CONFIDENTIAL TREATMENT REQUESTED


 


Exhibit 10.13


 


WAIVER AND TERMINATION AGREEMENT DATED 8 NOVEMBER, 2002 (THE
“EFFECTIVE DATE”)


 


RECITALS:


 


Whereas, Elan
Corporation, plc, an Irish public limited company (“Elan”), DepoMed, Inc., a California
corporation (the “Company”),
Elan Pharma International Limited, a private limited company incorporated under
the laws of Ireland (“EPIL”), and DepoMed Development Ltd., a
Bermuda exempted limited liability company (“Newco”), entered into a License Agreement,
dated January 21, 2000 (the “Elan License Agreement”), which set forth the terms and
conditions of a license from Elan to Newco of certain intellectual property of
Elan.


 


                Whereas, the Company has entered that certain
Development and License Agreement, dated as of May 28, 2002 (the “BLI License Agreement”),
by and between the Company and Biovail Laboratories Incorporated (“BLI”) and that
certain Stock Purchase Agreement, dated as of May 28, 2002, by and between the
Company and BLI (together with the BLI License Agreement, the “BLI Agreements”).


 


                Whereas, EPIL terminated the [***] (as
defined in the Elan License Agreement) by notice in writing to [***] dated 26
August 2002 (the “[***]”), and notified Newco and Depomed of
this action.


 


                Whereas, Elan, EPIL, Newco and Depomed
desire to terminate the license to Newco of the rights under the [***] (as
defined in the Elan License Agreement) and certain additional rights granted to
Newco under the Elan License Agreement.


                Whereas, Elan desires to waive certain
of its accrued rights under the Elan License Agreement up to the Effective Date
that may arise as a result of the transactions contemplated by the BLI
Agreements up to the Effective Date and DepoMed desires to waive certain of its
accrued rights under the Elan License Agreement up to the Effective Date that
may arise as a result of the termination of the [***].


 


WAIVER AND
TERMINATION:


 


                1.             Waiver by Elan.


 


Elan hereby irrevocably waives any
accrued rights Elan may have under Section 8.4 of the Elan License Agreement up to the Effective Date to terminate the Elan
License Agreement as a result of any or all of the transactions by Depomed from the beginning of time up to the Effective Date under by the BLI
Agreements, and Elan fully
and finally


 


 


 


THE SYMBOL [***] IS USED TO INDICATE THAT A
PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPERATELY WITH THE
COMMISSION.  CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.


 


 

















releases and discharges Depomed from any and all manner of actions or
claims that Elan may have by reason thereof against Depomed from the beginning
of time to the Effective Date under the Elan License Agreement.


 


2.                                       Termination of the EPIL Sub-License and
Waivers.


 


2.1                                 With reference to Clause 1 hereof, Elan,
EPIL, Newco and Depomed hereby agree to terminate the EPIL Sub-License (as
defined in the Elan License Agreement) and the EPIL License (as defined in the
Elan License Agreement) insofar as the EPIL License licensed the EGTS Patents
and the EGTS Know-How to Newco with effect from the [***].


 


2.2                                 With effect from the [***], the
definition of “Elan Intellectual Property” in the Elan License Agreement shall
be amended by the deletion of paragraph (iii) and all references to “Elan
Intellectual Property” in the Elan License Agreement and the JDOA (including
without limitation in Clauses 4.1 and 4.2 of the Elan License Agreement) shall
thereafter be construed accordingly.


 


2.3                                 DepoMed and Newco
hereby irrevocably waive any accrued rights DepoMed or Newco may have under the
Elan License Agreement (and/or the Subscription, Joint Development And Operating
Agreement dated January 21, 2000 (“JDOA”)) from the beginning
of time up to
the Effective Date arising out of the termination by Elan, EPIL or any of its
affiliates of the [***] and Depomed and Newco fully and finally release and discharge Elan, EPIL and
any
of its affiliates from any and all manner of actions or
claims that Depomed or Newco may have by reason thereof against Elan, EPIL and any of its affiliates from the beginning of time to the
Effective Date under the Elan License Agreement and/or the
JDOA.


.


 


3                                          Waivers and Releases.


 


The parties hereto acknowledge and agree that the
waivers and releases contained herein are specific in nature, do not constitute
any general waiver or amendment of the provisions of Elan License
Agreement, the JDOA or otherwise, and no such waiver or release shall be deemed to be a
waiver or release of any future breach or failure to perform of any other right
under arising under this Elan License Agreement, the JDOA or otherwise.


 


4                                          Intellectual Property.


 


4.1                                 As provided in Clause
3.1.2 of the Elan License Agreement, Elan shall own all the Elan Improvements
(as defined in the Elan License Agreement) relating to the GR Know-How, and the
EGTS Patents and the
EGTS Know-How (each as defined in the Elan License Agreement).


 


 


 


THE SYMBOL [***] IS USED TO INDICATE THAT A
PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPERATELY WITH THE
COMMISSION.  CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.


 


2

















CONFIDENTIAL TREATMENT REQUESTED


 


 


The Elan Improvements described in this Clause 4.1
include, but are not limited to, the data, know-how, materials and other
information listed in Schedule 1 hereto.


 


 


 


 


 


 


THE SYMBOL [***] IS USED TO INDICATE THAT A
PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPERATELY WITH THE
COMMISSION.  CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.


 


3

















CONFIDENTIAL TREATMENT REQUESTED


 


 


	
   

  	
  ELAN CORPORATION, PLC

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
  By:

  	
   

  	
  /s/  LIAM DANIEL

  	
   

  
	
   

  	
   

  	
  Name:  Liam Daniel

  	
   

  	
   

  
	
   

  	
   

  	
  Title:  Company Secretary

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
  ELAN PHARMA INTERNATIONAL
  LIMITED

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
  By:

  	
   

  	
  /s/  LIAM DANIEL

  	
   

  
	
   

  	
   

  	
  Name:  Liam Daniel

  	
   

  	
   

  
	
   

  	
   

  	
  Title:  Company Secretary

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
  DEPOMED DEVELOPMENT LTD.

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
  By:

  	
   

  	
  /s/  STEPHEN J. ROSSITER

  	
   

  
	
   

  	
   

  	
  Name:  Stephen J. Rossiter

  	
   

  	
   

  
	
   

  	
   

  	
  Title:  Director

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
  DEPOMED, INC.

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
	
   

  	
  By:

  	
   

  	
  /s/  JOHN N. SHELL

  	
   

  
	
   

  	
   

  	
  Name:  John N. Shell

  	
   

  	
   

  
	
   

  	
   

  	
  Title:  Vice President, Operations

  	
   

  	
   

  
	
   

  	
   

  	
   

  	
   

  	
   

  
								



 


 


 


 


 


 


 


THE SYMBOL [***] IS USED TO INDICATE THAT A
PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPERATELY WITH THE
COMMISSION.  CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.


 


4

















CONFIDENTIAL TREATMENT REQUESTED


 


SCHEDULE 1


 


ELAN IMPROVEMENTS


 


	
  •

  	
   

  	
  Gastro-retentive
  formulation of [***] including any data, studies, clinical results, methods
  of manufacturing and methods of use related thereto.

  
	
  •

  	
   

  	
  Gastro-retentive
  formulation of [***] including any data, studies, clinical results, methods
  of manufacturing and methods of use related thereto.

  
	
  •

  	
   

  	
  All information related to
  placebo studies related to the EGTS Technology and/or GR Technology (as each
  is defined in the Elan License Agreement).

  
	
  •

  	
   

  	
  All information generated
  within the JV on [***] including scale-up information and stability data.

  
	
  •

  	
   

  	
  All developments made
  related to the manufacturing apparatus for products made using the EGTS
  Technology and/or GR Technology.

  
	
  •

  	
   

  	
  All commercial information
  and contacts generated within the JV related to the EGTS Technology and/or GR
  Technology or the above-noted formulations.

  



 


 


 


 


 


 


THE SYMBOL [***] IS USED TO INDICATE THAT A
PORTION OF THE EXHIBIT HAS BEEN OMITTED AND FILED SEPERATELY WITH THE
COMMISSION.  CONFIDENTIAL TREATMENT HAS
BEEN REQUESTED WITH RESPECT TO THE OMITTED PORTION.


 


5