EXCLUSIVE LICENSE
AGREEMENT
This
Exclusive License
Agreement (this “Agreement” )
is entered into as of July 5, 2006 by and between Sytera II, Inc. , a Delaware
corporation (the “Licensor” ), and
Sirion Therapeutics,
Inc. , a North Carolina corporation (the
“Licensee” ).
Whereas, pursuant to that
certain Exclusive License Agreement, dated as of June 30, 2006 (the
“Original License Agreement” ), by and
between Sytera, Inc., a Delaware corporation (
“Sytera” ), and Licensor, Licensor has
been granted an exclusive, worldwide license to the Licensed
Patents (as defined below) in the Field (as defined
below);
Whereas, pursuant to that
certain Agreement and Plan of Merger and Reorganization, dated as
of July 5, 2006 (the “Merger Agreement”
), by and among Licensor, Licensee, Sytera and Kenneth J. Widder,
M.D., solely in his capacity as Stockholders’ Representative
(as defined in the Merger Agreement), Sytera is being merged with
and into Licensee at the Effective Time (as defined in the Merger
Agreement), with Licensee continuing as the surviving corporation
in the merger; and
Whereas, effective as of the
Effective Time, Licensor desires to grant to Licensee, and Licensee
desires to receive from Licensor, an exclusive, worldwide license
to sell and offer for sale the Licensed Products (as defined below)
pursuant to the terms and conditions set forth in this
Agreement.
Now, Therefore, in
consideration of the mutual covenants and agreements set forth
below, and for other good and valuable consideration, the receipt
and sufficiency of which are hereby acknowledged, the parties
hereby agree as follows:
1.
Definitions.
As used in this
Agreement:
1.1
“Fenretinide” means 4-hydroxyphenyl
retinamide and its active metabolite, 4-methoxyphenyl
retinamide.
1.2
“Field” means the treatment or prevention of
diabetes.
1.3
“License” means the exclusive license
granted to Licensee in Section 2.
1.4
“Licensed Patents” means: (i) the
patents and patent applications relating to Fenretinide listed in
Exhibit A ; (ii) all patents issuing or claiming
priority from any of the patents and patent applications listed in
Exhibit A including continuations,
continuations-in-part, divisionals, reexaminations, reissues, and
extensions thereof, and foreign counterparts, and substitutions of
the patents and patent applications listed in Exhibit A
whether or not such patent applications or patents exist as of the
date of this Agreement; and (iii) all other patents and patent
applications exclusively licensed to Licensor pursuant to the
Original License Agreement.
1.5
“Licensed Product” means any product, or
component thereof, relating to the Field that: (i) would
infringe one or more claims of a Licensed Patent but for the
License; (ii) is identical or substantially identical in
composition, formulation or dosage to any Product marketed by
Licensee outside the Field; and (iii) has been manufactured by
or on behalf of the Licensor.
1.6
“Product” means any preparation that
contains Syt101 as an active ingredient for sale by prescription,
over-the-counter or any other method.
1.7
“Syt101” means Fenretinide, including any
active metabolite or prodrug of Fenretinide or any hydrate,
conjugate, salt, ester, amide, solvate, cocrystal, isomer,
polymorph, analogue or other derivative of any of the
foregoing.
2.
License Grant; License
Fee. Subject to
the terms and conditions of this Agreement, including, without
limitation, Licensee’s payment of the License Fee (as defined
below), at and effective as of the Effective Time, Licensor hereby
grants to Licensee an exclusive, worldwide license (without the
right to sublicense) under the Licensed Patents to sell and offer
to sell the Licensed Products (the
“License” ). In consideration of the
License granted to Licensee pursuant to this Section 2,
Licensee shall pay to Licensor at the Effective Time, as a one-time
license fee, an amount in cash equal to $4,379.60 (the
“License Fee” ).
3.
Additional Terms of
License.
3.1 Term of
License. The License will remain in effect until all Licensed
Patents have expired or been abandoned; provided ,
however , that Licensor may terminate the License, effective
immediately upon written notice to Licensee, in the event that:
(i) the Sytera Rights (as defined in the Merger Agreement) are
transferred or required to be transferred by Licensee to Licensor
in accordance with Section 1.5(h) of the Merger Agreement; or
(ii) Licensee breaches any provision of this Agreement or the
Merger Agreement and does not cure such breach within fifteen
(15) days after receiving written notice thereof.
3.2
Restrictions on Licensor. Given that the License is being
granted on an exclusive basis, at all times during the term of the
License specified in Section 3.1, Licensor agrees not to sell
or offer to sell any Licensed Product and not to grant to any third
party any rights of any kind concerning the Licensed Patents for
the sale of the Licensed Products.
4.1
Projects. Subject to the terms and conditions of this
Agreement, including, without limitation, Licensee’s payment
of the Consulting Fee (as defined below), Licensee hereby engages
Licensor, and Licensor hereby accepts the engagement by Licensee,
effective as of the Effective Time, to act as a nonexclusive
consultant to Licensee for a period of one (1) year following
Effective Time (the “Consulting Term” ).
In its capacity as such nonexclusive consultant to Licensee,
Licensor shall perform such services relating to the exploitation
of Licensee’s rights under the License (each, a
“Project” ) as are requested from time to
time during the Consulting Term by Licensee (collectively, the
“Services” ); provided ,
however , that: (i) prior to Licensor’s becoming
obligated to perform any individual Project, the parties shall
mutually agree upon and set forth in writing the scope of the
Project, the timing for completion of the Project and the relative
rights of each party with respect to any intellectual property
resulting
2.
from the
performance of such Project; and (ii) Licensor shall
not
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