LICENSE AGREEMENT
This Agreement is made as of this 1st day of May, 2001 between
PHIBRO-TECH, INC., a Delaware corporation, with offices at Xxx Xxxxxx Xxxxx,
Xxxx Xxx, Xxx Xxxxxx 00000 (hereinafter referred to as "Licensor") and Nufarm,
Inc., a Delaware corporation, with offices at 0000 Xxxx Xxxxx Xxxxxxx, Xxxxx
000X, Xxxx Xxxxx, Xxxxxxxx 00000 (hereinafter referred to as "Licensee").
W I T N E S S E T H :
WHEREAS, in the course of research conducted by or under the auspices of
Licensor, those employees of Licensor named as inventors in Section 1.2 below
(each an "Inventor" and collectively the "Inventors") have produced the
invention described in the patent application referred to in Section 1.2 (the
"Invention"); and
WHEREAS, pursuant to the employment arrangements between the Inventors and
the Licensor, Licensor is the owner of the interests of the Inventors in the
Invention, any patents resulting therefrom and the Licensed Technology (as
defined below); and
WHEREAS, substantially contemporaneously herewith Licensee is purchasing
from Licensor substantially all of the Agtrol Division of Licensor and certain
of its Affiliated Companies, other than the Invention, Licensed Technology and
certain other assets, pursuant to certain purchase agreements dated as of May 1,
2001, among Licensor and Licensee and certain Affiliated Companies of such
entities; and, in connection with such acquisition, substantially
contemporaneously herewith, Licensee is agreeing to purchase all of its
requirements of certain products from Licensor, pursuant to two certain Supply
Agreements of even date herewith between Licensor and Licensee and one of its
Affiliated Companies (the "Supply Agreements"); and
WHEREAS, Licensee wishes to obtain an exclusive license to the Licensed
Technology and Invention in order to make, use and sell Licensed Products and
practice Licensed Processes (as defined below) in the Field, and Licensor is
willing to grant such an exclusive license to Licensee subject to the terms and
conditions hereof; and
WHEREAS, Licensee wishes to obtain a non-exclusive license to the Licensed
Technology and Invention in order to make, use and sell Licensed Products and
practice Licensed Processes (as defined below) outside the Field anywhere in the
Territory; and Licensor is willing to grant such a non-exclusive license to
Licensee subject to the terms and conditions hereof;
NOW, THEREFORE, in consideration of the mutual covenants herein contained,
the parties agree as follows:
1. Definitions
1.1 "Affiliated Company" means in respect of a party to this Agreement
any entity which, by means of the majority of shares or otherwise,
is controlled by such party, is controlling such party or is under
common control with such party. A corporation or other entity shall
be regarded as in control of another corporation or entity if it
owns or directly or indirectly controls more than fifty percent
(50%) of
the voting stock or other ownership interest of the other
corporation or entity, or if it possesses, directly or indirectly,
the power to direct or cause the direction of the management and
policies of the corporation or other entity.
1.2 "Application" means the provisional patent application specified in
Schedule 1.2 delivered contemporaneously herewith.
1.3 "Confidential Information" means all information, know-how, data,
technical or non-technical and commercial information provided by
one party to the other.
1.4 "Field" means the manufacture of (i) all fungicide products and (ii)
the pesticide products sold by Licensee or an Affiliated Company of
Licensee other than Chlorothalanil and other products produced or
sold by Licensor or an Affiliated Company of Licensor.
1.5 "Improvements" means research of and developments, enhancements,
modifications and other improvements to the Invention, Licensed
Technology, Licensed Processes or Licensed Products developed, made
or obtained by or on behalf of a party, or used by a party,
including without limitation, to use, practice, commercialize or
exploit the Invention, Licensed Technology, Licensed Process or
Licensed Product, or to make, have made, use, lease or sell Licensed
Products or practice Licensed Processes.
1.6 "Intellectual Property" collectively means the Application,
Invention, Licensed Patent and Licensed Technology.
1.7 "Licensed Patents" means the Application, all corresponding
applications made in or outside the United States and claiming
priority therefrom (including but without limiting the generality of
the foregoing, any application or other filing made under the Patent
Cooperation Treaty), and any patents that issue on the Application
or applications related to or based upon the Application by priority
claim, together with all related United States, European and other
patents and patent applications, and any divisions, continuations,
continuations-in-part, reissues, re-examinations, registrations,
divisional and substituted patents and applications, additions,
counterparts or extensions to any of the said patent applications or
patents.
1.8 "Licensed Products" means tangible materials which, in the course of
use or sale would, in the absence of this Agreement, prior to the
issuance of the Licensed Patents, infringe one or more claims of the
applications included within the Licensed Patents if issued in such
form or, after the issuance of the Licensed Patents, infringe one or
more claims of the Licensed Patents that have not been held invalid
or unenforceable by an unappealed or unappealable judgment of a
court of competent jurisdiction.
1.9 "Licensed Process(es)" means processes which, in the course of being
practiced would, in the absence of this Agreement, prior to the
issuance of the Licensed Patents, infringe one or more claims of the
applications included within the Licensed Patents if issued in such
form or, after the issuance of the Licensed
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Patents, infringe one or more claims of the Licensed Patents that
have not been held invalid or unenforceable by an unappealed or
unappealable judgment of a court of competent jurisdiction.
1.10 "Licensed Technology" includes the information from time to time
contained in the Application, together with all scientific and
commercial information, including, without limiting the generality
thereof, all designs, drawings, technical and non-technical
information and materials, know-how and other intellectual property,
data, specifications, test results, and other information relating
to the Invention or the manufacture, use or sale of Licensed
Products or practice of Licensed Processes, and developed or
acquired by Licensor prior to the date hereof.
1.11 "Term" is described in Section 5.1.
1.12 "Territory" means the entire world.
2. Grant of License
2.1 Exclusive License. (a) On the terms and subject to the conditions
set forth in this Agreement, Licensor grants to Licensee an
exclusive, fully-paid, royalty-free, right and license to use,
operate, maintain and enhance, practice, commercialize and exploit,
in the Field, the following in the Territory: (i) the Invention;
(ii) the Licensed Processes; and (iii) the Licensed Patents and the
Licensed Technology, including the exclusive right and license, in
the Territory, to make, have made by an Affiliated Company or third
party (subject to the proviso in Section 2.2(b) below), manufacture,
use, import, lease, sell, offer to sell, and otherwise transfer and
dispose of Licensed Products and practice Licensed Processes in the
Field and to further develop, enhance, modify and improve the
Invention and the Licensed Technology and Licensed Patents in the
Field, and to practice unpatented processes in the Field and use
unpatented information and know-how included within the Invention or
the Licensed Technology in the Field. Licensor hereby represents and
warrants to Licensee that it has not granted any of the foregoing
rights to any third party by license or otherwise.
(b) Non-exclusive License. On the terms and subject to the
conditions set forth in this Agreement, Licensor grants to Licensee
a non-exclusive, fully-paid, royalty-free, right and license to use,
operate, maintain and enhance, practice, commercialize and exploit,
outside the Field, the following in the Territory: (i) the
Invention; (ii) the Licensed Processes; and (iii) the Licensed
Patents and the Licensed Technology, including the non-exclusive
right and license, in the Territory, to make, have made by an
Affiliated Company or third party (subject to the proviso in Section
2.2(b) below), manufacture, use, import, lease, sell, offer to sell,
and otherwise transfer and dispose of Licensed Products and practice
Licensed Processes and to further develop, enhance, modify and
improve the Invention and the Licensed Technology and Licensed
Patents outside the Field, and to practice unpatented processes
outside the Field and use unpatented information and know-how
included within the Invention or the Licensed Technology outside the
Field.
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2.2 Sublicense. The rights and license granted herein to Licensee are
for the sole use and benefit of Licensee. Licensee shall not be
entitled to sublicense or otherwise transfer any or all of its
rights under this Agreement for any purpose whatsoever; provided,
however, that (a) Licensee may transfer all of its rights hereunder
to an Affiliated Company and (b) Licensee may transfer its right to
manufacture the Licensed Products using the Licensed Processes to a
third party one year prior to the date on which the Supply Agreement
related to Licensor's facility in Sumter, South Carolina terminates
as a result of a notice of non-renewal in respect of such Supply
Agreement; provided, however, that no such sublicense in (b) shall
diminish any obligations of Licensee and any of its Affiliated
Companies under either of the Supply Agreements.
2.3 No Implied License. No right or license is granted or implied to
Licensee or any person claiming through or on behalf of Licensee
under any patent or patent application or other technology other
than as specifically set forth in Section 2.1.
2.4 Improvements Developed Solely by Licensee. Licensee has the right to
make Improvements. Licensee shall have all right, title and interest
to all Improvements made by or on behalf of Licensee (excluding
Improvements and other technologies made by Licensor in accordance
with Section 2.6 or made jointly by Licensee and Licensor in
accordance with Section 2.5 and shall license to Licensor on a
non-exclusive basis all Improvements at no additional cost.
2.5 Improvements Developed Jointly by Licensee and Licensor. Each of
Licensee and Licensor shall have an equal undivided ownership
interest in and to any Improvements developed jointly by Licensee
and Licensor.
2.6 Improvements Developed Solely by Licensor. Licensor shall have all
right, title and interest to all Improvements made by or on behalf
of Licensor after the date hereof (excluding Improvements and other
technologies made by Licensee in accordance with Section 2.4 or made
jointly by Licensee and Licensor in accordance with Section 2.5) and
shall license to Licensee on a non-exclusive basis all Improvements
at no additional cost.
2.7 Reservation of Rights. Licensor reserves unto itself rights with
respect to the Intellectual Property and other rights licensed to
Licensee hereunder, to the extent necessary or appropriate to
perform its duties and responsibilities under the Supply Agreements,
and for research and development purposes and to make Improvements.
3. No Payment By Licensee
Fully-paid License. The licenses granted herein shall be fully paid,
and no initiation, milestone, royalty or other payments shall be due
in respect of the manufacture, use or sale of Licensed Products or
practice of Licensed Processes.
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4. Confidentiality
4.1 Confidentiality Obligations. (a) A party receiving Confidential
Information hereunder will protect such Confidential Information of
the disclosing party from unauthorized disclosure to third parties
with the same degree of care as the receiving party uses for its own
similar information but no less than due care. The foregoing
obligation shall not apply to any information which is:
(i) shown to be in the public domain as evidenced by documents
which were generally published prior to such disclosure or known or
in possession of the receiving party prior to the disclosure of the
information by the other party;
(ii) subsequently received from outside parties having the
right to divulge the same;
(iii) or becomes part of the public domain through no fault or
disclosure by the receiving party; or
(iv) necessarily disclosed in the course of and for the
purpose of complying with governmental regulations.
Any existing or prospective affiliates, consultants or scientific
advisers who are recipients of information hereunder shall be under
the same obligation of confidentiality with respect to such
information as the disclosing party.
(b) Subject to Section 4.2, neither party shall disclose or make
available to any person, firm or entity a copy, summary or extract
of this Agreement or any of the terms hereof except to the extent
reasonably required for compliance with securities and other laws
and accounting requirements.
(c) The parties shall only disclose Confidential Information of the
other to their respective employees who have a need to have access
to such Confidential Information.
(d) During the Term, Licensee covenants and agrees with Licensor
that it will not disclose Licensed Technology, including without
limitation, the contents of any pending unissued claims in the
patent applications included in the Licensed Patents, to any third
party, provided that this obligation shall not apply to such part of
the Licensed Technology (other than the contents of any patent
applications included in the Licensed Patents) as shall become part
of the public domain through the efforts of Licensor or Licensee in
accordance with Article 8 hereof, and without the fault or
disclosure by Licensee other than in accordance with Article 8
hereof, after the issuance of the Licensed Patents in the United
States or the European Patent Office; it being understood that no
exceptions to such obligation of confidentiality in this Section 4.1
shall permit disclosure of any content of the Application by
Licensee.
4.2 Publicity. Neither party shall originate any publicity, news release
or other announcement, written or oral, relating to the existence or
the terms or conditions
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of this Agreement without the prior written consent of the other
party, except, in the case of a party with securities registered for
public trading, as may be necessary in the reasonable opinion of
counsel to such party to comply with applicable law or pursuant to
the requirements of any governmental authority, and in any such
event each party shall give the other party as much advance notice
as is reasonably possible under the circumstances.
4.3 Export Control Regulations. To the extent that United States Export
Control Regulations are applicable, Licensee shall not, without
having first fully complied with such regulations, (a) transfer any
unpublished technical data obtained or to be obtained from Licensor
to a destination outside of the United States, or (b) knowingly
ship, directly or indirectly, any product produced using such
unpublished technical data to any destination outside the United
States.
5. Term; Termination
5.1 Term. The term of the licenses granted hereunder shall commence upon
the signing hereof and, unless sooner terminated, shall continue for
the life of any applicable Licensed Patent, and shall expire on a
country by country basis when the last to expire Licensed Patent in
such country expires; provided, however, that with respect to an
Application filed in a particular country, if a patent is not
ultimately issued on the Application by a competent governmental
authority in such country, the term of the licenses granted
hereunder shall be twenty (20) years from the date of the execution
of this Agreement (the "Term").
5.2 Termination. (a) If during the Term
(i) Licensee or Licensor commits a breach of any term or
condition of this Agreement and does not remedy such breach within
thirty (30) days after the date of receipt of a written notice from
the other party requiring such remedy; or
(ii) Licensee or Licensor becomes insolvent or has a receiver
or a trustee appointed over the whole or any part of its assets or
if any order be made or resolution passed for its winding up or if
in the case of Licensee any analogous step or proceedings are taken
pursuant to the laws of its place of incorporation (other than for
the purpose of reconstruction or amalgamation if any new legal
entity so formed agrees to enter into an agreement with the other
party under the same terms and conditions as this Agreement),
THEN
in any such case the other party may by written notice forthwith
terminate this Agreement.
(b) If during the Term, (i) either Licensee or Licensor undergoes an
effective change in control, such that more than fifty percent (50%)
of the voting stock of Licensee or Licensor, respectively, is owned
or controlled by another entity or corporation, and (ii) the new
controlling entity or corporation does not agree to the terms,
responsibilities and obligations agreed to by the party subject to
the change
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of control hereunder, then the party not subject to the change in
control may by written notice forthwith terminate this Agreement.
5.3 Effect of Termination. Expiration or termination of any or all of
this Agreement shall not relieve the Licensee and Licensor of any
obligation accruing or accrued prior to expiration or termination
and in particular the provisions of Sections 4 and 6 shall continue
to apply and survive.
6. Indemnity and Insurance
6.1 Indemnification by Licensee. Licensee shall indemnify and hold
harmless Licensor, its respective directors, officers, employees and
agents, from and against any and all demands, losses, damages,
liabilities, claims (including claims of infringement of any patent
or property right of a third party except such infringements of
which Licensor had prior knowledge and failed to notify Licensee and
except for any claims for which Licensor indemnifies Licensee
pursuant to either of the Supply Agreements), and costs and expenses
incidental thereto (including costs of investigation, defense,
settlement and reasonable attorneys' fees) which any or all of them
may hereafter incur, be responsible for or pay out, which arise out
of or are in any way connected with (i) Licensee's breach of any
term or provision of this Agreement, or (ii) any loss, injury
(including death), illness, damage (whether personal or property) or
product liability arising out of the exercise by the Licensee of its
rights under this Agreement other than any product liability arising
out of Licensor's activities under either of the Supply Agreements,
including without limitation, the use by Licensee or any person
claiming through or on behalf of Licensee of any Licensed Product or
use or practice of any method or process related to the Licensed
Patents or Licensed Process or Licensed Technology, or any use, sale
or other disposition or commercialization of any of the Licensed
Products, Licensed Processes, Licensed Patents or Licensed
Technology or (iii) any statement, representation or warranty of
Licensee or other transferee with respect thereto; but in any event
excluding any claim to the extent Licensor is responsible to
indemnify Licensee under Section 6.1(b).
(b) Indemnification by Licensor. Licensor shall indemnify and hold
harmless Licensee, its respective directors, officers, employees and
agents, from and against any and all demands, losses, damages,
liabilities, claims (including claims of infringement of any patent
or property right of a third party except such infringements of
which Licensee had prior knowledge and failed to notify Licensor),
and costs and expenses incidental thereto (including costs of
investigation, defense, settlement and reasonable attorneys' fees)
which any or all of them may hereafter incur, be responsible for or
pay out, which arise out of or are in any way connected with (i)
Licensor's breach of any term or provision of this Agreement, or
(ii) any statement, representation or warranty of Licensor or other
transferee with respect thereto; but in any event excluding any
claim to the extent Licensee is responsible to indemnify Licensor
under Section 6.1(a).
6.2 Insurance. Licensee shall maintain public and product liability
insurance for the Term and thereafter with respect to the
manufacture and sale of Licensed Products
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and use of Licensed Processes by Licensee, and shall ensure that at
all times the insurance coverage is for a minimum amount
commensurate with standard industry practices and will be in place
on or before the date of the first commercial sale of Licensed
Products or any use of a Licensed Process. Licensee shall provide
that any parties involved in the manufacture and/or sale of Licensed
Products or practice of Licensed Processes through it or on its
behalf (other than the Licensor) shall maintain product liability
insurance with respect to the manufacture and/or sale of Licensed
Products and use of a Licensed Process to a similar minimum limit.
Licensee shall maintain such insurance for so long as it continues
to manufacture and/or sell Licensed Products or use Licensed
Processes, and thereafter for so long as commercially reasonably
necessary.
7. Representations and Warranties
Licensor hereby represents and warrants to Licensee that:
7.1 Licensor has provided to Licensee in writing the Application, all
inventions and know-how existing, on or before the date hereof that
are associated with the Application, the Licensed Patents, the
Licensed Products, the Licensed Process(es) and the Licensed
Technology. The Licensor owns all of the Inventors' right, title and
interest in the Invention claimed in the Application.
7.2 Licensor has not received any notice of a claim of infringement or
misappropriation of any alleged rights asserted by any third party
in relation to the Licensed Patent, the Licensed Products, the
Licensed Technology, the Licensed Process(es), or the Invention.
7.3 Licensor owns the Intellectual Property and has the full right and
power to grant the licenses set forth in Section 2.1. There are no
assignments, grants, licenses, encumbrances, obligations or
agreements that are or would be inconsistent with the rights granted
to Licensee under this Agreement and there are no pending claims
against the Intellectual Property that would negatively affect
Licensee's rights to use the Intellectual Property hereunder, and to
the knowledge of Licensor, the use of the Intellectual Property as
granted hereunder does not infringe, misappropriate or misuse the
intellectual property or other rights of any third party.
7.4 Licensor has taken, and will continue to take, the commercially
reasonable measures and precautions necessary to protect and
maintain the confidentiality of such intellectual property.
Except as set forth herein, LICENSOR MAKES NO OTHER WARRANTIES,
EITHER EXPRESS OR IMPLIED, AS TO THE MERCHANTABILITY OR FITNESS OF
THE LICENSED PRODUCTS OR LICENSED PROCESS FOR A PARTICULAR PURPOSE
and Licensee shall make no statements, representations or warranties
whatsoever to any third parties that are inconsistent with such
disclaimer by Licensor.
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Licensee acknowledges that until a Licensed Patent issues in the
name of Licensor, Licensee may not be able to enforce its patent or
other rights granted hereunder to prevent other entities (who did
not receive such technology from Licensor or any successor or
predecessor in interest) from using technology which may be included
in the unissued claims of Licensed Patents or other Licensed
Technology and independently developed. Licensee further
acknowledges that Licensor does not guarantee that the Application
shall issue or the scope of the claims therein, nor any degree of
exclusivity (a) even after Licensed Patents are granted to the
extent a Licensed Product or Licensed Process involves an aspect
which is not covered by the Licensed Patents but is covered by
rights of a third party (who did not receive such technology from
Licensor or any predecessor in interest) and independently
developed, or (b) with respect to unpatentable information which
becomes part of the public domain through the efforts of Licensee
and without the fault of or disclosure by Licensor.
Except as set forth herein, Licensor hereby disclaims all warranties
relating to the Licensed Patents and Licensed Technology, express or
implied. Without limiting the generality of the foregoing, Licensor
expressly does not warrant (i) the patentability of the Invention or
Licensed Technology, (ii) the accuracy of any information contained
in the Application or Licensed Technology, or (iii) the accuracy,
safety, or usefulness for any purpose of the Invention described in
the Application, the Licensed Patents and/or the Licensed
Technology.
8. Patent Prosecution
8.1 Prosecution. During the Term, Licensor shall use commercially
reasonable efforts to diligently prosecute and maintain the
Application, the Licensed Patents and Licensed Processes. If
Licensor decides not to seek patent protection on an invention
included as Licensed Technology which may reasonably be patentable,
or decides to allow any of the patents or patent applications
included as Licensed Patents to be abandoned or to lapse, Licensor
shall give Licensee written notice of that decision at least ninety
(90) days prior to the first date that action may be taken to
preserve the right to seek patent protection, or to avoid such
abandonment or lapse, and Licensee, shall have the right to assume,
by written notice to Licensor, the prosecution or maintenance of
said patent applications, at its own expense. Licensor covenants
that during the Term Licensor shall provide Licensee with copies of
all substantive communications to and from patent offices regarding
the Application and the Licensed Patent reasonably promptly after
the receipt or submission thereof.
8.2 Licensee Cooperation. Licensee agrees to cooperate with Licensor in
Licensor's preparation, filing, prosecution and maintenance of the
Application, Licensed Patents and Licensed Processes. Licensee shall
bear its own costs in connection with such cooperation with
Licensor; provided, however, that Licensee shall have no obligation
to incur any third party expenses in connection therewith.
8.3 Foreign Patent Applications. Licensor has filed a patent application
with respect to the Licensed Patents in the foreign jurisdictions
listed on Schedule 8.3 delivered contemporaneously herewith.
Licensee may request Licensor, and
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Licensor shall, file a patent application with respect to the
Licensed Patents or Licensed Processes in any jurisdiction other
than the United States and the jurisdictions listed on Schedule 8.3.
If Licensor files a patent application with respect to the Licensed
Patents or Licensed Processes in any jurisdiction other than the
United States and those listed on Schedule 8.3, Licensee agrees to
reimburse Licensor for its pro rata share of patent costs incurred
by Licensor for such filings requested by Licensee, provided that
Licensor has given Licensee thirty (30) days written notice of the
filing of the foreign application (which notice shall offer a
reasonable estimate of anticipated prosecution and maintenance
expenses in that jurisdiction) and during a period of fifteen (15)
days following the giving of such written notice, Licensee does not
notify Licensor that it agrees to exclude from this Agreement and
the license granted hereunder the territory of that foreign
jurisdiction. Licensee's pro rata share of such patent costs shall
be divided equitably between Licensor and Licensee.
8.4 Patent Costs. Licensee shall pay its share of patent costs set forth
in Section 8.3 within thirty (30) days of receipt of an invoice from
Licensor for same. Patent costs may include all documented
out-of-pocket costs incurred in connection with filing a Licensed
Patent and obtaining and maintaining a Licensed Patent, including
governmental filing, issue and maintenance fees, draftsmen's
charges, foreign agent fees and attorneys' fees.
8.5 Markings. Licensee shall apply the patent marking notices required
by the law of any country where Licensed Products are made, sold or
used in accordance with the applicable patent laws of that country.
9. Infringement of Patent Rights
9.1 Infringement of Third Party Patents
If Licensee shall become aware of the institution of proceedings or
the threatened institution of proceedings or be sued by a third
party for infringement of a Patent because of the use, manufacture
or sale of Licensed Products, or practice of a Licensed Process,
Licensee shall promptly notify Licensor in writing of the
institution of such proceeding or suit, and the parties shall
consult together with respect to the course of action to be taken.
Unless otherwise agreed, in the case of legal proceedings, Licensor
shall have the first and prior right, if it so elects, to control
the defense of such suit at its own expense; in which event Licensee
shall have the right to be represented by counsel of its own
selection, and shall co-operate fully in the defense and settlement
of such suit and furnish to Licensor all evidence and assistance in
its control. In the event Licensor elects not to control the defense
of such suit, Licensee can control the defense of such suit at an
expense to be shared equally between Licensee and Licensor. Neither
party shall settle the same in any manner without the prior written
consent of the other; provided, however, that the party controlling
the defense shall be free to settle the same without the consent of
the non-controlling party if by the settlement the scope of the
rights of the non-controlling party hereunder would not be reduced
or diminished in any material respect.
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10. Enforcement of Patent Rights
10.1 Disclosure. Each party shall promptly notify the other in writing of
any facts that may affect the validity, scope or enforceability of a
Licensed Patent. Each party shall notify the other promptly in
writing of any infringement of a Licensed Patent that becomes known
to such party. The parties shall cooperate with each other in
attempting to eliminate the infringement identified.
10.2 Rights to Enforce. Licensor shall have the right, but not the
obligation, to enforce the Licensed Patents against any
infringement. In the event of infringement by a third party of any
Licensed Patents within the Field which Licensee wishes to
prosecute, Licensee shall first make a written request to Licensor
to prosecute such action. If within one hundred twenty (120) days
after receipt of such request Licensor shall have been unsuccessful
in persuading such alleged infringer to desist such infringement,
and Licensor or a designee shall not have brought an infringement
action against such alleged infringer, Licensee, together with all
other licensees of the Licensed Patents (if any), may enforce the
Licensed Patents by appropriate legal proceedings.
10.3 Licensee Enforcement. In the event that Licensee shall be
prosecuting any alleged infringer pursuant to Section 10.2, it shall
keep Licensor fully informed of all material developments of such
proceedings. Licensee shall be responsible for all costs and
expenses of any enforcement activities, including legal proceedings,
against infringers that Licensee initiates. Licensor shall join in
and cooperate with any enforcement proceedings at Licensee's
request, provided that Licensor may be represented by Licensor's
counsel in any such legal proceedings, at Licensor's own expense
(subject to reimbursement under Section 10.5), acting in an advisory
but not controlling capacity. In addition, Licensee may name
Licensor as party plaintiff as required by law. No settlement,
consent judgment, or other final, voluntary disposition of any suit
brought by Licensee which waives any rights within the Licensed
Patents may be entered into without the prior written consent of
Licensor. In the event that a declaratory judgment action alleging
the invalidity or non-infringement of the Licensed Patents shall be
brought or raised against Licensee, Licensor shall have the right,
but not the obligation, to intervene and take over the sole defense
of such action. Any recoveries in any action brought by Licensee
under this Section 10.3 shall be allocated as provided in Section
10.5 hereof.
10.4 Licensor Enforcement. Any actions brought by Licensor at the request
of Licensee pursuant to Section 10.2 shall be at the sole cost and
expense of Licensor. Licensor agrees to consult with Licensee and to
keep Licensee fully informed regarding all material developments of
such proceeding. In addition, Licensor may name Licensee as a party
plaintiff as required by law. No settlement, consent, judgment or
other final, voluntary disposition of any suit brought by Licensor
which waives any rights within the Field of the Licensed Patents may
be entered into without the prior written consent of Licensee, which
consent shall not be unreasonably withheld. Licensee agrees to join
in and cooperate with any enforcement proceedings at Licensor's
request and at
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Licensor's expense, provided, however, that Licensee may be
represented by Licensee's counsel in any such proceeding, at
Licensee's own expense, subject to reimbursement under Section 10.5,
acting in an advisory, but not controlling, capacity. Any recoveries
in any action brought by Licensor under this Section 10.4 shall be
allocated as provided in Section 10.5 hereof. Licensor shall have no
legal or contractual obligation to Licensee for its failure to
defend or participate in any legal action, and may, upon reasonable
notice to Licensee, withdraw from any suit at any time, without any
continuing liability to Licensee for expenses incurred after such
withdrawal.
10.5 Recoveries. All recoveries by way of royalties, damages and claims
with respect to infringement actions instituted and claims made
(including penalties and interest) (a) prosecuted by Licensee
pursuant to Section 10.3, or (b) prosecuted by Licensor or a
designee pursuant to Section 10.4, shall be applied first in
satisfaction of any unreimbursed expenses (including attorneys'
fees) of the party controlling the litigation (which shall be
Licensee under Section 10.3 and Licensor or a designee under Section
10.4) and next to the other party or parties to the extent of its or
their unreimbursed expenses incurred in its or their participation
and/or cooperation. Any remaining balance of damages shall be
distributed eighty percent (80%) to the party controlling the
litigation and twenty percent (20%) to the other party or parties.
11. Compliance with Laws, Regulations and Standards
Licensee agrees to comply with all governmental laws and regulations
applicable to the use, production and/or sale of Licensed Products
and Licensed Processes.
12. Dispute Resolution; Equitable Remedies.
12.1 Dispute Resolution. Prior to the initiation of formal legal
proceedings, the parties hereto shall attempt in good faith to
resolve all disputes in respect of this Agreement. Formal
proceedings for the resolution of a dispute may not be commenced
until the earlier of (a) the date that the parties conclude in good
faith that amicable resolution through negotiation of the matter
does not appear likely or (b) thirty (30) days after the parties
first attempted to resolve the issue. This provision will not be
construed to prevent a party from instituting, and a party is
authorized to institute, formal legal proceedings to avoid the
expiration of any applicable statute of limitation period.
12.2 Equitable Remedies. Nothing in this Section 12 shall prevent either
party from pursuing a temporary restraining order, injunctive relief
or other equitable relief against the other party in a court of law
at any time if the allegedly aggrieved party believes that a breach
or a threatened breach of this Agreement would cause irreparable
harm.
13. Notices
Any notice which either party may wish to send to the other shall be
deemed to have been duly sent if delivered or posted by airmail to
such party at the address
12
as set out at the beginning of this Agreement or to such other
address as may have been notified pursuant to the provisions of this
clause and if delivered shall be deemed to have been received on the
day of delivery and if posted then on the seventh working day next
following the day of posting; provided, however, that any such
notice may be sent by facsimile and shall be deemed to have been
received at the beginning of the working day next following the day
of transmission if the receiving machine causes the sending machine
to print the answer back code of the receiving machine at the
beginning and end of an uninterrupted transmission.
14. General Provisions
14.1 Assignment. This Agreement shall not be assigned by either party
without the prior written consent of the other party, except (a) to
an Affiliated Company, or (b) to a third party purchasing
substantially all of the assets of such party or its Affiliated
Company which shall have been an assignee of substantially all of
the assets of the business to which this Agreement relates.
14.2 Entire Agreement, Amendment and Waiver. This Agreement (including
any schedules attached) contains the entire understanding of the
parties with respect to the subject matter hereof. This Agreement
may be amended, modified or altered only by an instrument in writing
duly executed by the parties hereto. The waiver of a breach
hereunder may be effected only by a writing signed by the waiving
party and shall not constitute a waiver of any other breach.
14.3 Severability. If any provision of this Agreement is or becomes or is
deemed invalid, illegal, or unenforceable in any jurisdiction, (a)
such provision will be deemed amended to conform to applicable laws
of such jurisdiction so as to be valid and enforceable or, if it
cannot be so amended without materially altering the intention of
the parties, it will be stricken; (b) the validity, legality and
enforceability of such provision will not in any way be affected or
impaired thereby in any other jurisdiction; and (c) the remainder of
this Agreement will remain in full force and effect.
14.4 Governing Law. This Agreement shall be governed by, construed and
interpreted in accordance with the laws of the State of New York,
excluding any choice of law rules which may direct the application
of the laws of any other jurisdiction.
14.5 Retained Rights. Nothing in this Agreement shall limit in any
respect the right of either party to conduct research and
development and to market products using the Intellectual Property
other than as expressly provided herein.
14.6 Counterparts. This Agreement may be executed in two or more
counterparts, each of which shall be an original, but all of which
together shall constitute one and the same instrument.
14.7 Relationship of Parties. Nothing contained in this Agreement shall
be construed as creating a corporation, partnership, association,
joint stock company, business
13
trust, joint venture between the parties hereto nor as creating any
fiduciary relationship of any nature between the parties.
14.8 Right of First Collaboration. Subject to any existing rights that
Licensor may have to the contrary, if Licensor decides to use the
Intellectual Property for any application of Chlorothalanil or other
products produced or sold by Licensor or an Affiliated Company of
Licensor and by Licensee or an Affiliated Company of Licensee, it
shall first ask Licensee if Licensee wishes to collaborate with
Licensor for such application. If the Licensee chooses to
collaborate with Licensor for such application, Licensee will notify
Licensor of such within a reasonable amount of time not in any event
exceeding thirty (30) days after notice thereof from Licensor and
the parties will negotiate in good faith the terms of such
collaboration. If Licensee elects not to collaborate on developments
with respect to Chlorothalanil, Licensor shall be free to use the
Intellectual Property for the application of Chlorothalanil as first
described by Licensor to Licensee.
[Remainder of Page Intentionally Left Blank]
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement the
day and year first hereinbefore mentioned.
PHIBRO-TECH, INC.
By: /s/ W. Xxxxxx Xxxxxx
-----------------------
NUFARM, INC.
By: /s/ Xxxxx Xxxxxx
-----------------------
15
Schedule 1.2
Schedule 8.3
Foreign Patent Application Filings
None.
