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) Andrew X. Chen (“Dr. Chen”), with
respect to the following facts:
A.
Dr. Chen 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, Dr. Chen 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 Dr. Chen, 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 Dr. Chen
hereby assign to SDP all rights and interests of Dr. Chen 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, Dr. Chen 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 Dr. Chen 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.
|
