EXHIBIT 10.10
January 4, 2005
LICENSE AGREEMENT
This Agreement is between ImaRx Therapeutics, a corporation of the State
of Delaware, having a principal place of business at 1635 E. 18th St., Tucson,
AZ 85718 (hereinafter referred to as "IMARX") and Dr. med. Reinhard Schlief,
(hereinafter "DR. SCHLIEF"), having an address at Neue Strasse 21, 14163 Berlin,
Germany.
WITNESSETH:
WHEREAS, DR. SCHLIEF owns certain intellectual property; and
WHEREAS, IMARX is desirous of obtaining a license under the intellectual
property and wishes to acquire a license in order to utilize or otherwise
commercialize the intellectual property; and
NOW, THEREFORE, in consideration of the premises and the mutual promises
and covenants hereinafter set forth, the parties hereby agree as follows
ARTICLE 1 - DEFINITIONS
1.1 "PATENT RIGHTS" shall mean the U.S. patent 5,380,411, and assigned to
DR. SCHLIEF, entitled "Ultrasound or Shock Wave Work Process and Preparation for
Carrying Out Same" and the invention disclosed and claimed therein, and all
continuations, divisions, and reissues based thereof, and any corresponding
foreign patent applications (including Japan and EU countries), and any patents,
patents of addition, or other equivalent foreign patent rights issuing, granted
or registered thereon.
1.2 "LICENSED PRODUCT(S)" shall mean products or services using a method
covered by a VALID CLAIM, on a country-by-country basis, that if made, used,
sold, imported or offered for sale would constitute, but for the license granted
to IMARX pursuant to this Agreement, an infringement of a VALID CLAIM
(infringement shall include, but is not limited to, direct, contributory, or
inducement to infringe).
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1.3 "NET SALES" shall mean gross sales revenues received by IMARX,
AFFILIATED COMPANY and IMARX's sublicensees from the sale of LICENSED PRODUCT(S)
less trade discounts allowed, refunds, returns and recalls, and sales taxes. In
the event that IMARX, AFFILIATED COMPANY or IMARX's sublicensee sells a LICENSED
PRODUCT(S) in combination with other ingredients or substances or as part of a
kit, the NET SALES for purposes of royalty payments shall be based on calculated
as follows:
(a) If all LICENSED PRODUCTS and Other Items contained in the
combination are available separately, the NET SALES for purposes of
royalty payments will be calculated by multiplying the NET SALES of
the combination by the fraction A/A+B, where A is the separately
available price of all LICENSED PRODUCTS in the combination, and B
is the separately available price for all Other Items in the
combination.
(b) If the combination includes Other Items which are not sold
separately (but all LICENSED PRODUCTS contained in the combination
are available separately), the NET SALES for purposes of royalty
payments will be calculated by multiplying the NET SALES of the
combination by A/C, where A is as defined above and C is the
invoiced price of the combination.
(c) If the LICENSED PRODUCTS contained in the combination are not sold
separately, the NET SALES for such combination shall be NET SALES of
such combination as defined in the first sentence of this Paragraph
1.3. However, the parties agree to negotiate a reduction in the
royalty rate to reflect the fair value that the LICENSED PRODUCT
attributed to the overall product sold, but in no event shall the
royalty rates be reduced by greater than fifty percent (50%).
The term "Other Items" does not include solvents, diluents, carriers,
excipients, buffers or the like used in formulating a product.
1.4 "VALID CLAIM" shall mean a claim of an issued patent in PATENT RIGHTS
which has not lapsed or become abandoned or been declared invalid or
unenforceable by a court of competent jurisdiction or an administrative agency
from which no appeal can be or is taken.
1.5 "LICENSED FIELD" shall mean all fields.
1.6 "AFFILIATED COMPANY" or "AFFILIATED COMPANIES" shall mean any
corporation, company, partnership, joint venture or other entity which controls,
is controlled by or is under common control with IMARX. For purposes of this
Paragraph 1.6, control shall mean the
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direct or indirect ownership of at least fifty percent (50%).
1.7 "EXCLUSIVE LICENSE" shall mean a grant by DR. SCHLIEF to IMARX of its
entire right and interest in the PATENT RIGHTS.
1.8 "EFFECTIVE DATE" of this License Agreement shall mean the date the
last party hereto has executed this Agreement.
ARTICLE 2 - GRANTS
2.1 Subject to the terms and conditions of this Agreement, DR. SCHLIEF
hereby grants to IMARX an EXCLUSIVE LICENSE to make, have made, use, sell and
have sold the LICENSED PRODUCT(S) in the United States and worldwide under the
PATENT RIGHTS in the LICENSED FIELD.
2.2 IMARX may sublicense others under this Agreement and any sublicense
shall be consistent with the terms of this Agreement.
2.3 If for any reason other than being sold to another company IMARX
ceases to exist, then patent rights shall return to DR. SCHLIEF. In
the event that IMARX is sold to another company, the rights and
responsibilities assigned to IMARX in this Agreement will be
transferred to the company.
ARTICLE 3 - PATENT INFRINGEMENT
3.1 Each party will notify the other promptly in writing when any
infringement by another is uncovered or suspected.
3.2 IMARX shall have the right to enforce any patent within PATENT RIGHTS
in the LICENSED FIELD against any infringement or alleged infringement thereof,
and shall keep DR. SCHLIEF informed as to the status thereof. IMARX may, in its
sole judgment and at its own expense, institute suit against any such infringer
or alleged infringer and control, settle, and defend
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such suit in a manner consistent with the terms and provisions hereof and
recover, for its account, any damages, awards or settlements resulting
therefrom.
3.3 If IMARX elects not to enforce any patent within the PATENT RIGHTS,
then it shall so notify DR. SCHLIEF in writing within six (6) months of
receiving notice that an infringement exists, and DR. SCHLIEF may, in his sole
judgment and at its own expense, take steps to enforce any patent and control,
settle, and defend such suit in a manner consistent with the terms and
provisions hereof, and recover, for his own account, any damages, awards or
settlements resulting therefrom.
ARTICLE 4 - PAYMENTS, ROYALTY AND EQUITY
4.1 IMARX will reimburse DR. SCHLIEF for certain past out-of-pocket costs
associated with PATENT RIGHTS including but not limited to maintenance fees and
patent transfer fees up to the amount of $15,000.00 US Dollars. IMARX shall
reimburse DR. SCHLIEF within thirty (30) days of receipt of invoice from DR.
SCHLIEF. Such invoice shall provide copies of documentation from patent
attorney's and patent offices or other acceptable documentation detailing the
out-of-pocket patent costs incurred by DR. SCHLIEF. IMARX shall also reimburse
future incurred expenses as detailed in Paragraph 5.1.
4.2 In partial consideration for the license granted herein, IMARX grants
DR.SCHLEIF warrants to purchase 20,000 shares of IMARX common stock pursuant to
the COMMON STOCK WARRANT attached as Exhibit A.
4.3 IMARX shall pay to DR. SCHLIEF, as a running royalty, for each
LICENSED PRODUCT sold by IMARX or AFFILIATED COMPANIES, two percent (2%) of NET
SALES for the term of this Agreement. Should IMARX be required to pay running
royalties on any patent rights not licensed hereunder ("Other Royalties") in
order to make, use or sell a particular LICENSED PRODUCT, IMARX shall be
entitled to credit half (50%) of such Other Royalties against the running
royalty due, provided that the running royalties shall not be reduced below
fifty percent (50%) of those that would otherwise be due DR. SCHLIEF for that
LICENSED PRODUCT.
Such payments shall be made twice per year as provided in Paragraph 4.5.
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4.4 In the event IMARX grants a sublicense of rights to a third party
under this Agreement, IMARX shall pay DR. SCHLIEF three percent (3%) of any
milestone payments or running royalties received by IMARX, for sublicensing
PATENT RIGHTS. Research support to fund development of a LICENSED PRODUCT,
patent cost or other out-of-pocket reimbursements or equity investments made at
fair market value are excluded, however DR. SCHLIEF shall receive three percent
(3%) of the excess above fair market value of any equity investments. If any
Other Rights (Other Rights are rights other than PATENT RIGHTS that are owned or
controlled by IMARX) are conveyed under a sublicense, the percentage owed to DR.
SCHLIEF shall be based upon the value of the contribution of PATENT RIGHTS to
the overall value of all rights being sublicensed to the third party. The
determination of value of right shall be made by an independent agent of
national stature who is mutually agreeable to both parties and the costs of such
valuation shall be borne equally between IMARX and DR. SCHLIEF.
4.5 IMARX shall provide to DR. SCHLIEF within sixty (60) days of the end
of each June after the a first commercial sale of a LICENSED PRODUCT, a written
report of the amount of LICENSED PRODUCTS sold, the total NET SALES of each
LICENSED PRODUCTS, and the running royalties due to DR. SCHLIEF as a result of
NET SALES by IMARX, AFFILIATED COMPANIES and sublicensees thereof. Payment of
any such royalties due shall accompany such report.
4.6 IMARX shall make and retain, for a period of three (3) years following
the period of each report required by Paragraph 4.5, true and accurate records,
files and books of account containing all the data reasonably required for the
full computation and verification of sales and other information required in
Paragraph 4.5. Such books and records shall be in accordance with generally
accepted accounting principles consistently applied. IMARX shall permit the
inspection and copying of such records, files and books of account by an
independent accountant of nationally recognized stature selected by DR. SCHLIEF
and acceptable to IMARX. Such inspection shall be during regular business hours
and upon ten (10) business days' written notice to IMARX. Such inspection shall
not be made more than once each calendar year. All costs of such inspection and
copying shall be paid by DR. SCHLIEF, provided that if any such inspection shall
reveal that an error has been made in the amount equal to ten percent (10%) or
more of such payment, such costs shall be borne by IMARX. IMARX shall include in
any agreement with its AFFILIATED COMPANIES or its sublicensees which permits
such party to make, use or sell the LICENSED PRODUCT(S) a
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provision requiring such party to retain records of sales of LICENSED PRODUCT(S)
and other information as required in Paragraph 4.5 and permit DR. SCHLIEF's
agents to inspect such records as required by this Paragraph 4.6.
4.7 All payments under this Agreement shall be made in U.S. Dollars.
ARTICLE 5 - PATENT RIGHTS AND CONFIDENTIAL INFORMATION
5.1 DR. SCHLIEF shall notify IMARX of any patent related costs due at
least thirty (30) days prior to any payment being due. IMARX shall promptly
notify DR. SCHIEF in writing of its desire to maintain such patent (Authorized
Expense) and shall reimburse DR. SCHLIEF upon receipt of an invoice for such
approved expense. Title to all such patents shall reside in DR. SCHLIEF. In any
country where IMARX elects not to pay expenses associated with maintaining a
patent, DR.SCHLIEF may maintain such patent at his own expense and for his own
exclusive benefit and IMARX thereafter shall not be licensed under, or owe
monies for, such patent right.
5.2 IMARX agrees that all packaging containing individual LICENSED
PRODUCT(S) sold by IMARX, AFFILIATED COMPANIES and sublicensees of IMARX will be
marked with the number of the applicable patent(s) licensed hereunder in
accordance with each country's patent laws.
5.3 If necessary, the parties will exchange information which they
consider to be confidential. The recipient of such information agrees to accept
the disclosure of said information which is marked as confidential at the time
it is sent to the recipient, and to employ all reasonable efforts to maintain
the information secret and confidential, such efforts to be no less than the
degree of care employed by the recipient to preserve and safeguard its own
confidential information. The information shall not be disclosed or revealed to
anyone except employees of the recipient who have a need to know the information
and who have entered into a secrecy agreement with the recipient under which
such employees are required to maintain confidential the proprietary information
of the recipient and such employees shall be advised by the recipient of the
confidential nature of the information and that the information shall be treated
accordingly. The recipient's obligations under this Paragraph 5.3 shall not
extend to any part of the information:
a. that can be demonstrated to have been in the public domain or publicly
known and
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readily available to the trade or the public prior to the date of the
disclosure; or
b. that can be demonstrated, from written records to have been in the
recipient's possession or readily available to the recipient from another
source not under obligation of secrecy to the disclosing party prior to
the disclosure; or
c. that becomes part of the public domain or publicly known by publication
or otherwise, not due to any unauthorized act by the recipient; or
d. that is demonstrated from written records to have been developed by or
for the receiving party without reference to confidential information
disclosed by the disclosing party.
e. that is required to be disclosed by law, government regulation or court
order.
The obligations of this Paragraph 5.3 shall also apply to AFFILIATED COMPANIES
and/or sublicensees provided such information by IMARX. DR. SCHLIEF, the
IMARX's, AFFILIATED COMPANIES, and sublicensees' obligations under this
Paragraph 5.3 shall extend until five (5) years after the termination of this
Agreement.
ARTICLE 6 - TERM AND TERMINATION
6.1 This Agreement shall expire in each country on the date of expiration
of the last to expire patent included within PATENT RIGHTS in that country.
6.2 Upon breach or default of any of the terms and conditions of this
Agreement, the defaulting party shall be given written notice of such default in
writing and a period of sixty (60) days after receipt of such notice to correct
the default or breach. If the default or breach is not corrected within said
sixty (60) day period, the party not in default shall have the right to
terminate this Agreement.
6.3 IMARX may terminate this Agreement and the license granted herein, for
any reason, upon giving DR. SCHLIEF sixty (60) days written notice.
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6.4 Termination shall not affect DR. SCHLIEF's right to recover unpaid
royalties or fees or reimbursement for Authorized Expense incurred pursuant to
Paragraph 5.1 prior to termination. Upon termination all rights in and to the
licensed technology shall revert to DR. SCHLIEF at no cost to ImaRx.
ARTICLE 7 - MISCELLANEOUS
7.1 All notices pertaining to this Agreement shall be (a) delivered in person,
or (b) mailed certified mail return receipt requested, or (c) faxed to other
party if the sender has evidence of successful transmission and if the sender
promptly sends the original by ordinary mail, in any event to the following
addresses:
FOR IMARX: Jean Carlyle
CFO
ImaRx Therapeutics Inc.
1635 E. 18th Street
Tucson, Arizona 85719
FOR DR. SCHLIEF: Dr. med. Reinhard Schlief
Neue Strasse 21
14163 Berlin
Germany
7.2 All written royalty and other payments, and any other related
correspondence shall be in writing and sent to:
FOR DR. SCHLIEF: Dr. med. Reinhard Schlief
Neue Strasse 21
14163 Berlin
Germany
or such other addressee which DR. SCHLIEF may designate in writing from time to
time. Checks are to be made payable to "Dr. med. Reinhard Schlief". Wire
transfers may be made through:
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7.3 This Agreement is binding upon and shall inure to the benefit of DR.
SCHLIEF, his successors and assignees and shall not be assignable to another
party without the written consent of DR. SCHLIEF, which consent shall not be
unreasonably withheld, except that IMARX shall have the right to assign this
Agreement to another party without the consent of DR. SCHLIEF in the case of the
sale or transfer by IMARX of all, or substantially all, of its assets relating
to the LICENSED PRODUCT to that party.
7.4 In the event that any one or more of the provisions of this Agreement
should for any reason be held by any court or authority having jurisdiction over
this Agreement, or over any of the parties hereto to be invalid, illegal or
unenforceable, such provision or provisions shall be reformed to approximate as
nearly as possible the intent of the parties, and if unreformable, shall be
divisible and deleted in such jurisdictions; elsewhere, this Agreement shall not
be affected.
7.5 The construction, performance, and execution of this Agreement shall
be governed by the laws of the State of Arizona. Any disputes between the
parties to the Agreement shall be brought in the state or federal courts of
Arizona.
7.6 DR. SCHLIEF warrants that he has good and marketable title to the
inventions claimed under PATENT RIGHTS. DR. SCHLIEF does not warrant the
validity of any patents or that practice under such patents shall be free of
infringement. EXCEPT AS EXPRESSLY SET FORTH IN THIS PARAGRAPH 7.6, IMARX,
AFFILIATED COMPANIES AND SUBLICENSEES AGREE THAT THE PATENT RIGHTS ARE PROVIDED
"AS IS", AND THAT DR. SCHLIEF MAKES NO REPRESENTATION OR WARRANTY WITH RESPECT
TO THE PERFORMANCE OF LICENSED PRODUCT(S) INCLUDING THEIR SAFETY, EFFECTIVENESS,
OR COMMERCIAL VIABILITY. DR. SCHLIEF DISCLAIMS ALL WARRANTIES WITH REGARD TO
PRODUCT(S) UNDER THIS AGREEMENT, INCLUDING, BUT NOT LIMITED TO, ALL WARRANTIES,
EXPRESS OR IMPLIED, OF MERCHANTABILITY AND FITNESS FOR ANY PARTICULAR PURPOSE.
NOTWITHSTANDING ANY OTHER PROVISION OF THIS AGREEMENT, DR. SCHLIEF ADDITIONALLY
DISCLAIMS ALL OBLIGATIONS AND LIABILITIES ON THE PART OF DR. SCHLIEF, FOR
DAMAGES, INCLUDING, BUT NOT LIMITED TO, DIRECT, INDIRECT, SPECIAL, AND
CONSEQUENTIAL DAMAGES, ATTORNEYS' AND EXPERTS' FEES, AND COURT COSTS (EVEN IF
DR. SCHLIEF HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES, FEES OR COSTS),
ARISING OUT OF OR IN CONNECTION WITH THE MANUFACTURE, USE, OR
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SALE OF THE PRODUCT(S) UNDER THIS AGREEMENT. IMARX, AFFILIATED COMPANIES AND
SUBLICENSEES ASSUME ALL RESPONSIBILITY AND LIABILITY FOR LOSS OR DAMAGE CAUSED
BY A LICENSED PRODUCT AS DEFINED IN THIS AGREEMENT MANUFACTURED, USED, OR SOLD
BY IMARX, ITS SUBLICENSEES AND AFFILIATED COMPANIES.
7.7 DR. SCHLIEF will not, under the provisions of this Agreement or
otherwise, have control over the manner in which IMARX or its AFFILIATED
COMPANIES or its sublicensees or those operating for its account or third
parties who purchase LICENSED PRODUCT(S) from any of the foregoing entities,
practice the inventions of LICENSED PRODUCT(S). Practice of the inventions
covered by LICENSED PRODUCT(S), by an AFFILIATED COMPANY or an agent or a
sublicensee or a third party on behalf of or for the account of IMARX or by a
third party who purchases LICENSED PRODUCT(S) from the IMARX, shall be
considered the Company's practice of said inventions for purposes of this
Paragraph 7.7.
7.8 Prior to initial human testing or first commercial sale of any
LICENSED PRODUCT in any particular country, IMARX shall establish and maintain,
in each country in which IMARX, an AFFILIATED COMPANY or sublicensee shall test
or sell LICENSED PRODUCT(S), product liability or other appropriate insurance
coverage appropriate to the risks involved in marketing LICENSED PRODUCT(S) and
will upon request present evidence to DR. SCHLIEF that such coverage is being
maintained.
7.9 This Agreement constitutes the entire understanding between the
parties with respect to the obligations of the parties with respect to the
subject matter hereof, and supersedes and replaces all prior agreements,
understandings, writings, and discussions between the parties relating to said
subject matter.
7.10 This Agreement may be amended and any of its terms or conditions may
be waived only by a written instrument executed by the authorized officials of
the parties or, in the case of a waiver, by the party waiving compliance. The
failure of either party at any time or times to require performance of any
provision hereof shall in no manner affect its right at a later time to enforce
the same. No waiver by either party of any condition or term in any one or more
instances shall be construed as a further or continuing waiver of such condition
or term or of any other condition or term.
7.13 This Agreement shall be binding upon and inure to the benefit of and
be enforceable
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by the parties hereto and their respective successors and permitted assigns.
7.14 Upon termination of this Agreement for any reason, Paragraphs 5.3,
6.4, 7.6, and 7.7 shall survive termination of this Agreement.
IN WITNESS WHEREOF the respective parties hereto have executed this
Agreement by their duly authorized officers on the date appearing below their
signatures.
IMARX THERAPEUTICS, INC. DR. SCHLIEF
By /s/ Evan Unger By /s/ Reinhard Schlief
--------------------------------- -------------------------
Evan Unger, M.D., President & CEO Dr. med. Reinhard Schlief
Date: 1-4-05 Date 1-6-05