License and Option Agreement (2010)Full Document 

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CONFIDENTIAL TREATMENT REQUESTED
(EMORY LOGO)
LICENSE AND OPTION AGREEMENT
between
EMORY UNIVERSITY
and
ALIMERA SCIENCES, INC.
for
TRIPHENYLMETHANE COMPOUNDS

 


 

CONFIDENTIAL TREATMENT REQUESTED
TABLE OF CONTENTS
         
ARTICLE 1. DEFINITIONS
    2  
ARTICLE 2. GRANT OF LICENSE
    10  
ARTICLE 3. CONSIDERATION FOR LICENSE
    14  
ARTICLE 4. REPORTS AND ACCOUNTING
    19  
ARTICLE 6. DILIGENCE AND COMMERCIALIZATION
    22  
ARTICLE 7. PATENT PROSECUTION
    23  
ARTICLE 8. INFRINGEMENT
    26  
ARTICLE 9. LIMITED WARRANTY AND EXCLUSION OF WARRANTIES
    28  
ARTICLE 10. DAMAGES, INDEMNIFICATION AND INSURANCE
    31  
ARTICLE 11. CONFIDENTIALITY
    33  
ARTICLE 12. TERM AND TERMINATION
    35  
ARTICLE 13. ASSIGNMENT
    38  
ARTICLE 14. ARBITRATION
    39  
ARTICLE 15. MISCELLANEOUS
    39  
ARTICLE 16. NOTICES
    42  
APPENDIX A COMPANY’S DEVELOPMENT PLAN
    44  
APPENDIX B LICENSED PATENTS
    45  
APPENDIX C U.S. GOVERNMENT LICENSE(S)
    46  
APPENDIX D AMENDMENT TERMS
    47  
APPENDIX E ISSUE OF EQUITY
    50  
APPENDIX F RUNNING ROYALTY PERCENTAGES
    51  
APPENDIX G MINIMUM ROYALTIES
    52  
APPENDIX H NON-ROYALTY PAYMENTS FROM SUBLICENSEES
    53  
APPENDIX I MILESTONE PAYMENTS
    54  
APPENDIX J LICENSE MAINTENANCE FEES
    55  
APPENDIX K DEVELOPMENT MILESTONES AND DATES
    56  

 


 

CONFIDENTIAL TREATMENT REQUESTED
     THIS LICENSE AND OPTION AGREEMENT is made and entered into as of the 31st day of August, 2009, (hereinafter referred to as the “Effective Date”) by and between EMORY UNIVERSITY, a nonprofit Georgia corporation with offices located at 1599 Clifton Road NE, 4th Floor, Atlanta, Georgia 30322 (hereinafter referred to as “EMORY”) and Alimera Sciences, Inc., a Delaware corporation having a principal place of business located at 6120 Windward Parkway, Suite 290, Alpharetta, Georgia 30024 (hereinafter referred to as “ALIMERA”).
     WHEREAS, EMORY is the assignee of all right, title, and interest in inventions, including related technology, developed by employees of EMORY and is responsible for the protection and commercial development of such inventions; and
     WHEREAS, EMORY has developed certain inventions and technology related to derivatives of triphenylmethane dyes and their methods of use (Emory Ref. No. 08001) (the “Technology”); and
     WHEREAS, EMORY and ALIMERA entered into that certain Option Agreement related to Emory Ref. No. 08001 having an effective date February 1, 2008(the “Option Agreement”), pursuant to which ALIMERA notified EMORY prior to the expiration of the option period of its intent to exercise its option to enter into this License and Option Agreement;
     WHERERAS, the United States Department of Veterans Affairs (the “VA”) has asserted ownership rights to the Technology and is a co-owner of the Technology with EMORY;
     WHERERAS, EMORY and the VA have entered into an Inter-Institutional Agreement dated January 5, 2009 and amended by the First Amendment dated February 20, 2009, (collectively the “IIA”) whereby VA has granted EMORY the exclusive (even as to the VA) and final authority to enter into negotiations for and execute license agreements granting rights to the Technology and to prepare, file, prosecute and maintain all patent rights covering the Technology on behalf of the VA;
     WHEREAS, the EMORY Inventor (as defined below), in collaboration with other academic investigators, has conducted and plans to continue conducting research on the compound [*];
     WHEREAS, EMORY desires to [*];
     WHEREAS, ALIMERA represents that it has the necessary expertise and will, as appropriate, acquire the necessary resources to fully evaluate, develop and commercialize the Technology [*]; and
     WHEREAS, EMORY wants to have such Technology developed, commercialized, and made available in commerce for use by the public; and
     WHEREAS, ALIMERA wishes to obtain certain rights to pursue the evaluation, development and commercialization of the Technology [*]; and
 
*   Certain Information has been omitted and filed separately with the Commission Confidential treatment has been requested with respect to the omitted portions.

 


 

CONFIDENTIAL TREATMENT REQUESTED
     WHEREAS, EMORY wishes to grant ALIMERA such rights in accordance with the terms and conditions of this Agreement.
     NOW, THEREFORE, for and in consideration of the mutual covenants and the promises herein contained, the parties, intending to be legally bound, hereby agree as follows.
ARTICLE 1. DEFINITIONS
     The following terms as used herein shall have the following meaning:
     1.1 “Additional Invention” shall have the meaning set forth in Article 2.9.
     1.2 “Affiliate” shall mean any corporation or non-corporate business entity which controls, is controlled by, or is under common control with a party to this Agreement only for so long as such control continues to exist. A corporation or non-corporate business entity shall be regarded as in control of another corporation if it owns, or directly or indirectly controls, at least fifty (50%) percent of the voting stock of the other corporation, or (i) in the absence of the ownership of at least fifty (50%) percent of the voting stock of a corporation or (ii) in the case of a non-corporate business entity, or non-profit corporation, if it possesses, directly or indirectly, the power to direct or cause the direction of the management and policies of such corporation or non-corporate business entity, as applicable.
     1.3 “Agreement” or “License Agreement” shall mean this License and Option Agreement, including all APPENDICES attached to this Agreement.
     1.4 “ALIMERA” shall have the meaning set forth in the preamble.
     1.5 “ALIMERA’s Development Plan” shall mean APPENDIX A of this Agreement.
     1.6 “Amendment Terms” shall have the meaning set forth in Article 2.4.
     1.7 “Auditor” shall have the meaning set forth in Article 4.4.
     1.8 “Board” shall have the meaning set forth in Article 3.1.
     1.9 “Calendar Year” shall mean January 1 though December 31.
     1.10 “Claims” shall have the meaning set forth in Article 10.2.
     1.11 “Combination Product” shall have the meaning set forth in Article 1.42(b).
     1.12 “Commercially Reasonable Efforts” shall have the meaning set forth in Article 6.1.
     1.13 “Development Information” shall have the meaning set forth in Article 12.7.
     1.14 “Development Milestone Deadline” shall have the meaning set forth in Article 6.2.
     1.15 “Distributor” shall mean any third party (i) to which a Seller has granted (at any time during the term) a right to sell or distribute a Licensed Product, (ii) that sells Licensed Products to hospitals and/or pharmacies for their sale to or use with patients (rather than to other third parties for resale to hospitals and/or pharmacies for their sale to or use with patients), and (iii) that does not make

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CONFIDENTIAL TREATMENT REQUESTED
payments to ALIMERA or its Affiliates that are calculated on the basis of a percentage of, or profit share on, such third party’s sales of Licensed Products.
     1.16 “Dollars” shall mean United States dollars.
     1.17 “Effective Date” shall have the meaning set forth in the preamble.
     1.18 “EMORY” shall have the meaning set forth in the preamble.
     1.19 “FDA” shall mean the United States Food and Drug Administration.
     1.20 “Final Regulatory Approval” shall mean in relation to any Licensed Product, the approval by the regulatory authority in a given country as may be required before such Licensed Product may

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