Technology License Agreement

TECHNOLOGY LICENSE AGREEMENT


This Technology License Agreement (this "Agreement") is made as of the 6th day of March, 1998 among Allergan, Inc., a Delaware corporation ("Allergan"), each Allergan Affiliate listed on the signature page hereto (an "Allergan Affiliate") and Allergan Specialty Therapeutics, Inc., a Delaware corporation ("ASTI").


BACKGROUND


A. ASTI has been formed for the purpose of researching and developing human pharmaceutical products, including products using Allergan Technology (as defined herein), and commercializing such products, most likely through licensing to Allergan.


B. Allergan and ASTI have entered into the Research and Development Agreement (as defined herein) for the research and development of such products and related activities.


C. Allergan is willing to grant to ASTI a license to use Allergan Technology solely for the purposes set forth above on the terms set forth herein and in the Research and Development Agreement and the License Option Agreement (as defined herein).


Now, therefore, the parties agree as follows:


1. DEFINITIONS.


For the purposes of this Agreement, the following terms shall have the meanings set forth below:


1.1 "Affiliate" shall mean a corporation or any other entity that directly, or indirectly through one or more intermediaries, controls, is controlled by, or is under common control with, the designated party. "Control" shall mean ownership of at least 50% of the shares of stock entitled to vote for the election of directors in the case of a corporation, and at least 50% of the interests in profits in the case of a business entity other than a corporation.


1.2 "Allergan Technology" shall mean all Proprietary Rights, whether patented or unpatented, owned by, licensed to or controlled by Allergan, as of the date of this Agreement or during the term of the Research and Development Agreement, relating to retinoid and neuroprotective technologies, including but not limited to Tazarotene, Memantine and other glutamate and ion channel blockers and Allergan's and each Allergan Affiliate's rights under the agreements listed on Exhibit A hereto. "Allergan Technology" shall also include any additional technology which Allergan designates expressly in a writing delivered to ASTI as Allergan Technology for purposes of this Agreement. Notwithstanding the foregoing, however, in no event shall "Allergan Technology" include, and ASTI shall have no rights with respect to, (i) any topical formulation of Tazarotene or the research, development, manufacture or commercial sale


1. 2 or other use thereof or (ii) the commercial sale of Memantine and/or products incorporating or based on Memantine outside of the United States.


1.3 "ASTI Product" shall mean any dosage form of a compound which is the subject of research and development as a potential human pharmaceutical product which has been recommended by Allergan and accepted by ASTI's Board of Directors for development as such under the Research and Development Agreement. Such recommendations may be made on a Field of Use basis. The following compounds have been selected as the initial ASTI Products as of the date hereof: (i) Tazarotene (oral), (ii) Memantine, (iii) AGN 4310 and (iv) a compound to be selected from the RAR alpha-selective agonist class of retinoid compounds for the treatment of various cancers.


1.4 "Developed Technology" shall mean Proprietary Rights that (a) are first generated, conceived or reduced to practice, as the case may be, by Allergan or by any third party in the course of performing activities undertaken pursuant to the Research and Development Agreement or (b) are, in any manner, acquired by, or otherwise obtained on behalf of, ASTI during the term of the Research and Development Agreement from persons other than Allergan and are necessary or useful to the research, development or commercialization of ASTI Products or Pre-Selection Products.


1.5 "Distribution" shall mean Allergan's distribution of all of the outstanding shares of Class A Common Stock of ASTI to Allergan stockholders of record on March 10, 1998.


1.6 "Field of Use" shall mean a particular disease state or set of related disease states.


1.7 "Infringing Product" shall mean any product sold by a third party which infringes or is alleged to infringe any patent or patents licensed to ASTI hereunder and covering an ASTI Product.


1.8 "License Agreement" shall mean an exclusive license agreement for a particular ASTI Product between Allergan and ASTI, entered into as a result of Allergan's exercise of the License Option for such product.


1.9 "License Option" shall mean the option granted to Allergan pursuant to the License Option Agreement.


1.10 "License Option Agreement" shall mean the License Option Agreement dated as of the date hereof between Allergan and ASTI.


1.11 "Pre-Selection Work" shall mean research and pre-clinical development work involving one or more product candidates owned or controlled by Allergan or a third party funded by ASTI pursuant to the Research and Development Agreement and undertaken in order to determine the suitability of such candidate for research and development.


1.12 "Pre-Selection Product" shall mean a product, other than one which becomes an ASTI Product, for which ASTI funds Pre-Selection Work.


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1.13 "Pre-Existing Rights" shall mean the rights of each party other than Allergan under the agreements listed on Exhibit A.


1.14 "Proprietary Rights" shall mean data, inventions, information, processes, know-how and trade secrets, and patents or patent applications claiming any of the foregoing, owned by, licensed to or controlled by a person and which such person has the right to license or sublicense. Proprietary Rights shall not include trademarks.


1.15 "Purchase Option" shall mean that certain option contained in ASTI's Restated Certificate of Incorporation pursuant to which Allergan has the right to purchase all of the outstanding shares of ASTI Class A Common Stock.


1.16 "Research and Development Agreement" shall mean the Research and Development Agreement dated as of the date hereof between Allergan and ASTI.


1.17 "Therapeutic Agent" shall mean a drug, protein, peptide, gene, compound or other pharmaceutically active ingredient.


2. LICENSE.


2.1 GRANT OF LICENSE. Allergan hereby grants to ASTI, on the terms and conditions of this Agreement, a worldwide (except as set forth below), exclusive license (subject to the Pre-Existing Rights), in perpetuity, with the right to sublicense (as set forth below), to use the Allergan Technology to research and develop ASTI Products, to conduct related activities (including Pre-Selection Work), and to commercialize ASTI Products, but for no other purposes whatsoever; provided, however, that, the foregoing license shall exclude (i) the research, development, manufacture or commercial sale or other use of any topical formulation of Tazarotene and (ii) the commercial sale of Memantine and/or products incorporating or based on Memantine outside of the United States. ASTI shall not sublicense any Allergan Technology to, or enter into other arrangements with respect to any Allergan Technology with, any third party for any purpose, except as set forth in Sections 2.2 and 2.3 hereof.


2.2 PERMITTED SUBLICENSES.


(A) Except as set forth in Section 2.2(b) hereof, ASTI may grant sublicenses to Allergan and third parties to use the Allergan Technology solely for the purpose of performing activities in connection with the research and development of ASTI Products and conducting related activities (including Pre-Selection Work); provided however, that, during the term of the Research and Development Agreement, any such sublicenses shall be granted in accordance with the terms of the Research and Development Agreement.


(B) If the License Option with respect to any ASTI Product in one or more countries expires unexercised, from and after expiration of such License Option in any such country, ASTI may sublicense Allergan Technology to a third party or third parties solely to the extent necessary to complete the development of, or to make (or have made) and use such ASTI Product, or to sell (or have sold) such ASTI Product in such country.


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2.3 CONDITIONS OF SUBLICENSES. Each sublicensee shall execute such agreements as Allergan reasonably deems appropriate to protect the Allergan Technology and to protect Allergan's rights under all agreements between Allergan and ASTI and under the Purchase Option. Each sublicensee shall have all the duties of ASTI hereunder with respect to such sublicense, and each sublicensee shall acknowledge these duties to Allergan in writing. No sublicense shall have the effect of relieving ASTI of any of its obligations hereunder.


2.4 PRIOR AND FUTURE GRANTS. ASTI understands and acknowledges that Allergan is in the business of researching and developing products incorporating the Allergan Technology for its own account and under arrangements with third parties, and as a result, the license granted hereunder is limited strictly to use the Allergan Technology for the purpose of researching and developing ASTI Products and conducting related activities (including Pre-Selection Work) and commercializing ASTI Products. ASTI acknowledges that Allergan may use and may grant third party licenses to use the Allergan Technology for any and all other purposes.


2.5 LICENSE TO ALLERGAN. In addition, in the event that Allergan provides ASTI with a Reversion Notice (as such term is defined in Section 2.4 of the Research and Development Agreement) with resp ...