Exhibit 10.115
LICENSE AND INTELLECTUAL PROPERTY
ACQUISITION AGREEMENT
This License and Intellectual
Property Acquisition Agreement (as amended from time to time, this
“Agreement”), dated this 30th day of March, 2007, but
effective as of January 1, 2007 (the “ Effective
Date ”), is made by and between Senetek PLC, an English
corporation (“ Senetek ”) and Valeant
Pharmaceuticals North America, a Delaware corporation (“
Valeant ”).
W I T N E S S E T
H:
WHEREAS, Senetek has developed and
holds certain patents and other intellectual property rights
relating in and to the use of formulated products containing
Kinetin and Zeatin;
WHEREAS, Valeant is a manufacturer
and distributor of a broad range of pharmaceutical products
worldwide;
WHEREAS, Senetek and Valeant
Pharmaceuticals International (“ VPI ”), an
Affiliate of Valeant, have previously entered into that certain
License Agreement, dated August 1, 2003, as amended (the
“ Original License Agreement ”);
WHEREAS, VPI has assigned all of its
rights under the Original License Agreement to Valeant in
accordance with Section 10.5 of the Original License
Agreement;
WHEREAS, Valeant now desires to
acquire from Senetek, and Senetek desires to transfer to Valeant,
certain intellectual property rights relating to Kinetin and
Zeatin; and
WHEREAS, Valeant and Senetek desire
to terminate the Original License Agreement and enter into this
Agreement with respect to such intellectual property;
NOW, THEREFORE
, in consideration of the promises,
representations, warranties, covenants and agreements contained
herein and other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the Parties hereto,
intending to be legally bound hereby, agree as follows:
ARTICLE 1
DEFINITIONS AND
INTERPRETATION
Section 1.1 Definitions
. When used in this
Agreement, each of the following capitalized terms shall have the
respective meanings set forth below:
(a) “Affiliate” means,
with respect to a Person, any corporation, partnership,
proprietorship or other legal entity directly or indirectly
controlled by, controlling, or under common control with another
legal entity; “control” meaning, for purposes hereof,
the effective power to elect at least a majority of the Board or
Directors or other management body of a legal entity or to
effectively direct the management of a legal entity, by the
ownership of voting securities, by contract, or
otherwise.
(b) “Applicable Law”
means all applicable provisions of all statutes, laws, rules,
regulations, administrative codes, ordinances, decrees, orders,
decisions, guidance documents, injunctions, awards, judgments, and
permits and licenses of or from Government Entities relating to or
governing the use or regulation of the subject item, including,
where applicable, tax law.
(c) “Business Day” means
a day which is not a Saturday, a Sunday, or a day upon which
federally chartered banks in the United States are required to be
closed.
(d) “Commercially Reasonable
Efforts” means that commercially reasonable degree of effort,
expertise, knowledge and resources which one skilled, able,
familiar with and experienced in the matters set forth herein would
utilize and otherwise apply with respect to fulfilling a like
obligation subject to the then existing legal, contractual and
other restrictions.
(e) “Confidential
Information” means any and all non-public information of a
Party or its Affiliates, whether or not related to the subject
matter of this Agreement or any of the Existing License Agreements,
which (i) is marked as confidential or with words of like
effect, or (ii) is disclosed orally, but identified as
confidential information by subsequent writing within five
(5) days of such disclosure, or (iii) on its face is of
such a nature that a reasonable business person would necessarily
regard it as confidential, subject to Article 8. Confidential
Information may include the non-public information of a Third Party
that has disclosed such information to a Party or its Affiliates in
the course of its business.
(f) “Effective Date” has
the meaning set forth in the Preamble.
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(g) “Encumbrance” means
claims, security interests, liens, pledges, charges, escrows,
options, proxies, rights of first refusal, preemptive rights,
mortgages, hypothecations, assessments, prior assignments, title
retention agreements, conditional sales agreements, indentures,
deeds of trust, leases, levies or security agreements of any kind
whatsoever imposed upon the subject property or item.
(h) “Existing License
Agreement” means any agreement, whether written or oral,
between Senetek and any Third Party, or by which Senetek is bound,
which exists as of the Effective Date and by which Senetek grants
or purports to grant any rights in, to or under the Intellectual
Property or any portion of the Intellectual Property, including but
not limited to those agreements listed on Schedule 4.1(e)
.
(i) “Final Adjudication”
means any decision by a Government Entity of competent jurisdiction
if either (a) any and all appeals (including to other
Government Entities of competent jurisdiction) in connection with
the adjudication are exhausted or (b) the time for any such
appeal shall have passed without such appeal having been
perfected.
(j) “Government Entity”
means any competent governmental agency, board, authority,
commission, court or other governmental entity having lawful
jurisdiction over the subject matter.
(k) “Intellectual
Property” means the Patents, together with any copyrights and
any other intellectual and industrial property rights of any sort
throughout the world that Senetek owns or has rights to on the
Effective Date, and that relate to the making, using, selling,
offering to sell, importing or exporting of any products for human
use containing any of the Licensed Compounds, but excluding the
Know-How.
(l) “Intellectual Property and
Know-How Records” means all documentation, including, without
limitation, books of account, financial records and other books and
records, maintained, owned or controlled by Senetek, whether in
electronic or tangible form, relating to the Intellectual Property
and Know-How.
(m) “Know-How” means all
Trade Secrets and other information, data, documents, materials and
knowledge, including Confidential Information, that Senetek owns or
has rights to on the Effective Date, to the extent such is useful
or necessary for the making, using, selling, offering to sell,
importing or exporting of any products for human use containing any
of the Licensed Compounds or any component thereof including, but
not limited to, (i) information related to any pharmaceutical,
chemical, biological and biochemical product covered under
the
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Patents, (ii) technical and non-technical
data, information relating to the results of tests, assays, methods
and/or processes, (iii) drawings, plans, diagrams,
specifications and/or other documents containing this information,
and further means and includes any and all proprietary special
knowledge, expertise, discoveries, formulations, processes and
technical, regulatory or other information, and (iv) any of
the foregoing as they may relate to the items or matters listed on
Schedule 1.1(m) .
(n) “Licensed Compounds”
means Kinetin and Zeatin.
(o) “Party” or
“Parties” means Senetek or Valeant, or Senetek and
Valeant, whichever the context requires.
(p) “Patents” means
those U.S. and foreign patents and patent applications listed on
Schedule 4.1(g)(ii)(A), together with all patents and patent
applications owned by and licensed by Senetek that claim priority
to or common priority with, divisions, continuations,
continuations-in-part, together with any substitutions,
replacements, reissues, renewals, re-examinations, extensions or
additions thereto, and all worldwide counterparts
thereof.
(q) “Patent License
Term” has the meaning set forth in
Section 2.1.
(r) “Person” means any
individual, corporation, limited liability company, partnership,
association, trust, unincorporated organization, other legal entity
or government or political subdivision thereof.
(s) “Regulatory
Approvals” means, as related to the Intellectual Property
and/or Senetek’s operation of the business related to the
Licensed Compounds in the Territory, all material permits,
licenses, certificates, approvals, product registrations, filings
and authorizations issued by any Government Authority to Senetek or
its representatives.
(t) “Territory” means
all the countries and territories of the world.
(u) “Third Party” means
any Person other than Senetek or Valeant or their
Affiliates.
(v) “Trademarks” means
all trademarks, service marks, certification marks, trade names,
commercial names or collective marks, registered or at common law,
names, symbols, or devices, or any combination thereof, adopted and
used by Senetek to identify and distinguish its products,
processes, services and/or other uses of the Licensed Compounds
from those of any Third Party.
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(w) “Trade Secret” means
information possessed by Senetek on the Effective Date, including
any formula, pattern, compilation, program, device technique, or
process that derives or could reasonably be expected to derive
independent economic value, actual or potential, from not being
generally known to and not being readily ascertainable by proper
means by other persons who can obtain economic value from its
disclosure or use.
(x) “Valid Claim” means
any claim in an unexpired patent or patent application included
within the Patents that has not been disclaimed or held invalid or
enforceable by a Government Entity of competent jurisdiction in a
Final Adjudication.
Section 1.2 Construction
. Unless the context of
this Agreement otherwise requires: (a) words of any gender
include each other gender; (b) words using the singular or
plural number also include the plural or singular number,
respectively; (c) the terms “hereof,”
“herein,” “hereby” and derivative or
similar words refer to this entire Agreement; (d) the terms
“Article,” “Section” “Schedule”
or “Exhibit” refer to the specified Article, Section,
Schedule or Exhibit of this Agreement; (e) the term
“or” has, except where the context otherwise dictates,
the inclusive meaning represented by the phrase,
“and/or”; and (f) the term “including”
or any variation thereof means “including without
limitation” or any variation thereof and shall not be
construed to limit any general statement which it follows to the
specific or similar items or matters immediately following it,
unless otherwise expressly stated.
ARTICLE 2
CONVEYANCE OF INTELLECTUAL
PROPERTY RIGHTS AND KNOW-HOW
Section 2.1 Intellectual
Property . Senetek
hereby grants to Valeant an exclusive (even as to Senetek),
assignable, fully paid up, non-royalty bearing license under the
Intellectual Property, free and clear of any Encumbrances (except
as provided in Section 2.3), with the right to grant
sublicenses, to make, use, offer to sell, sell, import, and export
any products for human use containing any of the Licensed Compounds
throughout the world. The term of such license with respect to the
Patents (the “ Patent License Term ”) shall run
in each country having issued any of the Patents for the period
beginning on the Effective Date and ending upon the expiration of
all issued Patents issued by such country containing a Valid Claim.
The term of such license with respect to the Intellectual Property,
other than the Patents, shall be perpetual.
Section 2.2 Know-How
. Senetek hereby sells,
assigns, sets over, transfers, and conveys to Valeant an undivided
XXXXXXX interest in all of Senetek’s right, title and
interest in and to all of the Know-How, free and clear of any
Encumbrances (except as provided in
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Section 2.3). Anything in this Agreement to
the contrary notwithstanding, during the Patent License Term,
Senetek shall not, without Valeant’s prior written consent,
in any country having issued any of the Patents until the
expiration of all Patents issued by such country containing a Valid
Claim, (i) license or disclose the Know-How, or any interest
therein, to a Third Party for the making, using, selling, offering
to sell, importing or exporting of any products for human use
containing any of the Licensed Compounds, or (ii) use the
Know-How for the selling, offering to sell, importing or exporting
of any products for human use containing any of the Licensed
Compounds (it being understood that Senetek may use the Know-How
for researching and developing such products or any other
products).
Section 2.3 Limitations
. The license in
Section 2.1 and the conveyance in Section 2.2 are made
subject to the terms and provisions of the Existing License
Agreements, and Valeant’s rights to use the Know-How pursuant
to Section 2.2 shall not include any Confidential Information
obtained by Senetek from any licensee, the disclosure of which
(i) would violate the terms and provisions of the Existing
License Agreements or (ii) would violate applicable antitrust
or trade regulation laws or applicable rules of any Government
Entity.
Section 2.4 Right of First
Offer Following Expiration of Patents . Effective upon the expiration of the first to
expire of any or all Patents in any particular country and at all
times thereafter , Valeant shall have the right of first
offer to obtain the right to sell in such country any skin care
product developed, being developed or otherwise acquired by Senetek
or its Affiliates which is either (i) a systemic (oral or
injectable) product containing as its primary active ingredient
either Kinetin or Zeatin, or (ii) a topical product containing
as an active ingredient either Kinetin or Zeatin (any such
developed or acquired product or product in development being
referred to in this Section 2.4 as a “product”)
provided that such right of first offer shall not apply with regard
to products that are both (a) protected through patents or
other exclusivity as to, owned by, or vested in a Third Party, and
(b) as to which Senetek or its Affiliates have not acquired on
or prior to the Effective Date the right to grant marketing rights
to others. At such time as Senetek determines, based on preliminary
in vitro or other studies or other information (clinical or
otherwise) (collectively, the “ Data ”), that
such product exhibits action that may make it commercially
marketable, Senetek shall give written notice thereof to Valeant,
together with all Data in Senetek’s possession or control.
Valeant shall have sixty (60) days from the date that it
receives such notice to deliver an offer to Senetek setting forth
in reasonable detail the principal commercial terms upon which
Valeant would purchase, market and resell such product. If Senetek
elects not to accept Valeant’s offer (or if no offer is made
within such period), Senetek shall be free to (i) grant a
license to sell such product in the relevant country to others on
terms
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no better to such other party than those offered
by Valeant (or, if Senetek has made a counter offer, on terms no
better to such other party than those offered by Senetek to
Valeant), (ii) exercise the right to sell such product itself,
or (iii) any combination thereof, all in Senetek’s sole
discretion; provided, however, that in connection with entering
into a definitive agreement with such other party, Senetek shall
provide to such other party preliminary Data no different than the
preliminary Data provided to Valeant. If Senetek develops or
acquires Data with respect to such product different than the Data
made available to Valeant, Senetek shall give another written
notice to Valeant, together with such different Data, and Valeant
shall have sixty (60) days from the date that it receives such
notice to deliver an offer to Senetek in accordance with the terms
specified above regarding the first notice (it being the intention
of the Parties that such procedure be repeated until such time as
the studies developed by or for Senetek demonstrate “proof of
concept” for such product).
ARTICLE 3
CONSIDERATION
Section 3.1 Closing
Payments . Concurrently with the execution of this
Agreement, Valeant will pay to Senetek, by wire transfer of
immediately available funds to an account specified in writing by
Senetek, a one-time payment of Twenty-One Million Dollars
($21,000,000 ) (the “ Closing Payment
”).
Section 3.2 Earn Out
Payment . In
addition, Senetek shall be entitled to earn, and if earned, Valeant
shall pay Senetek, an earn out payment (the “ Earn Out
Payment ”) as follows:
(a) Senetek shall be entitled to
receive the Earn Out Payment, and Valeant shall be obligated to pay
Senetek the Earn Out Payment, only if Valeant receives in excess of
XXXXXXXXXX in Net Royalties during the Earn Out Period.
(b) If Valeant receives in excess of
XXXXXXXXXX in Net Royalties during the Earn Out Period (the amount
of any such excess Net Royalties being hereinafter referred to as
the “ Excess Royalties ”), then Valeant shall
pay Senetek as the Earn Out Payment:
(i) XXX of the first XXXXXXXXX of
Excess Royalties received during the Earn Out Period;
and
(ii) XXX of any additional Excess
Royalties received during the Earn Out Period.
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(c) The Earn Out Payment, if any,
shall be paid in one or more quarterly installments. The timing and
amount of each such quarterly installment shall depend on when and
in what amounts the Excess Royalties are received. Within thirty
(30) days following the last day of any calendar quarter
during the Earn Out Period within which any Excess Royalties are
received, Valeant shall pay Senetek the accrued portion, if any, of
the Earn Out Payment then due.
(d) Either Party may, upon written
notice to the other Party, request an independent audit and
determination of the Earn Out Payment calculation with respect to
any completed calendar quarter during the Earn Out Period (each
such calendar quarter being hereinafter referred to as an “
Audited Quarter ”); provided that the Party requesting
the audit provide such written request to the other Party within 12
months following the last day of the Audited Quarter. In the event
that an audit is requested in accordance herewith, the Parties
shall select an independent public accounting firm (the “
Auditor ”) to perform the audit, and each Party shall
cooperate fully in the audit and shall bear one-half of the
Auditors fees and expenses. The Auditor’s determination of
the Earn Out Payment for the Audited Quarter shall be final and
binding on both Parties, and within 10 days following the
Parties’ receipt of the Auditor’s determination, each
Party agrees that it will make whatever payment to the other Party
is required, if any, to cause the Earn Out Payment made with
respect to the Audited Quarter, if any, to equal the Earn Out
Payment for such Audited Quarter as determined by the
Auditor.
(e) For purposes hereof,
(i) the term “ Earn Out Period ” shall mean
the five year period commencing on the Effective Date and ending on
December 31, 2011, and (ii) the term “ Net
Royalties ” shall mean the total royalties paid to
Valeant under the Existing License Agreements with respect to the
Earn Out Period (whether received directly from the licensees or
from Senetek in accordance with this Agreement), less any credits
or refunds required to be given or paid by Valeant with respect
thereto.
Section 3.3 Royalty Credit
. In addition to the
foregoing, Valeant shall and hereby does waive the application of
the Unused Prepaid Royalty Credit (as hereinafter defined) in
accordance with Section 3.11 of the Original License
Agreement, and forgives any refund thereof, and in lieu of such
refund, the Parties hereby agree that the Unused Prepaid Royalty
Credit shall be credited as (and accounted by both Parties as) an
additional cash payment made by Valeant to Senetek hereunder. For
purposes hereof, the “ Unused Prepaid Royalty Credit
” shall mean XXXXXXX, being that portion of the royalty
credit due to Valeant pursuant to the Amendment to License
Agreement, dated May 4, 2004, to the Original License
Agreement as a prepayment of future royalties which has not, as of
the Effective Date, been credited to VPI or
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Valeant under Section 3.11 of the Original
License Agreement. Senetek shall not be entitled to receive any
other royalties or payments hereunder.
ARTICLE 4
REPRESENTATIONS AND
WARRANTIES
Section 4.1 Representations
and Warranties of Senetek . Senetek hereby represents and warrants to
Valeant, as of the Effective Date and as of the Execution Date, as
follows:
(a) Organization and
Authority . Senetek is a corporation duly organized, validly
existing and in good standing under the laws of England. Senetek
has full corporate power and authority to execute and deliver this
Agreement and effect the transactions contemplated hereby and has
duly authorized the execution, delivery and performance of this
Agreement and the transactions or documents contemplated hereby by
all necessary corporate action. Senetek has all corporate power and
authority necessary to own its assets and carry on its business as
it is now conducted. Senetek is duly licensed or qualified to do
business and is in good standing in England and California and each
other jurisdiction in which its operations or ownership of assets
in connection with this Agreement requires such licensing or
qualification. This Agreement is the valid and legally binding
obligation of Senetek, enforceable against it in accordance with
its terms, subject to applicable bankruptcy, moratorium,
reorganization, insolvency and similar laws of general application
relating to or affecting the rights and remedies of creditors
generally and to general equitable principles (regardless of
whether in equity or at law).
(b) Consents; No Violations .
The execution, delivery and performance by Senetek of this
Agreement and the consummation by Senetek of the transactions
contemplated hereby will not require any notice to, filing with, or
the consent, approval or authorization of, any Person or Government
Authority. Neither the execution and delivery of this Agreement nor
the consummation of the transactions contemplated hereby will
(i) violate or result in a breach or result in the
acceleration or termination of, or the creation in any Third Party
of the right to accelerate, terminate, modify or cancel, any
indenture, contract, lease, sublease, loan agreement, note or other
obligation or liability to which Senetek is a party or by which it
is bound or to which any of the Intellectual Property or Know-How
is subject, (ii) conflict with, violate or result in a breach
of any provision of the organizational documents of Senetek, or
(iii) conflict with or violate any Applicable Law with respect
to Senetek or the Intellectual Property or Know-How. Senetek is not
a party to or bound by any agreement, written or oral, which
encumbers, restricts or otherwise compromises Senetek’s
ability to enforce the Existing License Agreements.
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(c) Compliance with Laws .
Except as set forth on Schedule 4.1(c) , with respect
to the Intellectual Property, Senetek is in compliance with all
Applicable Law.
(d) Litigation . There are no
lawsuits, claims or any civil, administrative or criminal actions,
suits, or proceedings or governmental investigations existing,
pending, or to the knowledge of Senetek, threatened, with respect
to the Intellectual Property, the Know-How or this Agreement or the
transactions contemplated hereby. Senetek is not subject to any
decree or order of any Government Authority that would impair or
delay its ability to perform its obligations under this
Agreement
(e) Existing License
Agreements . Schedule 4.1(e)(i) sets forth a complete
and correct list of all of the Existing License Agreements. Except
as set forth on Schedule 4.1(e)(ii) , such Existing License
Agreements are the only agreements, written or oral, existing
between Senetek and any Third Party or by which Senetek is bound
which purport to grant any rights in, to or under the Intellectual
Property, the Know-How or any portion thereof. Senetek has
delivered to or made available to Valeant true and complete copies
of all of the Existing License Agreements. All of the Existing
License Agreements are, as to Senetek (and, as to the other parties
thereto, are to Senetek’s best knowledge), legal, valid and
binding agreements in full force and effect and enforceable in
accordance with their terms. Senetek is not in breach or default,
and no event has occurred that with notice or lapse of time would
constitute a breach or default, by Senetek permitting termination,
modification, or acceleration, under any Existing License
Agreement. To Senetek’s knowledge, no other party to any
Existing License Agreement is in breach or default under, or has
repudiated any provision of, any Existing License
Agreement.
(f) Payments Under Existing
License Agreements . Schedule 4.1(f) sets forth, on a
contract-by-contract basis, a complete and correct list of all of
the royalty payments and other payments past due to Senetek from
the licensees or from other Third Parties under the Existing
License Agreements. To Senetek’s knowledge, as of the date of
this Agreement, the licensees and other Third Parties under the
Existing License Agreements are current as to all payments due to
Senetek.
(g) Intellectual Property and
Know-How .
(i) Except as set forth in
Schedule 4.1(e)(ii) , Senetek is the owner, licensee or
sublicensee (as applicable), free and clear of any Encumbrance, of
all right, title and interest in and to the Intellectual Property,
and has the full and unrestricted right to license the Intellectual
Property to Valeant on the terms of this Agreement.
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(ii) The following schedules set
forth a true and complete list of the following:
(A) Schedule 4.1(g)(ii)(A) -
The Patents, including (A) issued Patents and for each, its
number, issue date, title, priority information and current legal
status, for each jurisdiction in which such patent has been issued;
(B) Patent applications (including provisional applications,
divisional applications, continuation applications,
continuation-in-part applications, re-examination applications and
reissue applications) and for each, the application number, date of
filing, title, priority information and current legal status for
each jurisdiction in which such patent application is pending;
(C) a summary description of all patents and patent
applications (including provisional patent applications) related to
the Intellectual Property that Senetek has abandoned; and
(D) a summary description of all issued patents and patent
applications (including provisional patent applications) related to
the Intellectual Property that have been rejected by the patenting
authority in any jurisdiction;
(B) Schedule 4.1(g)(ii)(B) -
Trademarks, including, (A) if registered, the registration
number thereof, and the class of goods or the description of goods
or services covered thereby, the jurisdictions in which such
Trademark is registered, the current legal status and the
expiration date for each jurisdiction in which such Trademark has
been registered; and (B) if unregistered, the application
serial number thereof (if any), the date of filing (if any), the
jurisdictions in which such application was filed or such trademark
was used and the class of goods or the description of goods or
services sought to be covered thereby or for which such trademark
was used.
(iii) None of the Patents is
involved in any litigation, reissue, interference, reexamination,
or opposition, and to the knowledge of Senetek, there has been no
threat or other indication that any such proceeding will hereafter
be commenced. The Patents (excluding patent applications) are in
good standing, without challenge of any kind known to Senetek, have
not been adjudged invalid
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or unenforceable in whole or in
part, and to Senetek’s best knowledge there is no valid basis
for any adjudication of invalidity or unenforceability
thereof.
(iv) None of the Trademarks or
registrations or applications to use or register such items are
involved in any cancellation, nullification, interference,
conflict, concurrent use or opposition proceeding, and there has
been no threat or other indication that any such proceeding will
hereafter be commenced.
(v) No legal proceedings are
pending, or to the knowledge of Senetek are threatened, against
Senetek based upon, challenging or seeking to deny or restrict the
use of any of the Intellectual Property or the Know-How.
(vi) All maintenance fees, annuity
fees or renewal fee payments currently due for each jurisdiction in
which each patent, patent application, trademark, trademark
application, trade name, trade name registration, brand name, brand
name registration, service mark, service mark registration,
copyright, copyright application, domain name or domain name
application included within the Intellectual Property has issued or
is pending have been paid.
(vii) Except as described in
Schedule 4.1(g)(vii) , to Senetek’s knowledge, no
Third Party is engaging in any activity that infringes or
misappropriates the Intellectual Property or the
Know-How.
(viii) Senetek has delivered or made
available to Valeant true and complete copies of the issued Patents
and all applications therefore included in the Intellectual
Property and all applications and registrations for
Trademarks.
(ix) Senetek has, with respect to
the Intellectual Property and the Know-How, used Commercially
Reasonable Efforts to maintain its Trade Secrets in confidence,
including entering into licenses and contracts that generally
require licensees, contractors and other third persons with access
to such Trade Secrets to keep such Trade Secrets
confidential.
(x) To Senetek’s knowledge,
there has been no misappropriation of any Trade Secrets or other
Confidential Information of Senetek with respect to the
Intellectual Property and the Know-How.
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(xi) Senetek has secured valid
written assignments from all current and former consultants and
employees who contributed to the creation or development of the
Intellectual Property of such Person’s ownership interest
therein. To Senetek’s knowledge, none of the employees or
consultants of Senetek is in violation thereof. All employees of,
consultants to or vendors of Senetek with access to Confidential
Information with respect to the Intellectual Property and the
Know-How are parties to written agreements under which each such
employee, consultant or vendor is obligated to maintain the
confidentiality of such Confidential Information of Senetek. To
Senetek’s knowledge, none of the employees, consultants or
vendors of Senetek or any of its subsidiaries is in violation of
such agreements.
(xii) The execution, delivery and
performance of this Agreement, and the consummation of the
transactions contemplated hereby, will not result in or give rise
to any right of termination or other right to impair or limit, or
otherwise result in a breach of, any of Senetek’s rights to
own or retain a license to any of the Intellectual Property or the
Know-How.
(h) Books and Records . All
of the Intellectual Property and Know-How Records have been made
available by Senetek to Valeant for examination, are complete and
correct in all material respects, and have been maintained in
accordance with sound business practices.
(i) Regulatory Compliance
.
(i) Schedule 4.1(i) sets
forth a complete and correct list of the Regulatory Approvals to
which Senetek is a party or holds (as applicable), and which relate
to the Intellectual Property or the operation of the business
related to the Intellectual Property by Senetek. Senetek has
provided to Valeant complete and correct copies of the Regulatory
Approvals. The Regulatory Approvals are in full force and effect
and have been duly and validly issued.
(ii) Senetek has all Regulatory
Approvals necessary for or used to carry on the business related to
the Intellectual Property as being conducted by Senetek as of the
Effective Date and which are required by Applicable Law.
(iii) Except as set forth on
Schedule 4.1(i) , Senetek is in compliance with all of the
Regulatory Approvals listed on Schedule 4.1(i) , and Senetek
has not received any notification, written or oral, from any Third
Party with respect to
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any alleged or possible violations
or improprieties with respect to any such Regulatory Approvals, and
to Senetek’s knowledge, there are no facts or circumstances
that would form a reasonable basis for any such violation or
impropriety.
(j) Financial Statements .
Senetek has previously provided to Valeant historical royalty
revenue information with respect to the Existing License Agreements
(the “ Historical Financial Information ”). Such
Historical Financial Information is true and correct in all
material respects, and has been prepared and presented on a
consistent basis using recognized professional accounting
standards.
(k) Disclosure. No
representation or warranty or other statement made by Senetek in
this Agreement contains any untrue statement of material fact or
omits to state a material fact necessary to make any of them, in
light of the circumstances in which they are made, not misleading.
Except as set forth in Schedule 4.1(k) , Senetek does not
have any knowledge of any material fact that has specific
application to Senetek or the Intellectual Property or Know-How
that would reasonably be expected to have a material adverse effect
on Senetek or the Intellectual Property or Know-How that has not
been set forth in this Agreement or the schedules or exhibits
hereto.
Section 4.2 Representations
and Warranties of Valeant . Valeant hereby represents and warrants to
Senetek, as of the Effective Date and as of the Execution Date, as
follows:
(a) Organization and Authority of
Valeant . Valeant is a corporation duly organized, validly
existing and in good standing under its jurisdiction of formation.
Valeant has full corporate power and corporate authority to execute
and deliver this Agreement and effect the transactions contemplated
hereby and thereby and has duly authorized the execution, delivery
and performance of this Agreement the and transactions or documents
contemplated hereby by all necessary corporate action. Valeant has
all corporate power and corporate authority necessary to own its
assets and carry on its business as currently conducted. This
Agreement is the valid and legally binding obligation of Valeant,
enforceable against it in accordance with its terms, subject to
applicable bankruptcy, moratorium, reorganization, insolvency and
similar laws of general application relating to or affecting the
rights and remedies of creditors generally and to general equitable
principles (regardless of whether in equity or at law).
(b) Organization and Authority of
VPI . VPI is a corporation duly organized, validly existing and
in good standing under its jurisdiction of formation. VPI has full
corporate power
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and corporate authority to execute and deliver
this Agreement and effect the transactions contemplated hereby and
thereby and has duly authorized the execution, delivery and
performance of this Agreement the and transactions or documents
contemplated hereby by all necessary corporate action. VPI has all
corporate power and corporate authority necessary to own its assets
and carry on its business as currently conducted. This Agreement is
the valid and legally binding obligation of VPI, enforceable
against it in accordance with its terms, subject to applicable
bankruptcy, moratorium, reorganization, insolvency and similar laws
of general application relating to or affecting the rights and
remedies of creditors generally and to general equitable principles
(regardless of whether in equity or at law).
(c) Consents; No Violations of
Valeant . Neither the execution, delivery or performance of
this Agreement, nor compliance by Valeant with any of the
provisions hereof, will (i) violate or conflict with any
provision of the Certificate or Articles of Incorporation or Bylaws
of Valeant, (ii) violate, conflict with, or result in a breach
of any provision of, or constitute a default (or an event which,
with notice or lapse of time or both, would constitute a default)
under, or result in the creation of any Encumbrance upon any of
Valeant’s assets under, any of the terms, conditions or
provisions of any material contract, indebtedness, note, bond,
indenture, security or pledge agreement, commitment, license,
lease, franchise, permit, agreement, or other instrument or
obligation to which Valeant is a party, or (iii) violate any
statute, rule, regulation, ordinance, code, order, judgment,
ruling, writ, injunction, decree or award applicable to Valeant,
except, in the case of each of clauses (i),
(ii) and (iii) above, for such violations, conflicts,
breaches, defaults or creations of Encumbrances which, in the
aggregate, would not have a material adverse affect on the business
of Valeant taken as a whole or any adverse effect on its ability to
fully perform this Agreement.
(d) Consents; No Violations of
VPI . Neither the execution, delivery or performance of this
Agreement, nor compliance by VPI with any of the provisions hereof,
will (i) violate or conflict with any provision of the
Certificate or Articles of Incorporation or Bylaws of VPI,
(ii) violate, conflict with, or result in a breach of any
provision of, or constitute a default (or an event which, with
notice or lapse of time or both, would constitute a default) under,
or result in the creation of any Encumbrance upon any of VPI assets
under, any of the terms, conditions or provisions of any material
contract, indebtedness, note, bond, indenture, security or pledge
agreement, commitment, license, lease, franchise, permit,
agreement, or other instrument or obligation to which VPI is a
party, or (iii) violate any statute, rule, regulation,
ordinance, code, order, judgment, ruling, writ, injunction, decree
or award applicable to VPI, except, in the case of each of
clauses (i), (ii) and (iii) above, for such
violations, conflicts, breaches, defaults or
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creations of Encumbrances which, in the
aggregate, would not have a material adverse affect on the business
of VPI taken as a whole or any adverse effect on its ability to
fully perform this Agreement.
(e) Litigation . There are no
lawsuits, claims or any civil, administrative or criminal actions,
suits, or proceedings or governmental investigations existing,
pending, or to the knowledge of Valeant, threatened, with respect
to this Agreement or the transactions contemplated hereby. Valeant
is not subject to any decree or order of any Government Authority
that would impair or delay its ability to perform its obligations
under this Agreement.
Section 4.3 Survival of
Representations and Warranties . The representations and warranties made in this
Agreement shall survive the termination of this Agreement for the
full period prescribed by the statute of limitations applicable to
claims for the breach of such representation or
warranty.
ARTICLE 5
ADDITIONAL
COVENANTS
Section 5.1 Restrictions on
Transfer of Patents . Senetek shall not assign, sell or, transfer the
Patents or any rights therein to a non-Affiliate, except in
accordance with Article 8 hereof. Any purported transfer of the
Patents or any rights therein in violation of this Section 5.1
shall be void and without effect and shall not operate to transfer
the Patents or any rights therein to the purported
transferee.
Section 5.2 Provision of
Information . Within
ten (10) days following the date of this Agreement, Senetek
will provide to Valeant or its designee, on a non-exclusive basis
and subject to the limitations set forth in Section 2.3 of
this Agreement, true and correct copies of all information in its
possession or control, whether in tangible or electronic form,
relating to the Intellectual Property and the Know-How, including
but not limited to any clinical data, study reports, any
information relating to manufacturing, any agreements in respect of
the Intellectual Property and the Know-How, analytical results,
analytical method validation reports, raw material and sourcing
information, quality audit findings, stability reports, any other
relevant technical information relating to the Intellectual
Property and the Know-How, and any related correspondence and
filings with any Government Entity (including notes or minutes of
any meeting with any Government Entity).
Section 5.3 Lealand Clark
Patent . Senetek is
the exclusive assignee of United States Patent No. 5,151,425
(the “ Lealand Clark Patent ”). Until such time
as Senetek’s r
