplated by this Agreement and that the OWNER has been advised to seek
independent legal counsel and has availed himself of this right, or waived their
right to so. The OWNER specifically waives any conflicts of interest which may
arise in connection with Xxxxx'x representation of the LICENSEE in connection
with the negotiation and consummation of the transactions contemplated by this
Agreement.
11.10 Third-Party Benefits. None of the provisions of this Agreement will
be for the benefit of, or enforceable by, any third-party beneficiary.
11.11 Agreement Negotiated. Each party acknowledges that it is
sophisticated and has consulted legal counsel with respect to this transaction.
As a consequence, the parties do not believe that the presumption of any
statutory or common law rule relating to the interpretation of contracts against
the drafter of any particular clause should be applied in this case and
therefore waive its effects.
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed, as of the day and year first above written.
WITNESS: OWNER:
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XXXX XXXXXXX X'XXXX
LICENSEE:
ASTRALIS, LLC
By:
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Name: Xxxx Ajnsztajn
Title: Manager
By:
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Name: Xxxx Xxxxxxx X'Xxxx
Title: Manager
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