exv10w15



 





Exhibit 10.15




LICENSE AGREEMENT




     This Agreement is entered into as of December 10, 2005 (the “Effective Date”) by and between
(i) SD Pharmaceuticals, Inc., a Delaware corporation (“SDP”), and (ii) Latitude Pharmaceuticals,
Inc., a Delaware corporation (“LPI”), and (iii) Andrew X. Chen (“Dr. Chen”), with respect to the
following facts:


A. Dr. Chen is the sole owner of LPI and is a co-founder and a principal owner in SDP.



B. In connection with the formation of SDP, Dr. Chen assigned to SDP certain inventions and related
patent rights, and LPI granted to SDP (pursuant to that certain Inventions First Negotiation and
Refusal Agreement, dated as of June 16, 2004, the “Inventions Agreement”) a first negotiation right
for SDP to acquire additional future inventions and related patent rights conceived and developed
by LPI.



C. From June 2004 through December 2005, various additional inventions and related patent rights
have been conceived and developed by Dr. Chen, as an employee of LPI, which inventions and related
patent rights are useful for the business plan of SDP; and SDP has funded some of the development
costs and patent application costs for said additional inventions (collectively called the
“Additional Inventions”).




     WHEREFORE, the parties hereto and each agree as follows:


1. Assignment. In consideration of the license grant-back set forth in Section 2 of this
Agreement, LPI and Dr. Chen hereby assign to SDP all rights and interests of Dr. Chen and LPI in
the Additional Inventions and the related patent rights for all areas worldwide except for China,
Taiwan, Hong Kong and Macao (collectively called the “Retained Asian Territories”). Additionally,
Dr. Chen and LPI agree to execute and deliver such additional assignment documents as may be
necessary or appropriate to further evidence such assignment. Attached hereto as Exhibit A is a
combined listing of the Additional Inventions and the previously assigned inventions and related
patent rights (collectively called the ‘Subject Patent Rights”). LPI and Dr. Chen hereby ratify
and confirm their assignment to SDP of all of their rights and interests in the Subject Patent
Rights except for rights and interests in the Retained Asian Territories.



2. License Grant-Back. In consideration for the forgoing assignment of the Additional
Inventions, and subject to the terms of this Agreement, SDP hereby grants to LPI the worldwide,
exclusive, royalty-free, paid-up, and irrevocable license right to use the Subject Patent Rights
for LPI to use to develop, make, have made, use, sell and import products and to practice methods
and processes, only within the Permitted Fields (as defined below).




     (a) “Permitted Fields” means all fields of use other than the “Excluded Fields” as defined in
Exhibit B attached hereto.



     (b) For avoidance of doubt, SDP retains the sole and exclusive right to utilize and practice
the Subject Patent Rights in the Excluded Fields for all areas worldwide except for the



 









 







Retained Asian Territories; and LPI has no rights to utilize or practice the Subject Patent
Rights in the Excluded Fields, other than in the areas of the Retained Asian Territories.



     (c) LPI shall be entitled to grant sublicenses (and sub-tier-sublicenses), and to assign its
license rights under this Agreement; and upon any such sublicense or assignment, LPI shall give
prompt written notice thereof to SDP.


3. Patent Prosecution and Maintenance. SDP shall have the responsibility and authority to
manage the patent prosecution for the Subject Patent Rights, worldwide except for the Retained
Asian Territories, and to monitor and maintain the Subject Patent Rights, all at the expense of
SDP. SDP shall instruct the patent attorney handling these patent matters to keep LPI fully
informed as to all material matters concerning the patent prosecution and patent maintenance for
the Subject Patent Rights, including furnishing copies of correspondence with the governmental
patent offices, and furnishing copies of relevant documents related to the Subject Patent Rights.



4. Patent Infringement. If there is any third party infringing the Subject Patent Rights,
LPI and SDI shall confer and endeavor to reach a consensus as to how best to deal with the
infringer. If the infringement primarily affects the Excluded Fields in the SDP territories, then
SDP shall have the final and ultimate authority to decide how to proceed against the infringer; and
alternatively, if the infringement primarily affects the Permitted Fields or the Retained Asian
Territories, then LPI shall have the final and ultimate authority to decide how to proceed against
the infringer.



5. Inventions Agreement. As additional consideration for the assignment set forth in
Section 1 above, SDP shall also amend the Inventions Agreement (described in Recital B), so as to
allow LPI to have an early termination of the Inventions Agreement in the event that SDP is later
sold or there is a change in control of SDP.



6. Development Costs. As additional consideration for the assignment set forth in Section
1 above, if SDP is later sold, funded, or there is a change in control of SDP (the “Triggering
Event”), then SDP shall reimburse LPI for its actual costs incurred after June 2004 through the
date of the Triggering Event to further develop the Subject Patent Rights (the “Development
Costs”). Said Development Costs shall be for the actual materials, labor, and overhead for such
development work, but shall not include any time and efforts contributed by Dr. Chen.



7. Confidentiality. To the extent that either party discloses its confidential information
to the other party, such other party shall maintain the confidentiality of that confidential
information and shall not use that confidential information without the prior written consent of
the disclosing party. This obligation of non-disclosure and non-use shall not extend to any
information which: (a) can be demonstrated by the recipient to have been within its legitimate
possession prior to the time of disclosure by the disclosing party; or (b) was in the public domain
prior to disclosure by the disclosing party; or (c) comes into the public domain through no fault
of the recipient party; or (d) is disclosed to the recipient by third party having legitimate
possession thereof and the unrestricted right to make such disclosure; or (e) is required by law or
legal proceedings to be disclosed, but then only to the limited extent the such disclosure is
legally required.




 









 







8. Disclaimers. Neither Dr. Chen, LPI nor SDP makes any representation or warranty of any
kind with respect to (i) the claims that will ultimately be included in the Subject Patent Rights
once patents are issued, or (ii) the validity or scope of any of the Subject Patent Rights, or
(iii) whether or not any viable products or services can be developed under the Subject Patent
Rights, or (iv) the utility or commercial applicability of the Subject Patent Rights, or (v) the
nature and scope of any other related third party patent rights.




     IN WITNESS WHEREOF, the parties have executed this Agreement as of the date set forth above



	 	 	 	 	 
	/s/ Andrew X. Chen	 	 
	 	 	 
	Andrew X. Chen	 	 
	 
	 	 	 	 
	Latitude Pharmaceuticals, Inc.	 	 
	 
	 	 	 	 
	By:

	 	/s/ Andrew X. Chen	 	 
	 

	 	 	 	 
	 

	 	Andrew X. Chen, President	 	 
	 
	 	 	 	 
	SD Pharmaceuticals, Inc.	 	 
	 
	 	 	 	 
	By:

	 	/s/ Paul J. Marangos	 	 
	 

	 	 	 	 
	 

	 	Paul J. Marangos, President	 	 







 









 








Exhibit A

Subject Patent Rights




	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	Pat./Appl.	 	 	 	 	 	 	 	 
	Reference	 	 	 	     No.	 	 	 	Priority	 	 	 	Comments/Due
	Number	 	Title	 	Appl. Date	 	Inventors	 	Applications	 	Status	 	Dates
	401
	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 
	401P1

	 	Pharmaceutical Compositions for

Delivering Macrolide Drugs
	 	60/493,209

08/06/03
	 	Chen
	 	N/A
	 	Expired	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 
	401

	 	Pharmaceutical Compositions for

Delivering Macrolides
	 	10/895,018

07/20/04
	 	Chen
	 	60/493,209 (401P1)
	 	Pending
	 	•   Published as

US-2005-0049209-A1

on 03-Mar-05

	 
	 	 	 	 	 	 	 	 	 	 	 	 
	401CA

	 	Pharmaceutical Compositions for

Delivering Macrolides
	 	 	 	Chen
	 	 	 	Unfiled
	 	•   06-Jun-2007

-National Stage

Filing due

	 
	 	 	 	 	 	 	 	 	 	 	 	 
	401EP

	 	Pharmaceutical Compositions for

Delivering Macrolides
	 	08/05/04
	 	Chen
	 	60/493,209 (401P1)

& 10/895,018 (401)
	 	Pending
	 	•   05-Aug-2006

- Annuity due

	 
	 	 	 	 	 	 	 	 	 	 	 	 
	401JP

	 	Pharmaceutical Compositions for

Delivering Macrolides
	 	08/05/04
	 	Chen
	 	60/493,209 (401P1)

& 10/895,018 (401)
	 	Pending
	 	•   05-Aug-2007

- Deferred Exam

	 
	 	 	 	 	 	 	 	 	 	 	 	 
	401PC

	 	Macrolides Containing

Oil-in-Water

Emulsions
	 	US04/25284

08/05/04
	 	Chen
	 	60/493,209 (401P1)

& 10/895,018 (401)
	 	Pending
	 	•   Published







 









 






	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	Pat./Appl.	 	 	 	 	 	 	 	 
	Reference	 	 	 	     No.	 	 	 	Priority	 	 	 	Comments/Due
	Number	 	Title	 	Appl. Date	 	Inventors	 	Applications	 	Status	 	Dates
	403
	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 
	403P1

	 	Anti-Viral Pharmaceutical

Compositions
	 	60/528,843

12/10/03
	 	Chen
	 	N/A
	 	Expired	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 
	403

	 	Anti-Viral Pharmaceutical

Compositions
	 	11/003,302

12/03/04
	 	Chen
	 	60/528,843 (403P1)
	 	Pending
	 	•   Published

	 
	 	 	 	 	 	 	 	 	 	 	 	 
	403PC

	 	Anti-Viral Pharmaceutical

Compositions
	 	US04/41117

12/08/04
	 	Chen
	 	60/528,843 (403P1)

& 11/003,302 (403)
	 	Pending
	 	•   10-Jun-2006
- Chapter I/II
National Stage
Filing due

	 
	 	 	 	 	 	 	 	 	 	 	 	 
	404
	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 
	404P1

	 	Elemene Compositions Containing

Liquid Oil
	 	60/538,851

01/23/04
	 	Chen
	 	N/A
	 	Expired	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 
	404

	 	Elemene Compositions Containing

Liquid Oil
	 	11/040,079

01/21/05
	 	Chen
	 	60/538,851 (404P1)
	 	Pending
	 	•   Published

	 
	 	 	 	 	 	 	 	 	 	 	 	 
	406
	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 
	406

	 	Injectable Pharmaceutical

Compositions for Irritating Drugs
	 	10/889,226

 07/12/04
	 	Chen
	 	N/A
	 	Pending
	 	•   Published

	 
	 	 	 	 	 	 	 	 	 	 	 	 
	406PC

	 	Compositions for Delivering
Highly

Water Soluble Drugs
	 	US2005/24594

7/12/05
	 	Chen
	 	10/889,226 (406)
	 	Pending
	 	•   Published

•   18-Mar-2006

- Amend Claims

•   12-May-2006

- Demand Due

(Priority Date)

	 

	 	 	 	 	 	 	 	 	 	 	 	•   12-Jan-2007
- Chapter I/II
National Stage
Filing due







 









 






	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	Pat./Appl.	 	 	 	 	 	 	 	 
	Reference	 	 	 	     No.	 	 	 	Priority	 	 	 	Comments/Due
	Number	 	Title	 	Appl. Date	 	Inventors	 	Applications	 	Status	 	Dates
	407
	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 
	407P1

	 	Stable Injectable Composition of
Alpha Tocopheryl Succinate,
Analogues and Salts Thereof
	 	60/592,097

07/28/04
	 	Chen
	 	N/A
	 	Expired	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 
	407

	 	Stable Injectable Composition of
Alpha Tocopheryl Succinate,
Analogues and Salts Thereof
	 	11/192,439

07/28/05
	 	Chen
	 	60/592,097 (407P1)
	 	Pending
	 	•   Published

	 
	 	 	 	 	 	 	 	 	 	 	 	 
	407PC

	 	Stable Injectable Composition of
Alpha Tocopheryl Succinate,
Analogues and Salts Thereof
	 	US2005/026783

7/28/05
	 	Chen
	 	60/592,097 (407P1)
	 	Pending
	 	•   Published

•   28-Jan-2007
- Chapter I/II
National Stage
Filing due

	 
	 	 	 	 	 	 	 	 	 	 	 	 
	408
	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 
	408

	 	Low Oil Emulsion Compositions
for
Delivering Taxoids and Other
Insoluble Drugs
	 	10/952,243

9/28/04
	 	Chen
	 	N/A
	 	Pending
	 	•   30-Mar-2006

- Projected

Publication

	 
	 	 	 	 	 	 	 	 	 	 	 	 
	408 PC

	 	Low Oil Emulsion Compositions
for
Delivering Taxoids and Other
Insoluble Drugs
	 	US2005/34971

9/28/05
	 	Chen
	 	10/952,243 (408)
	 	Pending
	 	•   28-Mar-2007
- Chapter I/II
National Stage
Filing due







 









 






	 	 	 	 	 	 	 	 	 	 	 	 	 
	 	 	 	 	Pat./Appl.	 	 	 	 	 	 	 	 
	Reference	 	 	 	     No.	 	 	 	Priority	 	 	 	Comments/Due
	Number	 	Title	 	Appl. Date	 	Inventors	 	Applications	 	Status	 	Dates
	409
	 	 	 	 	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 
	409P1

	 	Vitamin E Succinate Stabilized
Pharmaceutical Compositions,
Methods for the Preparation
Thereof and Methods for the Use
Thereof
	 	To be filed	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 
	409P2

	 	Vitamin E Succinate Stabilized
Pharmaceutical Compositions,
Methods for the Preparation
Thereof and Methods for the Use
Thereof
	 	To be filed	 	 	 	 	 	 	 	 
	 
	 	 	 	 	 	 	 	 	 	 	 	 
	410

	 	Vancomycin formation Patent
	 	To be filed	 	 	 	 	 	 	 	 







 









 








Exhibit B

Excluded Fields



1. Clarithromycin intravenous emulsion formulation for infectious disease and any other disease
indication.



2. Chitosan in combination with Zinc for topical anti-viral use.



3. B-Elemene intravenous emulsion formulation for Cancer treatment and any other disease
indication.



4. Vinca Alkyloid intravenous emulsion formulation for cancer treatment and any other disease
indication.



5. Alpha tocopheryl Succinate, Paclitaxel and Docetaxel intravenous emulsion formulations for
Cancer and any other disease indication.



6. Paclitaxel and Docetaxel intravenous emulsion formulation for cancer treatment and any other
disease indication.



7. Vancomycin intravenous emulsion formulation for infectious disease and any other disease
indication.





 









 








November 20, 2007




Latitude Pharmaceuticals, Inc.

6364 Ferris Square

San Diego, CA 92121




Andrew X. Chen, as an individual

6364 Ferris Square

San Diego, CA 92121




Re: Clarification under License Agreement




To Whom It May Concern:




     Reference is made to that certain License Agreement, dated December 10, 2005, among SD
Pharmaceuticals, Inc., a Delaware corporation (“SDP”), Latitude Pharmaceuticals, Inc., a Delaware
corporation (“Latitude”), and Andrew X. Chen (the “License Agreement”).



     I am writing to confirm our mutual understanding of the License Agreement; in particular, the
scope of the “Excluded Fields” (and, thereby, the scope of the “Permitted Fields”) with respect to
(i) patent applications US 11/003,302 (published as US 2005/0232895) and International Application
PCT/US2004/041117 (published as WO 2005/074947), (ii) all additions, divisions, continuations,
continuations-in-part, registrations, renewals, registrations and substitutions thereof, (iii) all
foreign patent applications and counterparts corresponding to any of the preceding and (iv) all
U.S. and foreign patents issuing on any of the preceding applications, including extensions,
reissues, and reexaminations (the “Patents”).



     We agree that the scope of the Excluded Field with respect to the Patents includes the right
to make, have made, use, offer for sale, sell and import, and to otherwise practice and exploit,
the inventions disclosed or claimed in the Patents, including in combination with other substances
and/or devices. Other than as clarified or otherwise set forth in this letter, the terms and
conditions of the License Agreement remain in full force and effect.



[Signature page follows]




 









 





November 20, 2007

Page 2




     If you agree with the foregoing, please countersign this letter. Do not hesitate to contact
me if you have any questions.



	 	 	 	 	 	 	 
	 	 	Very truly yours,	 	 
	 
	 	 	 	 	 	 
	 	 	ADVENTRX Pharmaceuticals, Inc.	 	 
	 
	 	 	 	 	 	 
	 

	 	By:
	 	/s/ Evan M. Levine	 	 
	 

	 	 	 	 	 	 
	 

	 	 	 	Evan M. Levine, Chief Executive Officer	 	 






	 	 	 	 	 
	ACKNOWLEDGED AND AGREED:	 	 
	 
	 	 	 	 
	Latitude Pharmaceuticals, Inc.	 	 
	 
	 	 	 	 
	By:

	 	/s/ Andrew X. Chen	 	 
	 

	 	 	 	 
	 

	 	Andrew X. Chen, President	 	 
	 
	 	 	 	 
	/s/ Andrew X. Chen	 	 
	 	 	 
	Andrew

	 	X. Chen, as an individual