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EXHIBIT 10.19
AGREEMENT
BY AND BETWEEN
IOMED, INC.
AND
LABORATOIRES ▇▇▇▇▇▇▇▇ S.C.A.
DATED AS OF FEBRUARY 20, 1996
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TABLE OF CONTENTS
ARTICLE I. DEFINITIONS........................................................................... 1
ARTICLE II. REPRESENTATIONS AND WARRANTIES........................................................ 6
2.01. WARRANTIES OF IOMED............................................................. 6
2.02. WARRANTIES OF ▇▇▇▇▇▇▇▇.......................................................... 7
ARTICLE III. CONVERSION OF THE NOTE................................................................ 8
3.01. CONVERSION...................................................................... 8
3.02. EFFECT OF CONVERSION............................................................ 8
3.03. RESERVATION OF CONVERSION SHARES................................................ 9
3.04. ADJUSTMENTS..................................................................... 9
ARTICLE IV. RESEARCH AND DEVELOPMENT AGREEMENT.................................................... 9
4.01. TERMINATION..................................................................... 9
4.02. RESEARCH COSTS.................................................................. 9
4.03. WAIVER OF CLAIMS................................................................ 9
4.04. RETURN OF INFORMATION........................................................... 10
4.05. FENTANYL BLOOD LEVEL STUDY...................................................... 10
4.06. ELECTRODES...................................................................... 10
ARTICLE ' V. MEETINGS OF IOMED'S BOARD OF DIRECTORS................................................ 10
5.01. MEETINGS........................................................................ 10
5.02. LIMITATION...................................................................... 11
5.03. DEFINITION...................................................................... 11
ARTICLE VI. LICENSES AND SUBLICENSES.............................................................. 11
6.01. OWNERSHIP....................................................................... 11
6.02. IOMED LICENSE TO ▇▇▇▇▇▇▇▇....................................................... 12
6.03. ▇▇▇▇▇▇▇▇ LICENSE TO IOMED....................................................... 13
6.04. SUBLICENSES..................................................................... 13
6.05. RESTRICTIONS.................................................................... 14
6.06. ROYALTIES....................................................................... 15
ARTICLE VII. SALE OF TECHNOLOGY.................................................................... 15
7.01. RESTRICTION..................................................................... 15
7.02. RIGHT OF FIRST OFFER............................................................ 15
ARTICLE VIII. TERMINATION........................................................................... 17
8.01. TERM............................................................................ 17
8.02. EFFECT OF TERMINATION........................................................... 18
8.03. CONTINUING LIABILITY............................................................ 18
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ARTICLE IX. GENERAL PROVISIONS.................................................................... 18
9.01. AMENDMENTS...................................................................... 18
9.02. SEVERABILITY OF PROVISIONS...................................................... 18
9.03. GOVERNING LAW................................................................... 19
9.04. HEADINGS........................................................................ 19
9.05. COUNTERPARTS.................................................................... 19
9.06. NOTICES......................................................................... 19
9.07. SPECIFIC PERFORMANCE............................................................ 20
9.08. SUCCESSORS AND ASSIGNS.......................................................... 20
9.09. FURTHER ASSURANCES.............................................................. 20
9.10. EXPENSES........................................................................ 20
9.11. ASSIGNMENT...................................................................... 20
9.12. CONFIDENTIAL INFORMATION........................................................ 21
9.13. PUBLICITY....................................................................... 23
9.14. ENTIRE AGREEMENT................................................................ 23
EXHIBITS......................................................................................................... 25
A ▇▇▇▇▇▇▇▇ INVENTIONS.......................................................... 25
B ▇▇▇▇▇▇▇▇ TECHNOLOGY.......................................................... 26
C IOMED INVENTIONS............................................................. 28
D IOMED TECHNOLOGY............................................................. 29
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AGREEMENT
This Agreement ("Agreement"), dated as of February 20, 1996, is by
and between Iomed, Inc., a Utah corporation having its principal place of
business at ▇▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇ ▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇ ("Iomed"), and
Laboratoires ▇▇▇▇▇▇▇▇ S.C.A., a French corporation having its principal place of
business at ▇ ▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇ ("▇▇▇▇▇▇▇▇").
RECITALS
A. Iomed and ▇▇▇▇▇▇▇▇ entered into a Research and Development Agreement
dated June 29, 1993 (the "Research and Development Agreement"), for the joint
development and commercialization of certain systems for iontophoretic
transdermal delivery.
B. Simultaneously with the execution and delivery of the Research and
Development Agreement, ▇▇▇▇▇▇▇▇ loaned to Iomed, and Iomed borrowed from
▇▇▇▇▇▇▇▇, an amount equal to Three Million Dollars ($3,000,000 U.S.), such loan
evidenced by a nonnegotiable subordinated convertible promissory note dated June
29, 1993 (the "Note").
C. Iomed and ▇▇▇▇▇▇▇▇ desire to terminate the Research and Development
Agreement, except as hereinafter provided, and to enter into this Agreement.
Accordingly, in consideration of the premises and other good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, Iomed and ▇▇▇▇▇▇▇▇ agree as follows:
ARTICLE I. DEFINITIONS
For purposes of this Agreement, the following terms shall have
the following meanings (such meanings to be equally applicable to both the
singular and plural forms of the terms defined):
1.01. "Additional Conversion Shares" shall mean the
additional shares of Common Stock and/or the different class or classes of
shares, if any, to be issued to ▇▇▇▇▇▇▇▇ pursuant to Section 3.04 hereof. In the
case of an adjustment to the Conversion Price, the Additional Conversion Shares
to be issued to ▇▇▇▇▇▇▇▇ shall represent the difference between the number of
such shares ▇▇▇▇▇▇▇▇ (a) would receive by dividing the Principal Amount by the
Conversion Price as adjusted in accordance with Section 3.04 hereof and (b)
received pursuant to Section 3.01 hereof. In the case of a change in the class
or classes of stock, ▇▇▇▇▇▇▇▇ shall
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be entitled to receive, in lieu of the Additional Conversion Shares which it is
entitled to receive but for such change, the equivalent of the shares of such
other class or classes of stock that reflects what ▇▇▇▇▇▇▇▇ would have received
if it had been entitled to receive such Additional Conversion Shares immediately
prior to such change.
1.02. "Affiliate" shall mean, with respect to any Person, (a)
each other Person that, directly or indirectly through one or more
intermediaries, controls, is controlled by, or is under common control with,
such Person or any Affiliate of such Person and (b) each of such Person's
officers, directors, joint venturers and partners.
1.03. ****
1.04. "Applicable Law" shall mean any federal, state or local
statute, law, ordinance, rule, administrative interpretation, regulation, order,
writ, injunction, directive, judgment, decree or other requirement, whether
foreign or domestic, of any Governmental Authority applicable to a Person or its
properties, business or assets.
1.05. "Ciba" shall mean Ciba-Geigy Corporation and any
Affiliate thereof.
1.06. "Common Stock" shall mean fully paid and nonassessable
shares of common stock of Iomed.
1.07. "Confidential Information" shall mean, subject to the
limitations set forth in Section 9.12 hereof, any technical and business
information relating to a Party's research, development, inventions, products,
production, manufacturing, finances, marketing, customers, or future business
plans, including, without limitation, trade secrets, know-how, data, formulas,
processes, or other intellectual property, that is or has been disclosed to or
otherwise received or obtained by a Receiving Party, whether or not in
connection with or pursuant to this Agreement or the Research and Development
Agreement.
1.08. "Conversion Period" shall mean the period commencing
on June 29, 1995 and ending at the close of business on June 29, 1998.
1.09. "Conversion Price" shall mean $1.85, or as such price
may be adjusted in accordance with Section 3.04 hereof.
1.10. "Conversion Shares" shall mean the shares of Common
Stock into which the Note is converted pursuant to Section 3.01 hereof.
1.11. "Disclosing Party" shall mean the Party (a) who
discloses, and owns or otherwise possesses the rights and interests to and in,
the Confidential Information or (b) whose Confidential Information is the
subject of any process, subpoena or demand.
1.12. ****
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****
1.13. "Escrow Agent" shall mean an independent third party,
mutually acceptable to and designated by both Parties pursuant to Section 7.02
hereof.
1.14. "Floor Price" shall mean the average of the ▇▇▇▇▇▇▇▇
Sealed Bid and the Iomed Sealed Bid rounded to the nearest whole dollar, as
determined by the Escrow Agent, where (a) the numerator is the sum of the
▇▇▇▇▇▇▇▇ Sealed Bid and the Iomed Sealed Bid and (b) the denominator is 2.
1.15. "▇▇▇▇▇▇▇▇" shall have the meaning set forth in the
opening paragraph of this Agreement and shall include any Affiliate of ▇▇▇▇▇▇▇▇.
1.16. "▇▇▇▇▇▇▇▇ Inventions" shall mean the technology,
patents, patent applications, and non-patentable technological information as
ascribed to ▇▇▇▇▇▇▇▇ on Exhibit A hereto, and any improvements) thereto.
1.17. "▇▇▇▇▇▇▇▇ Sealed Bid" shall mean a sealed bid
submitted by ▇▇▇▇▇▇▇▇ pursuant to Section 7.02 hereof, which bid shall set forth
the cash purchase price (in U.S. dollars) that ▇▇▇▇▇▇▇▇ offers to pay in order
to purchase all of the Offered Assets.
1.18. "▇▇▇▇▇▇▇▇ Technology" shall mean the technology,
patents, patent applications, and non-patentable technological information as
ascribed to ▇▇▇▇▇▇▇▇ on Exhibit B hereto, and any improvements) thereto that do
not constitute ▇▇▇▇▇▇▇▇ Inventions.
1.19. "GAAP" shall mean generally accepted accounting
principles in the United States of America as in effect as of the date of the
Offer Notice, including, without limitation, those set forth in the opinions and
pronouncements of the Accounting Principles Board of the American Institute of
Certified Public Accountants and statements and pronouncements of the Financial
Accounting Standards Board.
1.20. "Governmental Authority" shall mean any federal,
state or local governmental authority, court, government or self-regulatory
organization, commission, tribunal, organization, regulatory, administrative or
other
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agency, political or other subdivision, department, or instrumentality, or
branch of any of the foregoing, whether foreign or domestic.
1.21. "Iomed" shall have the meaning set forth in the
opening paragraph of this Agreement and shall include any Affiliate of Iomed.
1.22. "Iomed Assets" shall mean any asset of Iomed,
including, without limitation, Iomed Inventions and Iomed Technology, or any
portion thereof; provided, however, that the defined term "Iomed Assets" shall
not include (a) for the purpose of Section 7.01 hereof, Iomed assets typically
sold by Iomed in the ordinary course of business, such as electrodes and
iontophoretic power supply units or (b) for the purpose of Section 7.02 hereof,
(i) Iomed assets typically sold by Iomed in the ordinary course of business,
such as electrodes and iontophoretic power supply units or (ii) Iomed laboratory
equipment.
1.23. "Iomed Inventions" shall mean the technology,
patents, patent applications, and non-patentable technological information as
ascribed to Iomed on Exhibit C hereto, and any improvement(s) thereto.
1.24. "Iomed Sealed Bid" shall mean a sealed bid submitted
by Iomed pursuant to Section 7.02 hereof, which bid shall set forth the cash
purchase price (in U.S. dollars) that Iomed is willing to accept for the sale of
the Offered Assets.
1.25. "Iomed Technology" shall mean the technology, patents,
patent applications, and non-patentable technological information as ascribed to
Iomed on Exhibit D hereto, and any improvement(s) thereto that do not constitute
Iomed Inventions.
1.26. "Mandated Research" shall mean the research and
development obligations assigned to a Party pursuant to the Research and
Development Agreement.
1.27. "Mini-Integrated System" shall mean any
mini-integrated wearable system, consisting of a current source, a controller, a
drug containment device, and dispersive electrodes (whether or not the foregoing
components are all present at the treatment site), intended to permit
iontophoretic transdermal delivery of medicaments.
1.28. "Note" shall have the meaning set forth in the recitals
of this Agreement.
1.29. "Offer Notice" shall mean a written notice by Iomed
to ▇▇▇▇▇▇▇▇, indicating that a sale of Iomed Assets is under consideration and
specifying the Iomed Assets subject to such sale.
1.30. "Offer Period" shall mean the sixty (60)-day period
commencing upon the later of ▇▇▇▇▇▇▇▇'▇ (a) receipt of the Offer Notice, (b)
receipt of Iomed's financial statements, and (c) access to Iomed's facilities,
books, and records pursuant to Section 7.02(a) hereof; provided, however, that,
in the event the Offered Assets identified in the Offer Notice do not include
any Iomed Inventions or Iomed Technology, or any portion thereof, then the
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defined term "Offer Period" shall mean the ten (10)-day period commencing upon
▇▇▇▇▇▇▇▇'▇ receipt of such Offer Notice, in which case Iomed shall grant to
▇▇▇▇▇▇▇▇ access to Iomed's facilities, books, and records relating to such
Offered Assets within seven (7) days of ▇▇▇▇▇▇▇▇'▇ receipt of such Offer Notice.
1.31. "Offered Assets" shall mean the Iomed Assets
specified in each Offer Notice.
1.32. "Parties" shall mean Iomed and ▇▇▇▇▇▇▇▇, and "Party"
shall mean Iomed or ▇▇▇▇▇▇▇▇.
1.33. "Person" shall mean any individual, sole
proprietorship, partnership, joint venture, trust, unincorporated organization,
association, corporation, institution, public benefit corporation, firm, joint
stock company, estate, entity, Affiliate, or Governmental Authority.
1.34. "Principal Amount" shall mean the principal sum of
Three Million Dollars ($3,000,000 U.S.), as evidenced by the Note.
1.35. "Qualifying Affiliate" shall mean any Affiliate of
Iomed as to which: (a) Iomed owns or controls fifty percent (50%) or more of the
issued and outstanding capital stock (or other corresponding equity interests)
of such Affiliate and (b) none of the issued and outstanding capital stock (or
other corresponding equity interests) of such Affiliate is owned by any Person
with whom Iomed or such Affiliate has entered into an agreement regarding the
research, development, and/or commercialization of any product, which research,
development, and/or commercialization is being conducted, in whole or in part,
by such Affiliate.
1.36. "Receiving Party" shall mean the Party who (a)
receives or otherwise obtains Confidential Information of the Disclosing Party
or (b) is served with any process, subpoena or demand.
1.37. "Research and Development Agreement" shall have
the meaning set forth in the recitals of this Agreement.
1.38. "Research Costs" shall mean the costs incurred by a
Party in connection with Mandated Research.
1.39. ****
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ARTICLE II. REPRESENTATIONS AND WARRANTIES
2.01. Warranties of Iomed. Iomed hereby represents and
warrants to ▇▇▇▇▇▇▇▇ that, as of the date of this Agreement, the following
statements are and shall be true and correct in all material respects:
(a) Organization and Good Standing. Iomed is a
corporation duly organized, validly existing and in good standing under the laws
of the State of Utah, has the corporate power and authority to conduct the
business in which it presently is engaged, to enter into this Agreement, and to
perform its obligations hereunder, is qualified to do business as a foreign
corporation, and is in good standing in each jurisdiction in which the failure
to be so qualified would have a material adverse effect upon its business or
financial condition.
(b) Authorization and Binding Effect. All corporate
action on the part of Iomed and its officers and directors necessary for the
authorization, execution, and delivery of this Agreement and for the performance
of all of Iomed's obligations hereunder has been taken, and this Agreement, when
executed and delivered, shall constitute a valid and legally binding obligation
of Iomed enforceable against Iomed in accordance with its terms, except as
enforceability may be limited by bankruptcy, insolvency and other laws affecting
creditors' rights generally or by general equitable principles.
(c) Execution, Delivery and Performance. The
execution, delivery, and performance by Iomed of this Agreement do not (i)
violate or breach the certificate of incorporation or bylaws of Iomed, (ii)
violate or conflict with any Applicable Law, (iii) violate, breach, cause a
default under, or otherwise give rise to a right of termination, cancellation or
acceleration with respect to (presently, with the giving of notice or the
passage of time), any agreement, contract or instrument to which Iomed is a
party or by which any of its assets are bound, or (iv) result in the creation or
imposition of any lien, pledge, mortgage, claim, charge, or encumbrance upon any
assets of Iomed.
(d) Governmental and Other Consents. No consent,
authorization, license, permit, registration or approval of, or exemption or
other action by, any Governmental Authority or any other Person is required in
connection with Iomed's execution and delivery of this Agreement or with the
performance or grant by Iomed of its obligations or any license or sublicense
hereunder.
(e) Non-Infringement. Except as specifically
disclosed in writing by Iomed to ▇▇▇▇▇▇▇▇ on or before the date of this
Agreement, Iomed is not aware of any active patents that would be infringed by
the license or use of Iomed Inventions or Iomed Technology contemplated hereby.
(f) Common Stock. The authorized capital stock of
Iomed consists of 40,000,000 shares of Common Stock, having a par value per
share of $0.001, of which 12,229,409 shares are presently outstanding, and
4,215,618 shares of preferred stock, having a par value per share of $0.001, of
which 981,363 shares are presently outstanding.
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(g) Outstanding Rights. There are no outstanding
rights (preemptive or otherwise) or options to subscribe for or purchase, or
warrants or other agreements providing for or requiring the issuance by Iomed
of, capital stock or securities convertible into capital stock, except as
follows: (i) the Note; (ii) the Common Stock issuable upon conversion of the
981,363 outstanding shares of preferred stock of Iomed; (iii) a total of
1,475,829 shares of Common Stock issuable upon exercise of options outstanding
under Iomed's 1988 Stock Option Plan as of December 31, 1995; and (iv) a warrant
to purchase 10,000 shares of Common Stock.
(h) Conversion Price. No event has occurred since the
date of the execution of the Note that would require or otherwise result in any
adjustment(s) in the Conversion Price (as defined in, and in accordance with
Section 3.2 of; the Note) that would result in lowering the amount of such
price.
(i) Conversion Shares. The Conversion Shares, when
issued and delivered in accordance with the terms of this Agreement, shall be
duly and validly issued, fully paid and nonassessable, and, assuming that
▇▇▇▇▇▇▇▇ acquires such shares for investment and not with a view to or for
resale in connection with a distribution, shall be issued in compliance with
Applicable Law, including, without limitation, federal and state securities
laws.
2.02. Warranties of ▇▇▇▇▇▇▇▇. ▇▇▇▇▇▇▇▇ hereby represents
and warrants to Iomed that, as of the date of this Agreement, the following
statements are and shall be true and correct in all material respects:
(a) Organization and Good Standing. ▇▇▇▇▇▇▇▇ is a
corporation duly organized, validly existing and in good standing under the laws
of France and has the corporate power and authority to conduct the business in
which it presently is engaged, to enter into this Agreement, and to perform its
obligations hereunder.
(b) Authorization and Binding Effect. All corporate
action on the part of ▇▇▇▇▇▇▇▇ and its officers and directors necessary for the
authorization, execution, and delivery of this Agreement and for the performance
of all of ▇▇▇▇▇▇▇▇'▇ obligations hereunder has been taken, and this Agreement,
when executed and delivered, shall constitute a valid and legally binding
obligation of ▇▇▇▇▇▇▇▇ enforceable against ▇▇▇▇▇▇▇▇ in accordance with its
terms, except as enforceability may be limited by bankruptcy, insolvency or
other laws affecting creditors' rights generally or by general equitable
principles.
(c) Execution, Delivery and Performance. The
execution, delivery, and performance by ▇▇▇▇▇▇▇▇ of this Agreement do not (i)
violate or breach the certificate of incorporation or bylaws of ▇▇▇▇▇▇▇▇, (ii)
violate or conflict with any Applicable Law, (iii) violate, breach, cause a
default under, or otherwise give rise to a right of termination, cancellation or
acceleration with respect to (presently, with the giving of notice or the
passage of time), any agreement, contract or instrument to which ▇▇▇▇▇▇▇▇ is a
party or by which any
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of its assets are bound, or (iv) result in the creation or imposition of any
lien, pledge, mortgage, claim, charge, or encumbrance upon any assets of
▇▇▇▇▇▇▇▇.
(d) Governmental and Other Consents. No consent,
authorization, license, permit, registration or approval of, or exemption or
other action by, any Governmental Authority or any other Person is required in
connection with ▇▇▇▇▇▇▇▇'▇ execution and delivery of this Agreement or with the
performance or grant by ▇▇▇▇▇▇▇▇ of its obligations or any license or sublicense
hereunder.
(e) Non-Infringement. Except as specifically
disclosed in writing by ▇▇▇▇▇▇▇▇ to Iomed on or before the date of this
Agreement, ▇▇▇▇▇▇▇▇ is not aware of any active parents that would be infringed
by the license or use of ▇▇▇▇▇▇▇▇ Inventions contemplated hereby.
(f) Non-Affiliation. ▇▇▇▇▇▇▇▇ is not an Affiliate of,
or a successor in interest to, any of the following entities: **** ▇▇▇▇▇▇▇▇ does
not derive more than fifty percent (50%) of its income from, and is not an
Affiliate of, or successor in interest to, any entity that derives more than
fifty percent (50%) of its income from, the development, licensing, and/or sale
of drug delivery systems to other pharmaceutical companies.
ARTICLE III. CONVERSION OF THE NOTE
3.01. Conversion. Simultaneously with the execution and
delivery of this Agreement, (a) ▇▇▇▇▇▇▇▇ shall convert the Principal Amount into
Common Stock, by surrendering, or causing to be surrendered, the Note, duly
endorsed, to Iomed, and (b) Iomed shall issue the Conversion Shares and shall
deliver, or cause to be delivered, to ▇▇▇▇▇▇▇▇ a certificate for the number of
Conversion Shares. The number of Conversion Shares shall be 1,621,622, or as
otherwise adjusted in accordance with Section 3.04 hereof. Such conversion shall
be deemed to have been made simultaneously with the execution of this Agreement,
and ▇▇▇▇▇▇▇▇ shall be treated for all purposes as the holder of record of the
shares of Common Stock issued upon conversion from and as of such time. Except
as provided in Sections 3.03 and 3.04 hereof, from and after the time of such
conversion, ▇▇▇▇▇▇▇▇ shall have no further rights, and Iomed shall have no
further obligations, pursuant to the Note.
3.02. Effect of Conversion. Conversion of the Note shall
not constitute a waiver or release of, or otherwise be deemed to prejudice or
affect in any way, a breach by Iomed of any representation or warranty made
pursuant to Section 2.01 hereof. In the event of such breach by Iomed, ▇▇▇▇▇▇▇▇
shall have the right to seek monetary and/or injunctive relief.
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3.03. Reservation of Conversion Shares. Iomed shall, at all
times during the Conversion Period, reserve and keep available out of its
authorized but unissued shares of Common Stock, solely for the purpose of
effecting the issuance of Additional Conversion Shares, such number of its
shares of Common Stock as shall be sufficient to effect the issuance of such
Additional Conversion Shares. If, at any time, the number of authorized but
unissued shares of Common Stock is not sufficient to effect the issuance of
Additional Conversion Shares, then Iomed shall immediately take such corporate
action as is necessary to increase its authorized but unissued shares of Common
Stock to such number of shares of Common Stock as shall be sufficient for such
purpose. In the event that Iomed fails to take such corporate action in order to
permit ▇▇▇▇▇▇▇▇ to receive the Additional Conversion Shares in accordance with
Section 3.04 hereof, (a) such failure shall not affect or otherwise prejudice
▇▇▇▇▇▇▇▇'▇ to such Additional Conversion Shares, and (b) ▇▇▇▇▇▇▇▇ shall have the
right to (i) receive such Additional Conversion Shares as soon as practicable
after Iomed takes such corporate action and/or (ii) seek other monetary or
injunctive relief.
3.04. Adjustments. Anything herein to the contrary
notwithstanding, during the Conversion Period the substantive effect of the
adjustment provisions set forth in Section 3.2 et seq. of the Note shall
survive, shall be made a part of this Agreement, and shall apply in all respects
as if set forth in full herein so as to effect an adjustment of the number of
Conversion Shares and/or of the Conversion Price in the same manner and to the
same extent, but to no greater extent, as if the Note had not been converted on
the date hereof; provided, however, that the initial Conversion Price shall be
$1.85. It is the intention of the Parties that during the Conversion Period the
adjustment provisions of the Note shall continue to inure to the benefit of
▇▇▇▇▇▇▇▇, subject to the foregoing proviso. If Iomed takes any action during the
Conversion Period that would have the effect of reducing the Conversion Price,
then ▇▇▇▇▇▇▇▇ shall be entitled to receive Additional Conversion Shares from
Iomed, and Iomed shall deliver to ▇▇▇▇▇▇▇▇ a certificate for the applicable
number of Additional Conversion Shares.
ARTICLE IV. RESEARCH AND DEVELOPMENT AGREEMENT
4.01. Termination. Simultaneously with the execution and
delivery of this Agreement, the Parties agree that the Research and Development
Agreement is hereby terminated.
4.02. Research Costs. The Parties agree that, by virtue of
the termination of the Research and Development Agreement, neither Party shall
be required to equalize its Research Costs (or to make any payment whatsoever to
the other Party with respect to such Research Costs), as provided under the
terms of that agreement.
4.03. Waiver of Claims. Each of Iomed and ▇▇▇▇▇▇▇▇ waives
any and all claims it has and may have against the other under the terms of the
Research and Development Agreement.
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4.04. Return of Information. Except as otherwise herein
provided, each Party shall (a) simultaneously with the execution and delivery of
this Agreement, discontinue the use of Confidential Information of the other
Party and (b) upon the written request of the other Party, return to such Party,
within thirty (30) days of such request, all items of Confidential Information
of such Party that are identified specifically in such written request;
provided, however, that, if and to the extent that any license or sublicense
granted pursuant to Section 6.02, 6.03, or 6.04 hereof shall relate to such
Confidential Information, a Receiving Party shall be permitted to retain only
such Confidential Information as is reasonably necessary for the continued
exercise of its license or sublicense rights and to use such Confidential
Information within the scope of such license or sublicense.
4.05. Fentanyl Blood Level Study. ▇▇▇▇▇▇▇▇ shall, within
forty-five (45) days of the date of this Agreement, deliver to Iomed the results
of the human fentanyl blood level study that was conducted pursuant to Mandated
Research for the period ended June 30, 1995, and a complete copy of the final
written report with respect thereto, all without charge to Iomed.
4.06. Electrodes. Iomed shall, within forty-five (45) days of
the date of this Agreement, deliver to ▇▇▇▇▇▇▇▇ **** electrodes identical to the
electrodes used to perform the human fentanyl blood level study referenced in
Section 4.05 hereof, together with the control analysis data and the batch
manufacturing report with respect thereto. It is understood and agreed by the
Parties that ▇▇▇▇▇▇▇▇ shall pay to Iomed, and Iomed shall accept from ▇▇▇▇▇▇▇▇,
for such electrodes a sum equal to ****, which sum represents ****, and that,
except for such sum, ▇▇▇▇▇▇▇▇ shall not be required to make any other payment
whatsoever for or in connection with such electrodes, data or report.
ARTICLE V. MEETINGS OF IOMED'S BOARD OF DIRECTORS
5.01. Meetings.
(a) Simultaneously with the execution and delivery of
this Agreement, Iomed shall deliver to ▇▇▇▇▇▇▇▇ a schedule of the date(s) of
each previously scheduled meeting of Iomed's board of directors. In addition,
Iomed shall (1) with respect to each meeting of Iomed's board of directors,
provide to ▇▇▇▇▇▇▇▇ timely notice of the date, time, place, and purpose of each
such meeting and any change in such date, time, place, or purpose thereof, (ii)
timely provide to ▇▇▇▇▇▇▇▇ (subject to Section 5.02 hereof) such other
information and documents that are given to members of Iomed's board of
directors (including, without limitation, minutes of board meetings), and (iii)
permit (subject to Section 5.02 hereof) a representative of ▇▇▇▇▇▇▇▇ to attend
each such meeting. Any written or other information obtained by ▇▇▇▇▇▇▇▇
pursuant to this Section 5.01 shall constitute Confidential Information of
Iomed. All costs and expenses associated with the attendance by ▇▇▇▇▇▇▇▇'▇
representative at such meetings shall be borne by ▇▇▇▇▇▇▇▇.
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(b) ▇▇▇▇▇▇▇▇ may elect not to exercise its right to
have its representative attend any such meeting of Iomed's board of directors,
but any such election shall not prejudice or otherwise preclude ▇▇▇▇▇▇▇▇'▇ right
to have its representative attend any other meeting (subject to Section 5.02
hereof) nor cause Iomed to fail to provide the notice and other information and
documents required to be furnished to ▇▇▇▇▇▇▇▇ pursuant to Section 5.01(a)
hereof.
5.02. Limitation. The rights of ▇▇▇▇▇▇▇▇ pursuant to
Section 5.01 hereof shall terminate automatically upon the earlier of (a) the
date on which Iomed becomes subject to the reporting requirements of Section
13(a) or 15(d) of the Securities Exchange Act of 1934, as amended, or (b) the
date on which ▇▇▇▇▇▇▇▇ ceases to own, in the aggregate, less than 692,551 shares
of Common Stock or such other stock or securities of Iomed (as adjusted for
stock. splits, combinations and the like). ▇▇▇▇▇▇▇▇'▇ right to have its
representative attend meetings of Iomed's board of directors and to receive
information and documents pursuant to Section 5.01 hereof shall not apply if and
to the extent that ▇▇▇▇▇▇▇▇ is a competitor as of such time with respect to a
business venture in which Iomed, either by itself or in conjunction with any
Person, is engaged or proposes to engage, and such business venture is a subject
of such meeting, in which case Iomed may, acting in good faith and upon written
notice to ▇▇▇▇▇▇▇▇, exclude ▇▇▇▇▇▇▇▇'▇ representative from that portion of the
meeting and not provide such information and documents related to such portion
of the meeting. It is understood and agreed by the Parties that, if Iomed
intends to exercise its right to exclude ▇▇▇▇▇▇▇▇'▇ representative from any
portion of a meeting pursuant to this Section 5.02, Iomed shall notify ▇▇▇▇▇▇▇▇
of such intent at the same time it delivers the written notice of such meeting
pursuant to Section 5.01 hereof (or, if the decision to exclude ▇▇▇▇▇▇▇▇'▇
representative is made after the written notice of the meeting is delivered,
then immediately upon becoming aware that any such matter will be discussed at
such meeting, so long as the notice of such intent is received by ▇▇▇▇▇▇▇▇ not
less than three (3) days prior to the date of such meeting). Iomed shall provide
sufficient information, consistent with the purpose of this Section 5.02 that
competitively sensitive information not be disclosed, to establish that ▇▇▇▇▇▇▇▇
is a competitor as of such time with respect to a business venture in which
Iomed, either by itself or in conjunction with any Person, is engaged or
proposes to engage. ▇▇▇▇▇▇▇▇ shall have the right to challenge the basis for any
exclusion from a meeting.
5.03. Definition. As used in this Article V, the defined
term "Iomed" shall include any Qualifying Affiliate, but not any other Affiliate
of Iomed.
ARTICLE VI. LICENSES AND SUBLICENSES
6.01. Ownership.
(a) As between Iomed and ▇▇▇▇▇▇▇▇, Iomed shall have
all right, title and interest to and in Iomed Technology and Iomed Inventions,
subject to the licenses and sublicenses granted pursuant to this Article VI. As
between Iomed and ▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇
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shall have all right, title and interest to and in ▇▇▇▇▇▇▇▇ Technology and
▇▇▇▇▇▇▇▇ Inventions, subject to the licenses and sublicenses granted pursuant to
this Article VI.
(b) Except as otherwise expressly provided in this
Agreement, neither Party, as a result of this Agreement or any license or
sublicense granted hereunder, shall obtain any ownership, interest or other
right in or to any patents, pending patent applications, inventions, know-how,
formulas, processes, trade secrets, or other technology or products of the other
Party. It is understood and agreed by the Parties that this Agreement does not
grant to either Party any license or other right to use in advertising,
publicity or otherwise any trademark, service ▇▇▇▇, trade name or their
equivalent, or any contraction, abbreviation or simulation thereof, of the other
Party.
6.02. Iomed License to ▇▇▇▇▇▇▇▇.
(a) Iomed hereby grants to ▇▇▇▇▇▇▇▇, and ▇▇▇▇▇▇▇▇
hereby accepts, a **** license to (i) Iomed Technology to make, have made,
manufacture, use, disclose, distribute, market, have marketed or distributed,
sell or have sold Mini-Integrated Systems based upon or incorporating, or
developed or manufactured through processes based upon or incorporating, Iomed
Technology and (ii) Iomed Inventions to make, have made, manufacture, use,
disclose, distribute, market, have marketed or distributed, sell or have sold
any products, including, without limitation, Mini-Integrated Systems, based upon
or incorporating, or developed or manufactured through processes based upon or
incorporating, Iomed Inventions.
(b) It is understood and agreed by the Parties that
(i) the license granted pursuant to Section 6.02(a) hereof shall not be
exclusive and (ii) subject to Article VII hereof, there shall be no other
restriction or limitation on Iomed's right to sell, convey, transfer, pledge,
encumber, license, sublicense, or otherwise dispose of, Iomed Technology or
Iomed Inventions.
(c) It is understood by the Parties that there is (i)
an agreement dated ****, by and between Iomed and **** involving the acquisition
of certain rights under their respective patents and patent applications (the
"**** License"), and (ii) an agreement dated ****, by and between Iomed and the
**** involving the development and utilization of certain inventions (the "****
License"), and that the license granted to ▇▇▇▇▇▇▇▇ pursuant to this Section
6.02, insofar as it relates to the subject of the **** License or the ****
License, is subject to all of the conditions and limitations set forth in those
Licenses.
(d) ▇▇▇▇▇▇▇▇ shall not assign to any Person all or
any portion of the Iomed Technology or the Iomed Inventions licensed to it
pursuant to Section 6.02(a) hereof, except in connection with a sale of all or
substantially all of its business or pursuant to Section 9.11 hereof.
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6.03. ▇▇▇▇▇▇▇▇ License to Iomed.
(a) ▇▇▇▇▇▇▇▇ hereby grants to Iomed, and Iomed hereby
accepts, a **** license to ▇▇▇▇▇▇▇▇ Inventions to make, have made, manufacture,
use, disclose, distribute, market, have marketed or distributed, sell or have
sold any products, including, without limitation, Mini-Integrated Systems, based
upon or incorporating, or developed or manufactured through processes based upon
or incorporating, ▇▇▇▇▇▇▇▇ Inventions.
(b) It is understood and agreed by the Parties that
(i) the license granted pursuant to Section 6.03(a) hereof shall not be
exclusive and (ii) there shall be no restriction or limitation on ▇▇▇▇▇▇▇▇'▇
right to sell, convey, transfer, pledge,-encumber, license, sublicense, or
otherwise dispose of, ▇▇▇▇▇▇▇▇ Technology or ▇▇▇▇▇▇▇▇ Inventions.
(c) Iomed shall not assign to any Person all or any
portion of the ▇▇▇▇▇▇▇▇ Inventions licensed to it pursuant to Section 6.03(a)
hereof, except in connection with a sale of all or substantially all of its
business or pursuant to Section 9.11 hereof.
6.04. Sublicenses.
(a) ▇▇▇▇▇▇▇▇ shall be free to grant sublicenses
(which may include the right of any sublicensee to grant lower level licenses),
freely and without restriction of any type, and on any terms ▇▇▇▇▇▇▇▇, in its
sole discretion, deems desirable, covering all or any portion of the Iomed
Inventions licensed to it pursuant to Section 6.02(a)(ii) hereof;, provided,
however, that any such sublicense shall (i) not be granted to **** for a period
of two (2) years from the date of this Agreement and (ii) be entered into in
conjunction with an agreement, joint venture or other collaboration by and
between ▇▇▇▇▇▇▇▇ and the recipient of such sublicense involving the research,
development, manufacture, production, commercialization, distribution, sale,
and/or marketing by ▇▇▇▇▇▇▇▇ and such recipient of any products, including,
without limitation, a Mini-Integrated System.
(b) Iomed shall be free to grant sublicenses (which
may include the right of any sublicensee to grant lower level licenses), freely
and without restriction of any type, and on any terms Iomed, in its sole
discretion, deems desirable, covering all or any portion of the ▇▇▇▇▇▇▇▇
Inventions licensed to it pursuant to Section 6.03(a) hereof; provided, however,
that any such sublicense shall (i) not be granted to **** for a period of two
(2) years from the date of this Agreement and (ii) be entered into in
conjunction with an agreement, joint venture or other collaboration by and
between Iomed and the recipient of such sublicense involving the research,
development, manufacture, production, commercialization, distribution, sale,
and/or marketing by Iomed and such recipient of any products, including, without
limitation, a Mini-Integrated System.
(c) ▇▇▇▇▇▇▇▇ may (subject to Section 6.02(c) hereof),
without the prior consent of Iomed, grant to any Person (including, without
limitation, ****) a sublicense covering all or any portion of the Iomed
Technology licensed to ▇▇▇▇▇▇▇▇ pursuant to Section 6.02(a)(i) hereof; provided,
however, that any such sublicense (i)
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may not be granted to **** for a period of two (2) years from the date of this
Agreement, (ii) shall be entered into in conjunction with an agreement, joint
venture or other collaboration by and between ▇▇▇▇▇▇▇▇ and any such Person
involving the research, development, manufacture, production, commercialization,
distribution, sale, and/or marketing by ▇▇▇▇▇▇▇▇ and any such Person of any
Mini-Integrated System, and (111) may include the right to grant lower level
licenses within the scope of such agreement, joint venture or other
collaboration.
(d) It is understood and agreed by the Parties that
this Section 6.04 shall not apply to any assignment by a Party of all or any
portion of its respective rights hereunder, whether by operation of law or
otherwise, and that assignments are the subject matter of Sections 6-02(d),
6.03(c) and 9.11 hereof; provided, however, that the provisions of this Section
6.04 shall remain binding on any permitted assignee of either Party.
6.05. Restrictions.
(a) Iomed, by itself or in conjunction with any
Person, shall not:
(i) have any right, license, sublicense,
interest or access to or in, or employ, implement, insert, duplicate, utilize,
use or otherwise make use of, any ▇▇▇▇▇▇▇▇ Technology;
(ii) knowingly employ, implement, insert,
duplicate, utilize, use or otherwise make use of ▇▇▇▇.▇▇ described in Exhibit B
hereto, or any portion or component thereof, or any prior model, version,
configuration, prototype or other form of DDU3, for any purpose, including,
without limitation, any research, development, inventions, products, production,
manufacturing or other processes or activities;
(iii) employ, implement, insert, duplicate,
utilize, use or otherwise make use of (A) ASIC as described in Exhibit B hereto,
including, without limitation, the software and algorithms relating thereto,
developed by ▇▇▇▇▇▇▇▇ and **** or (B) the external design and user interface
developed with ****, for, in each case, any purpose, including, without
limitation, any research, development, inventions, products, production,
manufacturing or other processes or activities; or
(iv) enter into any joint venture, contract,
agreement, understanding or other arrangement with (A) **** for the invention,
creation, development, production, manufacturing, commercialization or marketing
of ASIC for iontophoretic systems or (B) **** for iontophoretic delivery system
design.
(b) For a period of two (2) years from the date of
this Agreement, Iomed shall not develop, pursue or otherwise engage in, by
itself or in conjunction with any **** or other Person, research, development,
production, manufacture, commercialization or marketing of a Mini-Integrated
System or any other iontophoretic system
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for delivery of (i) fentanyl, (II) other natural or synthetic opiate/opioid
medicaments and/or (ill) medicaments that (A) are used or prescribed for severe
pain management in lieu of fentanyl or other natural or synthetic opiate/opioid
medicaments and (B) act specifically by blocking the pain sensation but not by
treating the underlying causative disease or other medical condition). After the
expiration of that two (2)-year period, Iomed shall be permitted to develop,
pursue or otherwise engage in any such system, subject to the restrictions and
limitations set forth in this Article VI. It is understood and agreed by the
Parties that, as used in this Section 6.05, the term "opiate" shall mean any
remedy containing or derived from opium, and the term "opioid" shall mean (x)
any synthetic narcotic that has opiate activities and is not derived from opium
and (y) any naturally occurring peptide (for example, enkephalins) that exerts
opiate-like effects by interacting with opiate receptors on cell membranes.
6.06. Royalties. Neither Party shall be required to pay to
the other Party a royalty or any other payment in consideration of any licenses
or sublicenses granted pursuant to this Article VI, except for any royalty
payment that may be required to be made to **** under an agreement dated ****,
between **** and Iomed for the ▇▇▇▇▇▇▇ U.S. **** issued to ****, which royalty
payment, if any, shall be paid by ▇▇▇▇▇▇▇▇ to Iomed.
ARTICLE VII. SALE OF TECHNOLOGY
7.01. Restriction. For a period of two (2) years from the
date of this Agreement, Iomed shall not: (a) sell, convey, or otherwise transfer
any Iomed Assets to Ciba; (b) merge or consolidate with Ciba; or (c) issue any
securities to Ciba if and to the extent that the result of any such issuance
would be to make Ciba the beneficial owner of fifty percent (50%) or more of the
then outstanding voting securities of Iomed. Notwithstanding the foregoing,
Iomed and Ciba may, at any time, participate in the joint development and
commercialization of any products (including, without limitation, a
Mini-Integrated System, but subject to the limitations set forth in Sections
6.05(a) and 6.05(b) hereof) based upon or incorporating, or developed or
manufactured through processes based upon or incorporating, Iomed Technology,
Iomed Inventions, and ▇▇▇▇▇▇▇▇ Inventions, which joint development and
commercialization may contain, among other provisions not inconsistent with the
terms of this Agreement, licenses and sublicenses of Iomed Technology, Iomed
Inventions, and ▇▇▇▇▇▇▇▇ Inventions to Ciba and an investment by Ciba in Iomed.
7.02. Right of First Offer.
(a) Notice. If, at each and any time within five (5)
years from the date of this Agreement, Iomed decides to sell, convey or
otherwise transfer Iomed Assets, then Iomed shall, within seven (7) days after
such decision, forward to ▇▇▇▇▇▇▇▇ an Offer Notice; provided, however, that, in
the event of any sale, conveyance or other transfer of Iomed Assets to Ciba
(subject to Section 7.01 hereof), this Section 7.02 shall not apply. It is
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understood and agreed by the Parties that, during the Offer Period and pending
consummation of the transaction pursuant to Section 7.02(c) hereof, Iomed shall
not (i) sell, convey, or otherwise transfer, or offer to sell, convey, or
otherwise transfer, the Offered Assets to any Person other than ▇▇▇▇▇▇▇▇ or (ii)
permit any Person other than ▇▇▇▇▇▇▇▇ to purchase such Offered Assets. Iomed
shall, within ten (10) days of submission of the Offer Notice, submit to
▇▇▇▇▇▇▇▇ true and correct copies of Iomed's most recent financial statements
prepared in accordance with GAAP and grant to ▇▇▇▇▇▇▇▇ reasonable access to
Iomed's facilities, books, and records relating to the Offered Assets.
(b) Sealed Bids. ▇▇▇▇▇▇▇▇ shall have the right to
purchase all, but not less than all, of the Offered Assets, which right shall be
exercisable by ▇▇▇▇▇▇▇▇'▇ delivery of a ▇▇▇▇▇▇▇▇ Sealed Bid to the Escrow
Agent-during the Offer Period. The Escrow Agent shall treat the ▇▇▇▇▇▇▇▇ Sealed
Bid as Confidential Information of ▇▇▇▇▇▇▇▇ within the meaning of this
Agreement, and shall not disclose to Iomed, except in accordance with this
Section 7.02(b), the contents of the ▇▇▇▇▇▇▇▇ Sealed Bid; provided, however,
that the Escrow Agent shall notify Iomed of the receipt of such ▇▇▇▇▇▇▇▇ Sealed
Bid. If ▇▇▇▇▇▇▇▇ submits a ▇▇▇▇▇▇▇▇ Sealed Bid during the Offer Period, then
Iomed shall, no later than fourteen (14) days of receipt by the Escrow Agent of
the ▇▇▇▇▇▇▇▇ Sealed Bid, deliver to the Escrow Agent an Iomed Sealed Bid. Upon
receipt of the Iomed Sealed Bid, the Escrow Agent shall open each of the sealed
bids submitted by the Parties and shall notify, in writing, the Parties of the
respective amounts of the ▇▇▇▇▇▇▇▇ Sealed Bid and the Iomed Sealed Bid and of
the Floor Price.
(c) Consummation of Transaction. If the ▇▇▇▇▇▇▇▇
Sealed Bid is greater than, or not more than **** less than, the Iomed Sealed
Bid, then Iomed shall be obligated to sell the Offered Assets to ▇▇▇▇▇▇▇▇, and
▇▇▇▇▇▇▇▇ shall be obligated to purchase the Offered Assets from Iomed, at the
Floor Price within sixty (60) days of notification by the Escrow Agent of the
Floor Price, subject to (i) negotiation of a definitive agreement and (ii)
conditions customary for a transaction of the type contemplated, including,
without limitation, (A) representations and warranties by Iomed comparable to
those set forth in Section 2.01 hereof, (B) Iomed's good and marketable title to
the Offered Assets at the time of the sale, with full power to sell, transfer
and assign the same, free and clear of any security interest, lien, mortgage,
encumbrance or restriction of any kind, (C) the absence of any litigation or
other obligation that may affect the value of such Offered Assets, (D) the
absence of any material adverse change in such Offered Assets after submission
of the Offer Notice and prior to closing, and (E) Iomed's ownership of the
Offered Assets, including, without limitation, the Iomed Inventions, Iomed
Technology, patents, trademarks, and copyrights and exclusive right to use the
same (except as therein disclosed).
(d) Failure to Submit Sealed Bid. Iomed shall, for a
period of one (1) year from the expiration of the respective Offer Period, be
free to sell the Offered Assets (i) at a price not less than the Floor Price
determined by the Escrow Agent in accordance with this Section 7.02, in the
event that the ▇▇▇▇▇▇▇▇ Sealed Bid is less than the Iomed Sealed Bid by more
than One Hundred Fifty Thousand Dollars ($150,000 U.S.) or (ii) at any price, in
the
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event that ▇▇▇▇▇▇▇▇ fails to submit a ▇▇▇▇▇▇▇▇ Sealed Bid prior to the
expiration of the Offer Period. Any prospective sale, conveyance or other
transfer of the Offered Assets which has not been consummated within such one
(1)-year period shall become subject again to this Section 7.02.
(e) Limitations.
(i) The provisions of this Section 7.02
shall not apply to any sale, conveyance or other transfer of any Iomed Assets
(A) to any Affiliate of Iomed (other than an Affiliate formed or otherwise
created by Iomed and Ciba) or (B) that occurs at a time when Iomed is subject to
the reporting requirements of Sections 13(a) or 15(d) of the Securities Exchange
Act of 1934, as amended. It is understood and agreed by the Parties treat it
shall be a condition precedent to any sale, conveyance or other transfer
pursuant to clause (A) above that the transferee Affiliate agree in writing to
be bound by a right of first offer in favor of ▇▇▇▇▇▇▇▇ identical to this
Section 7.02 with respect to any subsequent sale, conveyance or other transfer
by such transferee Affiliate of the Iomed Assets transferred to it pursuant to
such clause (A).
(ii) If Iomed or any of its Affiliates
enters into an agreement, joint venture or other collaboration with Ciba for the
research, development, manufacture, marketing, distribution or sale of any
Mini-Integrated System or other product, and such agreement, joint venture or
other collaboration continues in force and effect for a term of not less than
one (1) year, then the provisions of this Section 7.02 shall terminate
automatically upon the expiration of the first year of such agreement, joint
venture or other collaboration, and without any further action by either Party.
It is understood and agreed by the Parties that any such agreement, joint
venture or other collaboration with Ciba shall be subject to the same
restrictions and other limitations imposed upon Iomed pursuant to Articles VI
and VII hereof.
(iii) The rights described in this Section
7.02 shall survive termination of this Agreement.
(f) Definitions. As used in this Section 7.02, (i)
the phrase "sell, convey or otherwise transfer," as used in relation to the
specified Iomed Assets, shall mean a sale, conveyance or other transfer of all
of the transferring Party's right, title and interest in and to such Iomed
Assets, and (ii) the defined term "Iomed" shall not include any Affiliate of
Iomed.
ARTICLE VIII. TERMINATION
8.01. Term. This Agreement shall become effective on the
day and year written in the opening paragraph of this Agreement and shall
continue in full force and effect for an indefinite term, unless sooner
terminated by mutual written agreement of the Parties and except as otherwise
expressly provided herein.
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8.02. Effect of Termination. It is understood and agreed by
the Parties that the following shall survive termination of this Agreement:
(a) the respective representations and warranties of
Iomed and ▇▇▇▇▇▇▇▇ pursuant to Article II hereof;
(b) the respective rights and obligations of Iomed
and ▇▇▇▇▇▇▇▇ pursuant to Articles III, IV and V hereof;
(c) the respective rights and obligations of Iomed
and ▇▇▇▇▇▇▇▇ pursuant to Article VI hereof, including, without limitation,
Iomed's continued ownership of Iomed Technology and Iomed Inventions, ▇▇▇▇▇▇▇▇'▇
continued ownership of ▇▇▇▇▇▇▇▇ Technology and ▇▇▇▇▇▇▇▇ Inventions, the
respective licenses and sublicenses granted by Iomed and ▇▇▇▇▇▇▇▇ pursuant to
Sections 6.02, 6.03, and 6.04 hereof, the restrictions imposed pursuant to
Sections 6.04 and 6.05 hereof, and the royalty obligations pursuant to Section
6.06 hereof;
(d) the respective rights and obligations of Iomed
and ▇▇▇▇▇▇▇▇ pursuant to Article VII hereof;
(e) Sections 8.02, 8.03, 9.06, 9.07, 9.08, 9.09,
9.10, and 9.12 of this Agreement; and
(f) any right, remedy, claim, action or cause of
action a Party has or may have against the other Party for breach of a material
obligation under this Agreement.
8.03. Continuing Liability. Termination of this Agreement
for any reason shall not release a Party from any liability, obligation,
agreement or other responsibility under this Agreement that already has accrued
or arisen, nor shall any termination constitute a waiver or release of, or
otherwise be deemed to prejudice or affect, any rights, remedies, claims,
actions or causes of action, whether for damages or otherwise, that a Party may
have hereunder or which may arise out of or in connection with such termination.
ARTICLE IX. GENERAL PROVISIONS
9.01. Amendments. Neither this Agreement nor any of the
terms hereof may be amended, supplemented, waived or modified except by an
instrument in writing signed by the Party against whom enforcement of such
change is sought.
9.02. Severability of Provisions. Any provision of this
Agreement that may be finally determined by a Governmental Authority to be
invalid or unenforceable in any jurisdiction shall, as to such jurisdiction, be
ineffective to the extent of such invalidity or unenforceability, without
invalidating or rendering unenforceable any remaining provisions hereof, and any
such invalidity or unenforceability in any jurisdiction shall not invalidate or
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render unenforceable such provision in any other jurisdiction. The Parties shall
negotiate in good faith to replace any such provision with an appropriate, legal
provision and, to the extent permitted by law, hereby waive any provision of law
that renders any provision hereof invalid or unenforceable in any respect.
9.03. Governing Law. This Agreement and all issues arising
under or relating to this Agreement, including, without limitation, its
construction, interpretation, breach, and damages for breach, shall be governed
by the laws of the State of New York (without regard to its conflict of laws
principles). Any action, cause of action or dispute arising under or relating to
this Agreement shall be brought only in the courts of the State of New York or
the federal court of the United States, located in the Borough of Manhattan,
County of New York, the State of New York, and each of the Parties expressly
consents-to personal jurisdiction in the State of New York with respect to such
action, cause of action or dispute.
9.04. Headings. The division of this Agreement into
sections, the provision of a table of contents, and the insertion of headings
are for convenience of reference only and shall not affect the construction or
interpretation of this Agreement.
9.05. Counterparts. This Agreement may be executed in any
number of counterparts, each of which shall be deemed an original but all of
which taken together shall constitute one and the same instrument.
9.06. Notices. All communications and notices provided for
under this Agreement shall be in writing and be given in person, by courier or
by means of telex, telecopy or other wire transmission (with provision for
assurance of receipt in a manner typical with respect to communications of that
type), or be mailed by registered or certified first class mail, return receipt
requested, at the address set forth below (or to such other person, address or
telecopy (FAX) number as a Party may, from time to time, designate by written
notice):
(a) If to Iomed-
Iomed, Inc.
3385 West ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇ ▇▇▇▇ ▇▇▇▇, ▇▇▇▇ ▇▇▇▇▇ ▇.▇.▇.
Att'n: ▇▇. ▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇▇
FAX: (▇▇▇) ▇▇▇-▇▇▇▇
With a copy to-
▇▇▇▇▇▇▇▇ & ▇▇▇▇▇▇▇▇ LLP
▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
Att'n: C. ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, Esq.
FAX: (▇▇▇) ▇▇▇-▇▇▇▇;
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(b) If to ▇▇▇▇▇▇▇▇-
Laboratoires ▇▇▇▇▇▇▇▇ S.C.A.
▇▇, ▇▇▇ ▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇
Att'n: ▇▇. ▇▇▇▇▇▇▇ Majoie
FAX: (▇▇) ▇▇-▇▇-▇▇-▇▇
With a copy to-
Cadwalader, ▇▇▇▇▇▇▇▇▇▇ & ▇▇▇▇
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇
▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇ ▇▇▇▇▇
Att'n: ▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇, Esq.
FAX: (▇▇▇) ▇▇▇-▇▇▇▇
All such communications and notices given in such manner shall be deemed given
when received by (or when proffered to, if receipt is refused) the Party or
Person to whom it is addressed.
9.07. Specific Performance. Each Party hereto acknowledges
that the payment of monetary damages may be an inadequate remedy for the breach
of its obligations under this Agreement, and agrees that the other Party shall
be entitled to specific performance of such obligations.
9.08. Successors and Assigns. This Agreement, including the
terms and provisions hereof, shall be binding upon, and inure to the benefit of,
each of Iomed and ▇▇▇▇▇▇▇▇ and their respective successors and permitted
assigns.
9.09. Further Assurances. Each of the Parties shall perform
such acts, execute and deliver such instruments and documents, and do all such
other things as may be reasonably necessary to accomplish the transactions
contemplated under this Agreement.
9.10. Expenses. Each of the Parties shall bear its
respective costs and expenses (including attorneys' fees and expenses) incurred
in connection with the negotiation and preparation of this Agreement and
consummation of the transactions contemplated hereby. In any action, cause of
action or dispute arising under or relating to this Agreement, a court shall
have the right and authority to assess the costs of the proceedings.
9.11. Assignment. Except as expressly provided to the
contrary in this Agreement, neither Party may assign any of its rights or
obligations under this Agreement without the prior written consent of the other
Party, which consent shall not be unreasonably withheld. Notwithstanding the
foregoing, it is understood and agreed by the Parties that each Party may assign
its rights and obligations under this Agreement in conjunction with the
incorporation of any unit of such Party as a wholly owned Affiliate and, in the
case of ▇▇▇▇▇▇▇▇, the disposition of any of its units, including, without
limitation, Tilderm Systems;
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provided, however, that ▇▇▇▇▇▇▇▇ shall not be permitted to assign its rights
under Article V or Section 7.02 hereof to any Person other than an Affiliate of
▇▇▇▇▇▇▇▇.
9.12. Confidential Information.
(a) Confidentiality. A Receiving Party agrees that it
shall, and that it shall use diligent efforts to ensure that each of its
officers, directors, employees and agents shall, protect and hold in confidence
all Confidential Information of the Disclosing Party and shall not disclose, or
cause to be disclosed, such information to third parties, except as expressly
provided to the contrary in this Agreement. In furtherance, and not in
limitation, of the foregoing, each Party agrees that it shall (i) leave in place
any proprietary or confidential legends or markings placed upon any Confidential
Information by the Disclosing Party, (ii) restrict disclosure of Confidential
Information to those of its officers, directors, employees and agents who have a
"need to know" in respect to such information, and (iii) instruct and require
such officers, directors, employees and agents to maintain the confidentiality
of Confidential Information and not to use such information except as expressly
permitted herein. Such obligations shall apply with respect to Confidential
Information for the term of this Agreement and for a period of ten (10) years
after any termination of this Agreement.
(b) Rights to Confidential Information. All
Confidential Information shall remain the sole property of the Disclosing Party,
and the Receiving Party shall have no rights or interests (except as hereinafter
provided) to or in such information.
(c) Return of Confidential Information. Immediately
upon any termination of this Agreement, each Party shall discontinue the use of
Confidential Information of the other Party, and the Receiving Party shall, upon
the written request of the Disclosing Party, return to such Party, within thirty
(30) days of such request, all items of Confidential Information of such Party,
including, without limitation, all copies and originals of such items of
Confidential Information, that are identified specifically in such written
request; provided, however, that, if and to the extent that any license or
sublicense granted pursuant to Section 6.02, 6.03 or 6.04 hereof shall remain in
effect notwithstanding such termination, a Receiving Party shall be permitted to
retain only such Confidential Information as is reasonably necessary for the
continued exercise of its license or sublicense rights hereunder and to use such
Confidential Information within the scope of such license or sublicense.
(d) Exceptions. Notwithstanding any other provisions
of this Agreement, nothing obtained by a Receiving Party shall be deemed
Confidential Information of the Disclosing Party if such information: (i) is not
marked or otherwise designated in writing as confidential and is provided for a
purpose that reasonably contemplates disclosure to or use by any other Person,
(ii) becomes a matter of public knowledge through no action or inaction of the
Receiving Party, (iii) is disclosed by the Disclosing Party to a third party
without a duty of confidentiality, (iv) is rightfully received by the Receiving
Party from a third party without a duty of confidentiality, or (v) was known to
the Receiving Party before it first was received from the Disclosing Party, as
shown by files and records of the Receiving Party
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existing at the time of initial disclosure. Information shall not be deemed to
be a matter of public knowledge, for the purpose of the exclusion (ii) above
with respect to each Party, merely because it (x) is embraced by more general
information in the prior possession of a Party or any other Person or (y) is
expressed in public literature in general terms not specifically in accordance
with the Confidential Information.
(e) Disclosure.
(i) A Receiving Party shall immediately
notify a Disclosing Party of receipt of any process, subpoena or demand by any
Governmental Authority or any other Person, requiring production of Confidential
Information of the Disclosing Party, and shall, within one (1) day after such
receipt, furnish to the Disclosing Party a copy of such process, subpoena or
demand and of all materials and facts relating thereto. The Disclosing Party
shall have the right to take any legal action to prevent disclosure of its
Confidential Information, including, without limitation, the right to appear on
behalf of the Receiving Party, to represent the Receiving Party, and to employ
counsel of its choice for these purposes, all at its expense.
(ii) The Disclosing Party shall have the
right to make any legal arguments and to take any legal action, including,
without limitation, trials and appeals on behalf of itself and the Receiving
Party, to prevent disclosure of its Confidential Information. If a Disclosing
Party elects to exercise its rights under this Section 9.12(e), it shall do so
at its expense and shall protect, hold harmless, defend, and indemnify the
Receiving Party from and against any and all legal responsibility or liability
from the exercise of these rights. If a Disclosing Party elects not to exercise
any such rights or if, in the absence of a protective order or other remedy or
the receipt of a waiver by the Disclosing Party, the Receiving Party is
nonetheless legally compelled to disclose Confidential Information of the
Disclosing Party, then the Receiving Party may, without liability hereunder,
disclose only that portion of such Confidential Information that it is legally
compelled to disclose.
(f) Confidentiality of Agreement. The provisions of
this Section 9.12 also shall apply to the contents of this Agreement; provided,
however, that the contents hereof may be disclosed: (i) as required by
Applicable Law; (ii) to accountants, banks, financing sources, lawyers,
consultants, prospective clients, sublicensees, and any Person with whom a Party
has a written contractual collaboration, so long as such recipients keep such
contents confidential; (iii) in connection with the enforcement of this
Agreement; (iv) in connection with a financing, merger, acquisition, public
offering, or proposed financing, merger, acquisition or public offering; or (v)
pursuant to joint press releases prepared in accordance with Section 9.13
hereof.
(g) Notification of Breach. Each Party shall notify
the other Party in the event of any breach of this Section 9.12, including,
without limitation, conditions or circumstances that indicate Confidential
Information has been or may have been prejudiced or otherwise exposed to loss or
unauthorized disclosure or use. A Receiving Party shall, upon request of the
Disclosing Party, take all steps reasonably necessary to recover any and all
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Confidential Information that has been or may have been compromised, prejudiced,
improperly disclosed or otherwise exposed to loss or unauthorized use. The
expense of taking such steps shall be borne solely by the Receiving Party.
(h) Equitable Relief. Each Party acknowledges and
agrees that (i) any breach of the obligations under this Agreement, including,
without limitation, the confidentiality provisions under this Section 9.12, is
likely to cause or threaten irreparable harm to the other Party and (ii) in such
event, each Party shall be entitled to equitable relief to protect its
interests, including, without limitation, preliminary and permanent injunctive
relief, as well as money damages.
9.13. Publicity. The Parties shall jointly review, discuss
and agree upon any statement to the public regarding the subject matter of this
Agreement after full consideration of (a) the accuracy of the disclosure, (b)
the requirements for confidentiality under Section 9.12 hereof, (c) the
advantage a competitor of either Party might gain from any public or third-party
statements, (d) disclosure requirements under any Applicable Law (including,
without limitation, securities laws and regulations relating to public
offerings), and (e) the standards and customs in the pharmaceutical industry for
such disclosures by companies comparable to both of the Parties. Notwithstanding
the foregoing, neither of the Parties nor any of their respective officers,
directors, employees, agents or advisors shall publicize, advertise, announce or
describe to any Governmental Authority or any other Person the terms of this
Agreement, either of the Parties, or the transactions contemplated hereby,
except as required by Applicable Law or as required or expressly permitted
pursuant to this Agreement.
9.14. Entire Agreement. This Agreement contains the entire
agreement between the Parties with respect to the subject matter hereof and
supersedes all prior and contemporaneous agreements and understandings, oral and
written, with respect to such
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transactions, including, without limitation, Iomed's Letter of Understanding
(along with its attachments) dated October 3, 1995 and each and every provision
of the Research and Development Agreement (including, without limitation, the
provisions of Article 8 thereof).
IN WITNESS WHEREOF, the Parties have caused this Agreement to be
duly executed as of the date first above written.
IOMED, INC.
By:/s/ ▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇▇
------------------------------------------
▇▇▇ ▇. ▇▇▇▇▇▇▇▇▇▇▇
Title: President and Chief Executive Officer
LABORATOIRES ▇▇▇▇▇▇▇▇ S.C.A.
By:/s/ ▇▇▇▇▇▇▇ Majoie
------------------------------------------
▇▇▇▇▇▇▇ Majoie
Title: Monsieur Le Gerant
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EXHIBIT A - ▇▇▇▇▇▇▇▇ INVENTIONS
****
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EXHIBIT B - ▇▇▇▇▇▇▇▇ TECHNOLOGY
****
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30
****
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EXHIBIT C - IOMED INVENTIONS
****
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EXHIBIT D - IOMED TECHNOLOGY
I. PRIOR TECHNOLOGY
Patents
- U.S. Patent 4,141,359 licensed form the University of Utah ****
- U.S. Patent 4,383,529 cross-licensed from Alza Corporation and Wescor,
Inc. ****
- U.S. Patent 4,416,274 licensed from the University of Utah ****
- U.S. Patent 4,752,285 licensed for the University of Utah ****
- U.S. Patents 4,747,819, 4,744,787, 5,135,477 and pending CIP's
cross-licensed from Alza Corporation ****
- U.S. Patent 4,915,685 ****
- U.S. Patents 5,087,242, 5,236,412, 5,328,455, 5,374,241, WO 9,210,235
and EP ▇▇▇▇▇▇ ****
- ▇.▇. Patent 5,037,380 ****
- U.S. Patent 4,968,297 ****
- U.S. Patent 5,248,295 ****
Also included are all foreign equivalents, PCT equivalents, and all
related CIP to the above patents.
Other Technology and know-how
****
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EXHIBIT D - IOMED TECHNOLOGY (CONTINUED)
II. IMPROVEMENTS ON PRIOR TECHNOLOGY
****
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