Exhibit 10.2
TECHNOLOGY LICENSE AGREEMENT
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AGREEMENT made this 30th day of December, 1982 by and between ALZA
CORPORATION, a California corporation ("ALZA"), and ALZA TTS RESEARCH PARTNERS,
LTD., a California limited partnership (the "Partnership").
R E C I T A L S:
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A. ALZA has proprietary rights to the Licensed Technology.
B. The Partnership proposes to undertake research and development of
products utilizing the Licensed Technology and expects to develop and own
certain technology in connection therewith.
C. ALZA is willing to grant to the Partnership a license to practice the
Licensed Technology under certain circumstances as hereinafter set forth in
consideration of the Partnership's execution of the Option Agreement.
NOW, THEREFORE, the parties agree as follows:
1. DEFINITIONS
1.1 "Affiliate" shall have the meaning set forth in the Development
Contract.
1.2 "ALZA Proprietary Rights" shall mean all Proprietary Rights of
ALZA to the extent now or hereafter owned and controlled by ALZA and which ALZA
has or will have the right to license.
1.3 "Completion" of a Product shall mean the actual reduction to
practice of a Product within the meaning of Section 102(g) of Title 35 of the
United States Code. "Completion of all Products" shall mean such actual
reduction to practice of all Products.
1.4 "Confidential Information" shall mean, without limitation, the
originals or copies of all documents, inventions, laboratory notebooks,
drawings, specifications, bills of materials, devices, equipment, prototype
models and tangible manifestations relating to or embodying any Licensed
Technology disclosed hereunder except any of the foregoing which:
(a) is known to or used by the Partnership prior to the time of
disclosure hereunder;
(b) lawfully is disclosed to the Partnership by a third party
having the right to disclose it; or
(c) either before or after the time of disclosure to the
Partnership becomes known to the public other than by an unauthorized act or
omission of the Partnership or its employees or agents.
1.5 "Development Contract" shall mean the Research and Development
Agreement of even date herewith between the Partnership and ALZA.
1.6 "Feasibility Evaluation" shall have the meaning set forth in the
Development Contract.
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1.7 "Licensed Technology" shall mean ALZA Proprietary Rights existing
during the term of this Agreement which are necessary or useful for the
development, manufacture or commercialization of Products.
1.8 "Option Agreement" shall mean the Option Agreement of even date
herewith between the Partnership and ALZA.
1.9 "Partnership Technology" shall have the meaning set forth in the
Development Contract.
1.10 "Product" shall have the meaning set forth in the Development
Contract.
1.11 "Product Development Program" shall have the meaning set forth in
the Development Contract.
1.12 "Proprietary Rights" shall mean data, inventions, information,
processes, know how, patents, patent applications and trade secrets.
1.13 "Prospectus" shall have the meaning set forth in the Development
Contract.
2. LICENSE OF ALZA TECHNOLOGY FOR RESEARCH AND DEVELOPMENT; TERM
2.1 GRANT OF LICENSE. ALZA hereby grants to the Partnership, upon
the terms and conditions of this Agreement, a royalty-free, worldwide license
to practice the Licensed Technology (i) in either a Feasibility Evaluation or
a Product Development Program (ii) to sublicense ALZA under the terms of the
Development Contract for the purposes thereof and (iii) to
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sublicense third parties to complete the development of Products in accordance
with the terms of the Option Agreement, but for no other purpose whatsoever,
except as set forth in Section 3.
2.2 TERM. The term of the license granted under Section 2.1 shall
commence on the date hereof and shall continue, with respect to any Product,
until the Completion of that Product.
3. LICENSE OF ALZA PROPRIETARY TECHNOLOGY FOR COMMERCIAL EXPLOITATION
3.1 GRANT OF LICENSE. ALZA hereby grants to the Partnership, upon
the terms and conditions of this Agreement, a royalty-free, worldwide
license, with the right to sublicense, to practice the Licensed Technology to
manufacture, use and sell Products.
3.2 TERM. The term of the license granted under Section 3.1
hereof shall commence, as to each Product, upon Completion of such Product
and shall continue in full force and effect thereafter as to such Product.
4. EFFORTS OF LICENSEE
The Partnership promptly shall commence to use the Licensed Technology
to develop or have developed Products under the Development Contract.
5. PATENTS
5.1 INFRINGEMENTS. Each party shall notify the other of infringement
or alleged infringement of any patent
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rights included in the Licensed Technology or of any unauthorized or alleged
unauthorized use of the Licensed Technology. In the event of any such alleged,
infringement or unauthorized use, ALZA shall have the right, at its own expense
and with the right to all recoveries, to take appropriate action to restrain
such alleged infringement or unauthorized use. If ALZA fails to take such
action, and if the infringing product or products achieve ten percent of the
sales volume of any Product, the Partnership may institute, in its own name, at
its own expense and with the right to all recoveries, such litigation or other
appropriate action as the Partnership may deem necessary to terminate such
infringement or unauthorized use; provided, however, that the Partnership shall
first give ALZA 60 days advance notice of its intention to take such action and,
provided further, that ALZA has not taken appropriate action during such 60-day
period. In either case, the other party shall cooperate with the party
initiating such action at the initiating party's expense.
5.2 DEFENSE OF SUITS. If any controversy, litigation or
proceeding is threatened or brought by any person against either party hereto
alleging that any use, application, or disclosure of the Licensed Technology
infringes any patent or other proprietary right held by such person, the
parties shall confer promptly with respect to such controversy, litigation or
proceeding. If the parties agree to proceed jointly,
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they shall share equally the defense expenses and costs, including attorneys'
fees, and neither party shall settle or compromise such controversy, litigation
or proceeding without the consent of the other party. If the parties do not
agree to proceed jointly, then each party may proceed on its own and at its sole
expense, and each party shall have the right to settle or compromise on such
controversy, litigation or proceeding on its own behalf and at its own expense.
6. CONFIDENTIALITY
Subject to the other provisions of this Agreement, during the term
of this Agreement and for a period of five years following its termination,
the Partnership shall maintain in confidence all Confidential Information;
provided, however, that nothing contained herein shall prevent the
Partnership from disclosing any Confidential Information to the extent that
such Confidential Information is required to be disclosed (i) in connection
with the securing of necessary governmental authorization for the marketing
of Products, (ii) for the purpose of complying with governmental regulations
or (iii) for the purpose of any sublicense allowed hereunder. The
obligations of the parties pursuant to this Section 6 shall survive the
termination of this Agreement for any reason.
7. DISCLAIMERS
ALZA DISCLAIMS ANY EXPRESS OR IMPLIED WARRANTY (i) THAT THE LICENSED
TECHNOLOGY, OR THE USE THEREOF, OR THE
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PRODUCTS INCORPORATING OR MANUFACTURED BY THE USE THEREOF WILL BE FREE FROM
CLAIMS OF PATENT INFRINGEMENT, INTERFERENCE OR UNLAWFUL USE OF PROPRIETARY
INFORMATION OF ANY THIRD PARTY OR (ii) OF THE ACCURACY, RELIABILITY,
TECHNOLOGICAL OR COMMERCIAL VALUE, COMPREHENSIVENESS OR MERCHANTABILITY OF THE
LICENSED TECHNOLOGY OR ITS SUITABILITY OR FITNESS FOR ANY PURPOSE WHATSOEVER
INCLUDING, WITHOUT LIMITATION, THE DESIGN, DEVELOPMENT, MANUFACTURE, USE OR SALE
OF PRODUCTS. ALZA DISCLAIMS ALL OTHER WARRANTIES OF WHATEVER NATURE, EXPRESS OR
IMPLIED.
8. EFFECTIVE DATE; TERMINATION
8.1 EFFECTIVE DATE. This Agreement automatically shall become
effective on the closing of the sale of the Class A Limited Partnership
interests described in the Prospectus.
8.2 TERMINATION. Either party may terminate this Agreement
effective upon the giving of written notice of such termination to the other
party in the event such other party:
(a) breaches any of its material obligations hereunder and
such breach continues for a period of 60 days after written notice thereof by
the other party; or
(b) enters into any proceeding, whether voluntary or
otherwise, in bankruptcy, reorganization, or arrangement for the appointment
of a receiver or trustee to take possession of such other party's assets or
any other
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proceeding under any law for the relief of creditors, or makes an assignment for
the benefit of such other party's creditors.
9. COUNTERPARTS
This Agreement may be executed in any number of counterparts, each of which
when so executed shall be deemed to be an original and all of which when taken
together shall constitute this Agreement.
10. NOTICES
Any notice or other communication required or permitted to be given by
either party under this Agreement shall be given in writing and shall be
delivered by hand or by registered or certified mail, postage prepaid and return
receipt requested, addressed to each party at the following addresses or such
other address as may be designated by notice pursuant to this Section 10:
If to the Partnership: ALZA TTS RESEARCH PARTNERS, LTD.
c/o ALZA Development Corporation
950 Page Mill Road
Palo Alto, California 94304
Attention: President
If to ALZA: ALZA CORPORATION
950 Page Mill Road
Palo Alto, California 94304
Attention: President
Any notice or communication so given in conformity with this Section 10
shall be deemed to be effective when received by the addressee, if delivered by
hand, and five days after mailing, if mailed.
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11. GOVERNING LAW
This Agreement shall be governed by and construed in accordance with the
laws of the State of California as applied between residents of that state
entering into contracts wholly to be performed in that state.
12. SEVERABILITY
If any provision of this Agreement is held by a court of competent
jurisdiction to be invalid, void, or unenforceable, the remaining provisions
shall continue in full force without being impaired or invalidated in any way.
13. AMENDMENTS
No amendment, modification or addition hereto shall be effective or binding
on either party unless set forth in writing and executed by a duly authorized
representative of the party to be charged.
14. WAIVER
No waiver of any right under this Agreement shall be deemed effective
unless contained in a writing signed by the party charged with such waiver, and
no waiver of any breach or failure to perform shall be deemed to be a waiver of
any future breach or failure to perform or of any other right arising under this
Agreement.
15. HEADINGS
The section headings contained in this Agreement are included for
convenience only and form no part of the agreement between the parties.
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16. NO EFFECT ON OTHER AGREEMENTS
No provision of this Agreement shall be construed so as to negate,
modify or affect in any way the provisions of any other agreement between the
parties unless specifically referred to, and to the extent specifically
provided, in such other agreements.
IN WITNESS WHEREOF, the parties have executed this Agreement on the date
first set forth above.
ALZA TTS RESEARCH PARTNERS, LTD.
By ALZA Development Corporation,
its General Partner
By: /s/ Peter F. Carpenter
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Peter F. Carpenter, President
ALZA CORPORATION
By: /s/ Martin S. Gerstel
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Martin S. Gerstel, President
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