Exhibit 10.1
NON-EXCLUSIVE LICENSE
AGREEMENT
THIS NON-EXCLUSIVE LICENSE
AGREEMENT (the
“Agreement” ) is entered into as of
January 8, 2007 (the “Effective Date” ),
by and between ALTHEA TECHNOLOGIES, INC. , a Delaware
corporation, having offices at 11040 Roselle Street, San Diego, CA
92121 ( “Althea” ), and VALENTIS,
INC. , a Delaware corporation, having offices at 863A Mitten
Road, Burlingame, CA 94010 ( “Valentis”
).
WHEREAS, Valentis is the owner, or is the exclusive
licensee of, the Licensed Technology (as defined below);
and
WHEREAS, Althea wishes to obtain, and Valentis is willing
to grant, a non-exclusive, worldwide license under the Licensed
Technology on the terms and subject to the conditions set forth
herein.
NOW, THEREFORE,
in consideration of the mutual
covenants and promises hereinafter set forth, the parties hereto
agree as follows:
1.
DEFINITIONS. As
used in this Agreement, the following terms have the meanings set
forth below:
1.1
“Affiliate” shall mean any corporation or other entity which
controls, is controlled by, or is under common control with, a
party. For the purposes of this definition, a corporation or
other entity shall be regarded as in control of another corporation
or entity if it owns or directly or indirectly controls more than
50% of the voting securities or other ownership interest of the
other corporation or entity, or if it possesses, directly or
indirectly, the power to direct or cause the direction of the
management and policies of the corporation or other
entity.
1.2
“Confidential Information” shall mean all data and information, tangible or
intangible, whether in written, graphic, verbal or electronic form,
developed by or disclosed or made available by one party to the
other party, its employees or representatives under this Agreement
and that is marked as “Confidential” at the time it is
delivered to the receiving pary or when disclosed orally is
confirmed in writing within thirty (30) days by the disclosing
party. Notwithstanding the foregoing, Confidential
Information shall not include any information which the receiving
party can prove by competent evidence:
(a)
is now, or hereafter becomes,
through no act or failure to act on the part of the receiving
party, generally publicly known or available;
(b)
is known by the receiving party at
the time of receiving such information, as evidenced by its
records;
(c)
is hereafter furnished to the
receiving party by a Third Party, as a matter of right and without
restriction on disclosure; or
(d)
is independently developed by the
receiving party, as evidenced by its records, without knowledge of,
and without the aid, application or use of, the Confidential
Information of the disclosing party.
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1.3
“Control” shall mean possession of the ability to grant a
license or sublicense as provided for herein without violating the
terms of any agreement or other arrangement with any Third
Party.
1.4
“Customer” shall mean any Third Party for whom Althea
provides contract manufacturing services.
1.5
“Know-How” shall mean know-how, trade secrets, data,
processes, techniques, procedures, compositions, devices, methods,
formulas, protocols and information, whether or not patentable
specifically related to the Licensed Technology.
1.6
“Licensed Patents” shall mean the patents and patent applications
listed in Appendix I hereto and (a) any and all
corresponding foreign patents and patent applications, whether now
existing or hereafter filed, (b) any provisionals,
continuations, continuation-in-part, substitutions, divisionals,
reissues, renewals, substitute applications and inventors’
certificates arising from, or based upon, any of the foregoing
patents or patent applications, and (c) any patents issuing
from any of the foregoing patent applications.
1.7
“Licensed Technology” shall mean:
(a)
the Licensed Patents; and
(b)
Know-How that is (i) in the
possession and control of Valentis on the Effective Date,
(ii) necessary or useful for the practice of the inventions
claimed in the Licensed Patents, and (iii) not generally
publicly known.
1.8
“Product” shall mean plasmid DNA for use in research,
preclinical development, clinical development or commercialization
activities.
1.9
“Term” shall
have the meaning provided in Section 6.1.
1.10
“Third Party” shall mean any entity other than Althea or
Valentis or an Affiliate of Althea or Valentis.
2.
LICENSE.
2.1
License Grant.
Subject to the terms and conditions of this Agreement, Valentis
hereby grants to Althea a non-exclusive, worldwide, fully-paid,
royalty-free license, with the right to grant sublicenses as set
forth in Section 2.2, under the Licensed Technology to make,
have made, use, sell, have sold, offer to sell and import
Products. Without limiting or expanding the generality of the
foregoing, Althea shall have the right to practice the license
granted under this Section 2.1 for the purpose of providing
contract manufacturing services on behalf of Third
Parties.
2.2
Sublicenses. Subject to the terms and conditions of this
Agreement, Althea shall have the right to grant sublicenses under
the license granted to Althea pursuant to Section 2.1 as
follows:
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(a)
to any Customer, to the extent
necessary for such Customer to manufacture, or to have manufactured
on such Customer’s behalf, a Product that Althea previously
manufactured for such Customer;
(b)
to any Third Party designated by a
Customer, to the extent necessary for such Third Party to
manufacture on such Customer’s behalf a Product that Althea
previously manufactured for such Customer;
(c)
to any Third Party selected by
Althea, to the extent necessary for such Third Party to manufacture
on Althea’s behalf a Product that Althea previously
manufactured for its own account; and/or
(d)
to any Affiliate of
Althea.
Upon Valentis’ written request
from time to time, Althea shall disclose to Valentis the identities
of all then-existing sublicensees, which disclosure shall be
considered Confidential Information of Althea.
2.3
Disclosure of Know-How. Promptly after the Effective Date,
Valentis shall disclose to Althea the Know-How included the
Licensed Technology the acceptance of which shall be deemed to have
occurred on the delivery of same.
2.4
No implied rights.
Except as expressly granted above, all rights not granted are
expressly reserved.
3.
PAYMENT OBLIGATIONS.
3.1
License Fee. As
full and complete payment for the license granted hereunder, Althea
shall pay to Valentis a license fee of $185,000. Such fee
shall be payable in U.S. dollars and shall be made by wire transfer
to a bank and account designated in writing by Valentis within 10
days after the Effective Date.
3.2
Taxes. All taxes
levied on account of the payment accruing to Valentis under this
Agreement shall be paid by Valentis for its own account, including
taxes levied thereon as income to Valentis. If provision is
made in law or regulation for withholding, such tax shall be
deducted by Althea from the amount otherwise payable by it
hereunder for payment to the proper taxing authority on behalf of
Valentis and a receipt of payment of the tax secured and promptly
delivered to Valentis. Althea shall be responsible for
all other taxes that arise from this Agreement.
4.
PROTECTION OF CONFIDENTIAL INFORMATION.
4.1
Confidentiality.
During the Term and for a period of five (5) years thereafter, each
party agrees, with respect to any Confidential Information
disclosed to such party (the “Receiving
Party” ) by the other party (the
“Disclosing Party” ) under this
Agreement:
(a)
To use such Confidential Information
only for the purposes set forth in this Agreement;
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(b)
To receive, maintain and hold the
Confidential Information in strict confidence and to use the same
methods and degree of care (but at least reasonable care) to
prevent disclosure of such Confidential Information as it uses to
prevent disclosure of its own proprietary and Confidential
Information and to protect against its dissemination to
unauthorized parties;
(c)
Not to disclose, or authorize or
permit the disclosure of any Confidential Information to any third
party without the prior written consent of the Disclosing Party;
and
(d)
Except as needed to fulfill its
obligations under this Agreement, to return any Confidential
Information to the Disclosing Party at the request of the
Disclosing Party and to retain no copies or reproductions
thereof.
4.2
Authorized Disclosure. Notwithstanding Section 4.1, the
Receiving Party may disclose Confidential Information, without
violating the obligations of this Agreement, to the extent the
disclosure is required by a valid order of a court or other
governmental body having jurisdiction; provided, that, the
Receiving Party gives reasonable prior written notice to the
Disclosing Party of such required disclosure and makes a reasonable
effort to obtain, or to assist the Disclosing Party in obtaining, a
protective order preventing or limiting the disclosure and/or
requiring that the Confidential Information so disclosed be used
only for the purposes for which the law or regulation requires, or
for which the order was issued.
4.3
Use of Name/Publicity. Neither party shall use the other
party’s name in connection with any publication or promotion
without th
