LICENSE AGREEMENT
Exhibit 10.13
This Agreement is entered into as of December 10, 2005 (the “Effective Date”) by and between
(i) SD Pharmaceuticals, Inc., a Delaware corporation (“SDP”), and (ii) Latitude Pharmaceuticals,
Inc., a Delaware corporation (“LPI”), and (iii) Xxxxxx X. Xxxx (“Xx. Xxxx”), with respect to the
following facts:
A. Xx. Xxxx is the sole owner of LPI and is a co-founder and a principal owner in SDP.
B. In connection with the formation of SDP, Xx. Xxxx assigned to SDP certain inventions and related
patent rights, and LPI granted to SDP (pursuant to that certain Inventions First Negotiation and
Refusal Agreement, dated as of June 16, 2004, the “Inventions Agreement”) a first negotiation right
for SDP to acquire additional future inventions and related patent rights conceived and developed
by LPI.
C. From June 2004 through December 2005, various additional inventions and related patent rights
have been conceived and developed by Xx. Xxxx, as an employee of LPI, which inventions and related
patent rights are useful for the business plan of SDP; and SDP has funded some of the development
costs and patent application costs for said additional inventions (collectively called the
“Additional Inventions”).
WHEREFORE, the parties hereto and each agree as follows:
1. Assignment. In consideration of the license grant-back set forth in Section 2 of this
Agreement, LPI and Xx. Xxxx hereby assign to SDP all rights and interests of Xx. Xxxx and LPI in
the Additional Inventions and the related patent rights for all areas worldwide except for China,
Taiwan, Hong Kong and Macao (collectively called the “Retained Asian Territories”). Additionally,
Xx. Xxxx and LPI agree to execute and deliver such additional assignment documents as may be
necessary or appropriate to further evidence such assignment. Attached hereto as Exhibit A is a
combined listing of the Additional Inventions and the previsiously assigned inventions and related
patent rights (collectively called the ‘Subject Patent Rights”). LPI and Xx. Xxxx hereby ratify
and confirm their assignment to SDP of all of their rights and interests in the Subject Patent
Rights except for rights and interests in the Retained Asian Territories.
2. License Grant-Back. In consideration for the forgoing assignment of the Additional
Inventions, and subject to the terms of this Agreement, SDP hereby grants to LPI the worldwide,
exclusive, royalty-free, paid-up, and irrevocable license right to use the Subject Patent Rights
for LPI to use to develop, make, have made, use, sell and import products and to practice methods
and processes, only within the Permitted Fields (as defined below).
(a) “Permitted Fields” means all fields of use other than the “Excluded Fields” as defined in
Exhibit B attached hereto.
(b) For avoidance of doubt, SDP retains the sole and exclusive right to utilize and practice
the Subject Patent Rights in the Excluded Fields for all areas worldwide except for the
Retained Asian Territories; and LPI has no rights to utilize or practice the Subject Patent
Rights in the Excluded Fields, other than in the areas of the Retained Asian Territories.
(c) LPI shall be entitled to grant sublicenses (and sub-tier-sublicenses), and to assign its
license rights under this Agreement; and upon any such sublicense or assignment, LPI shall give
prompt written notice thereof to SDP.
3. Patent Prosecution and Maintenance. SDP shall have the responsibility and authority to
manage the patent prosecution for the Subject Patent Rights, worldwide except for the Retained
Asian Territories, and to monitor and maintain the Subject Patent Rights, all at the expense of
SDP. SDP shall instruct the patent attorney handling these patent matters to keep LPI fully
informed as to all material matters concerning the patent prosecution and patent maintenance for
the Subject Patent Rights, including furnishing copies of correspondence with the governmental
patent offices, and furnishing copies of relevant documents related to the Subject Patent Rights.
4. Patent Infringement. If there is any third party infringing the Subject Patent Rights,
LPI and SDI shall confer and endeavor to reach a consensus as to how best to deal with the
infringer. If the infringement primarily affects the Excluded Fields in the SDP territories, then
SDP shall have the final and ultimate authority to decide how to proceed against the infringer; and
alternatively, if the infringement primarily affects the Permitted Fields or the Retained Asian
Territories, then LPI shall have the final and ultimate authority to decide how to proceed against
the infringer.
5. Inventions Agreement. As additional consideration for the assignment set forth in
Section 1 above, SDP shall also amend the Inventions Agreement (described in Recital B), so as to
allow LPI to have an early termination of the Inventions Agreement in the event that SDP is later
sold or there is a change in control of SDP.
6. Development Costs. As additional consideration for the assignment set forth in Section
1 above, if SDP is later sold, funded, or there is a change in control of SDP (the “Triggering
Event”), then SDP shall reimburse LPI for its actual costs incurred after June 2004 through the
date of the Triggering Event to further develop the Subject Patent Rights (the “Development
Costs”). Said Development Costs shall be for the actual materials, labor, and overhead for such
development work, but shall not include any time and efforts contributed by Xx. Xxxx.
7. Confidentiality. To the extent that either party discloses its confidential information
to the other party, such other party shall maintain the confidentiality of that confidential
information and shall not use that confidential information without the prior written consent of
the disclosing party. This obligation of non-disclosure and non-use shall not extend to any
information which: (a) can be demonstrated by the recipient to have been within its legitimate
possession prior to the time of disclosure by the disclosing party; or (b) was in the public domain
prior to disclosure by the disclosing party; or (c) comes into the public domain through no fault
of the recipient party; or (d) is disclosed to the recipient by third party having legitimate
possession thereof and the unrestricted right to make such disclosure; or (e) is required by law or
legal proceedings to be disclosed, but then only to the limited extent the such disclosure is
legally required.
8. Disclaimers. Neither Xx. Xxxx, LPI nor SDP makes any representation or warranty of any
kind with respect to (i) the claims that will ultimately be included in the Subject Patent Rights
once patents are issued, or (ii) the validity or scope of any of the Subject Patent Rights, or
(iii) whether or not any viable products or services can be developed under the Subject Patent
Rights, or (iv) the utility or commercial applicability of the Subject Patent Rights, or (v) the
nature and scope of any other related third party patent rights.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date set forth above
| /s/ Xxxxxx X. Xxxx | ||||
| Xxxxxx X. Chen | ||||
| Latitude Pharmaceuticals, Inc. | ||||
By:
|
/s/ Xxxxxx X. Xxxx | |||
| Xxxxxx X. Chen, President | ||||
| SD Pharmaceuticals, Inc. | ||||
By:
|
/s/ Xxxx X. Xxxxxxxx | |||
| Xxxx X. Xxxxxxxx, President | ||||
Exhibit A
Subject Patent Rights
Subject Patent Rights
| Xxx./Appl. | ||||||||||||||
| Reference | No. | Priority | Comments/Due | |||||||||||
| Number | Title | Appl. Date | Inventors | Applications | Status | Dates | ||||||||
401 |
||||||||||||||
401P1
|
Pharmaceutical Compositions for Delivering Macrolide Drugs |
60/493,209 08/06/03 | Chen | N/A | Expired | |||||||||
401
|
Pharmaceutical Compositions for Delivering Macrolides | 10/895,018 07/20/04 | Chen | 60/493,209 (401P1) | Pending | • | Published as US-2005-0049209-A1 on 03-Mar-05 |
|||||||
401CA
|
Pharmaceutical Compositions for Delivering Macrolides | Chen | Unfiled | • | 06-Jun-2007 –National Stage Filing due |
|||||||||
401EP
|
Pharmaceutical Compositions for Delivering Macrolides | 08/05/04 | Chen | 60/493,209 (401P1) & 10/895,018 (401) |
Pending | • | 05-Aug-2006 – Annuity due | |||||||
401JP
|
Pharmaceutical Compositions for Delivering Macrolides | 08/05/04 | Chen | 60/493,209 (401P1) & 10/895,018 (401) |
Pending | • | 05-Aug-2007 – Deferred Exam |
|||||||
401PC
|
Macrolides Containing Oil-in-Water Emulsions | US04/25284 08/05/04 |
Chen | 60/493,209 (401P1) & 10/895,018 (401) |
Pending | • | Published | |||||||
| Xxx./Appl. | ||||||||||||||
| Reference | No. | Priority | Comments/Due | |||||||||||
| Number | Title | Appl. Date | Inventors | Applications | Status | Dates | ||||||||
403 |
||||||||||||||
403P1
|
Anti-Viral Pharmaceutical Compositions | 60/528,843 12/10/03 |
Chen | N/A | Expired | |||||||||
403
|
Anti-Viral Pharmaceutical Compositions | 11/003,302 12/03/04 | Chen | 60/528,843 (403P1) | Pending | • | Published | |||||||
403PC
|
Anti-Viral Pharmaceutical Compositions | US04/41117 12/08/04 |
Chen | 60/528,843 (403P1) & 11/003,302 (403) |
Pending | • | 10-Jun-2006 – Chapter I/II National Stage Filing due |
|||||||
404 |
||||||||||||||
404P1
|
Elemene Compositions Containing Liquid Oil | 60/538,851 01/23/04 |
Chen | N/A | Expired | |||||||||
404
|
Elemene Compositions Containing Liquid Oil | 11/040,079 01/21/05 |
Chen | 60/538,851 (404P1) | Pending | • | Published | |||||||
406 |
||||||||||||||
406
|
Injectable Pharmaceutical Compositions for Irritating Drugs |
10/889,226 07/12/04 |
Chen | N/A | Pending | • | Published | |||||||
406PC
|
Compositions for Delivering Highly Water Soluble Drugs |
US2005/24594 7/12/05 |
Chen | 10/889,226 (406) | Pending | • | Published | |||||||
| • | 18-Mar-2006 – Amend Claims | |||||||||||||
| • | 12-May-2006 – Demand Due (Priority Date) |
|||||||||||||
| • | 12-Jan-2007 – Chapter I/II National Stage Filing due |
|||||||||||||
| Xxx./Appl. | ||||||||||||||
| Reference | No. | Priority | Comments/Due | |||||||||||
| Number | Title | Appl. Date | Inventors | Applications | Status | Dates | ||||||||
407 |
||||||||||||||
407P1
|
Stable Injectable Composition of Alpha Tocopheryl Succinate, Analogues and Salts Thereof | 60/592,097 07/28/04 | Chen | N/A | Expired | |||||||||
407
|
Stable Injectable Composition of Alpha Tocopheryl Succinate, Analogues and Salts Thereof | 11/192,439 07/28/05 |
Chen | 60/592,097 (407P1) | Pending | • | Published | |||||||
407PC
|
Stable Injectable Composition of Alpha Tocopheryl Succinate, Analogues and Salts Thereof | US2005/026783 7/28/05 |
Chen | 60/592,097 (407P1) | Pending | • | Published | |||||||
| • | 28-Jan-2007 – Chapter I/II National Stage Filing due |
|||||||||||||
408 |
||||||||||||||
408
|
Low Oil Emulsion Compositions for Delivering Taxoids and Other Insoluble Drugs | 10/952,243 9/28/04 |
Chen | N/A | Pending | • | 30-Mar-2006 – Projected Publication |
|||||||
408 PC
|
Low Oil Emulsion Compositions for Delivering Taxoids and Other Insoluble Drugs | US2005/34971 9/28/05 |
Chen | 10/952,243 (408) | Pending | • | 28-Mar-2007 – Chapter I/II National Stage Filing due |
|||||||
| Xxx./Appl. | ||||||||||||||
| Reference | No. | Priority | Comments/Due | |||||||||||
| Number | Title | Appl. Date | Inventors | Applications | Status | Dates | ||||||||
409 |
||||||||||||||
409P1
|
Vitamin E Succinate Stabilized Pharmaceutical Compositions, Methods for the Preparation Thereof and Methods for the Use Thereof | To be filed | ||||||||||||
409P2
|
Vitamin E Succinate Stabilized Pharmaceutical Compositions, Methods for the Preparation Thereof and Methods for the Use Thereof | To be filed | ||||||||||||
410
|
Vancomycin formation Patent | To be filed | ||||||||||||
Exhibit B
Excluded Fields
Excluded Fields
1. Clarithromycin intravenous emulsion formulation for infectious disease and any other disease
indication.
2. Chitosan in combination with Zinc for topical anti-viral use.
3. B-Elemene intravenous emulsion formulation for Cancer treatment and any other disease
indication.
4. Vinca Alkyloid intravenous emulsion formulation for cancer treatment and any other disease
indication.
5. Alpha tocopheryl Succinate, Paclitaxel and Docetaxel intravenous emulsion formulations for
Cancer and any other disease indication.
6. Paclitaxel and Docetaxel intravenous emulsion formulation for cancer treatment and any other
disease indication.
7. Vancomycin intravenous emulsion formulation for infectious disease and any other disease
indication.
