|
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.
1
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:
2
(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;
3
(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 the other p
| 
