EXHIBIT 10.4
February 15, 2007
Pfizer Inc.
235 East 42nd Street
New York, NY 10017-5755
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Attention:
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Edmund P.
Harrigan
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Senior Vice President,
World-Wide Business Development
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Re:
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Exclusive
License Agreement
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Dear Mr. Harrigan:
As you are aware, pursuant to the
Exclusive License Agreement dated February 15, 2007
(“Pfizer Agreement”), Pfizer Inc. and Pfizer Products,
Inc. (collectively, “Pfizer”) have licensed to InSite
Vision Incorporated (“Licensor”) certain rights owned
by Pfizer. Licensor proposes to enter into an agreement (the
“Licensee Agreement”) with Inspire Pharmaceuticals,
Inc. (“Licensee”) pursuant to which Licensor would
grant to Licensee among other things a sublicense under the rights
and licenses granted to Licensor under the Pfizer
Agreement.
1. No Default . Pfizer
confirms that, as of the date of this letter agreement (the
“Letter Agreement”), the Pfizer Agreement remains in
full force and effect and Pfizer has not given any notice to
Licensor of any default by Licensor under the Pfizer
Agreement.
2. Consent to Sublicense .
Pfizer hereby gives its consent, pursuant to Section 2(b) of
the Pfizer Agreement, to Licensor granting sublicenses to Licensee
pursuant to the Licensee Agreement under the rights and licenses
granted to Licensor under the Pfizer Agreement. Licensor and
Licensee agree to promptly notify Pfizer as to the date the
Licensee Agreement becomes effective (the “Effective
Date”).
3. Effective Date .
Paragraphs 4 - 10 of this Letter Agreement shall become effective
as of the Effective Date, and except as otherwise expressly
provided the provisions of this Letter Agreement shall be effective
from the date of first written above.
4. Licensor Default . Under
Pfizer Agreement. Pfizer agrees to provide Licensee with notice of
any breach or default by Licensor under the Pfizer Agreement at the
same time it notifies Licensor of such breach or default. Such
notice to Licensee shall be given in accordance with Paragraph 9
below. Licensee will be provided, in all respects, the opportunity
to cure on behalf of Licensor any breach or default by Licensor
under the Pfizer Agreement within the sixty (60) day cure
period (or ten (10) day cure period, with respect to breach or
default of a payment obligation) as set forth in Section 13 of
the Pfizer Agreement, and Pfizer shall accept any such cure by
Licensee on Licensor’s behalf.
5. Patents . If and to the
extent Licensor is permitted to prosecute any patent application or
maintain any patent within the Licensed Patents (as defined in the
Pfizer Agreement) in the United States or Canada (such countries
collectively being referred to herein as the
“Territory”), and Licensor does not exercise such right
within ten (10) days of the date such right arises under the
Pfizer Agreement, Licensee may, upon written notice to Pfizer,
assume full responsibility, at Licensee’s discretion, cost
and expense, for prosecution of such application or maintenance of
such patent in such country. If and to the extent Licensor is
permitted to initiate legal proceedings against an infringer of any
of the Licensed Patents in any country in the Territory pursuant to
Section 8(a) or 8(c) of the Pfizer Agreement, and Licensor
does not exercise such right within ten (10) days of the date
such right arises under the Pfizer Agreement, Licensee may, upon
notice to Pfizer, initiate and carry on such legal proceedings
pursuant to the terms of Sections 8(a), 8(c), 8(d) and 8(e)
thereof.
6. Continuation of
Licensee’s Sublicense Rights Upon Termination of the Pfizer
Agreement . Subject to the licenses granted to Licensor in the
Pfizer Agreement, Pfizer agrees to grant to Licensee all rights and
licenses granted to Licensor under the Pfizer Agreement on the same
terms and conditions that such rights and licenses were granted to
Licensor under the Pfizer Agreement, to the extent such terms and
conditions arise from or apply to the grant of rights and licenses
from Licensor to Licensee under the Licensee Agreement with respect
to the Territory, including all payment and termination provisions
of the Pfizer Agreement (collectively, the “Stand-By
License”); provided, however, that Pfizer will grant such
rights and licenses only after the Pfizer Agreement first
terminates or otherwise ceases to be in effect for any reason,
whether or not in connection with any laws governi
