EXCLUSIVE PATENT LICENSE AGREEMENT BY AND BETWEEN XXXXX X. XXXXXXXX,
XX. AND MAXXON, INC.
This Agreement ("Agreement"), is executed effective April 30, 1997 for the
exclusive license of Patent No. 5,125,898 dated June 30, 1992 regarding the
Disposable Syringe with Automatic Needle Retraction by and between Xxxxx X.
Xxxxxxxx, Xx., an individual and co-inventor and sole assignee of the
aforementioned Patent ("Licensor"), and Maxxon, Inc., an Oklahoma corporation
("Licensee").
WHEREAS, Licensor desires to grant to Licensee and Licensee desires to
acquire from Licensor the exclusive world-wide license to perfect, produce and
market the safety syringe referenced in Paragraph One, below.
NOW, THEREFORE, in consideration of the mutual promises herein contained,
the parties hereto agree as follows:
1. License. Licensor grants to Licensee exclusive world-wide license to
perfect, produce and market the safety syringe for the following Patent
("Patent"), copies of which are attached hereto, and Licensee agrees to acquire
the same upon the terms and conditions set forth herein:
United States Patent
Patent Number: 5,125,898
Date of Patent: June 30, 1992
Re: DISPOSABLE SYRINGE WITH AUTOMATIC NEEDLE RETRACTION
2. Price. Licensee shall pay Licensor for the exclusive license rights in
the Patent for the sum of One Hundred Thousand Dollars ($100,000.00), and
according to the terms of a $90,000 Promissory Note attached hereto as Exhibit
A.
3. Royalty. Licensee agrees to pay Licensor a royalty hereunder, equal to
three percent (3%) of gross receipts in legal tender in immediately available
funds actually received by Licensee from the sale of products using the Patent.
Gross receipts excludes taxes, transportation, insurance, shipping and handling,
packaging, returns, replacements for defective or damaged goods, all discounts,
and all funds received from sales which are contested or subject to claims. All
royalty payments shall be made monthly by corporate check dated and mailed on or
before the fifteenth (15th) day of each month after receipt of gross receipt
funds by Licensee.
Licensee shall keep accurate sales documents, records, and reports to
insure proper accounting and payment to Licensor of all royalties which may
become due pursuant to the terms of this Agreement. Licensee shall make a
monthly sales report to Licensor dated and mailed no later than the fifteenth
(15) of the month following receipt by Licensor of such gross receipt funds from
sales of products using the Patent. Licensor shall have the right to inspect
Licensee's records solely related to the calculation of royalty payments due
hereunder no more than once each calendar year to insure proper payment of
royalties. Licensor agrees to keep confidential all information which is
confidential, or proprietary or competitively sensitive certain in records of
Licensee.
This royalty provision shall survive any acquisition of Licensee, change of
control of Licensee or any other event where Licensee is not directly managing
the production and sale of the products using the Patent.
4. Term of Royalty. The term of the Royalty shall be coincident with the
life of the U.S. Patent and all extensions and additions therein, or if by the
third anniversary of this agreement, the cumulative sales have not been $100,000
or if in any subsequent year the total sales for that year do not exceed
$100,000, this agreement will terminate and become null and void.
5. Representations and Warranties.
(a) Licensor is the owner of all rights to the Patent, with the full right,
power and authority to exclusively license such Patent to the Licensee
hereunder; no other person or persons whatsoever has any claim, right, title,
interest or lien in, to, or on said Patent; and no other person or entity has
the right to use the Patent for any purpose whatsoever.
(b) No litigation, actions or proceedings, legal, equitable,
administrative, through arbitration or otherwise, are pending or threatened
which may affect the Patent, or the consummation of this transaction.
(c) Licensor has all requisite power and authority to enter into this
Agreement and to perform his obligations thereunder.
6. No Operating Assurances. Licensor and Licensee are aware that the Patent
will require additional engineering and development before products can be
manufactured and sold. Licensor makes no warranties or representations
concerning the operating performances to be achieved by Licensee.
7. Costs and Expenses. Licensee shall be responsible for all costs incurred
in connection with the development, patent maintenance fees, alterations or new
patents, marketing and distribution of the products made using or incorporating
the Patent.
8. Improvements. All improvements, amendments, modifications and
alterations in the Patent, or new patents, shall be the sole property of the
Licensor.
9. Indemnification by Licensee. Licensee agrees to indemnify and hold
Licensor and his successors and assigns harmless from any and all claims,
losses, damages, injuries and liabilities, including legal fees and expenses,
arising from or on account of Licensee's breach of its representations,
warranties and covenants thereunder, including without limitation, the failure
to pay royalties payable hereunder.
10. Nature of Relationship. Licensor and Licensee agree that (1) the other
party is not an agent, employee, partner, joint venturer, or other
representative of the other party for any purpose whatsoever; (2) each is
separate from the other; and (3) no such person shall obligate the other party
in any way to perform any duty or to be responsible for any obligation or
liability whatsoever, apart from the obligations arising under this agreement.
Neither party nor its respective officers, directors, employees, salesmen,
agents or other representatives shall claim that it is an agent, employee,
partner or other representative of the other party; nor shall any of them be
subject to the active or implied control of the other party for any reason.
11. Limitation of Liability. Except as set forth in the paragraph 9, the
parties shall not be liable for any loss, damage, injury or other claim of any
kind, character or description, whether sole, concurrent, active, passive,
comparative, strict, contractual or vicarious, and whether absolute or
contingent, and shall not be liable for any reason for any punitive, special or
other similar damages or alleged damages for lost business, lost goodwill, lost
opportunities or otherwise.
12. Final Agreement. This Agreement constitutes the entire agreement between
the parties and terminates and supersedes all prior understandings or agreements
on the subject matter hereof. The terms and conditions of this Agreement shall
inure to the benefit of and be binding upon the respective heirs, legal
representatives, successor and permitted assigns of the parties hereto. Nothing
in this Agreement, expressed or implied, confers any rights or remedies upon any
party other than the parties hereto and their respective heirs, legal
representatives and assigns. This Agreement may be modified only by a further
writing that is duly executed by both parties.
13. Severability. If any term of this Agreement is held by a court of
competent jurisdiction to be invalid or unenforceable, then this Agreement,
including all of the remaining terms, will remain in full force and effect as if
such invalid or unenforceable term had never been included.
14. Headings. Headings used in this Agreement are provided for convenience
only and shall not be used to construe meaning or intent.
15. Governing Law. This Agreement shall be construed and enforced in
accordance with the laws of the State of Oklahoma.
16. Force Majeure. The obligations of the parties hereto (except for the
obligation to pay money) shall be suspended to the extent and for the period
that performance is prevented by any cause, whether foreseeable or enforceable,
beyond its reasonable control. Any party affected by a force majeure event shall
promptly give notice thereof to the other party and shall exercise its
reasonable good faith efforts and diligence to eliminate or remedy the force
majeure event and to return to normal operations as quickly as possible and
shall give the other party prompt notice when that has been accomplished.
17. Arbitration. In the event a dispute arises with respect to the
interpretation or effect of this Agreement or concerning the rights or
obligations of the parties hereto, the parties agree to negotiate in good faith
with reasonable diligence in an effort to resolve the dispute in a mutually
acceptable manner. Failing to reach a resolution thereof, either party shall
have the right to submit the dispute to be settled by binding arbitration under
the rules and conciliations of the American Arbitration Association. The parties
agree that all arbitrations shall be conducted in Tulsa, Oklahoma, unless the
parties mutually agree to the contrary, and shall be conducted in English. The
costs of arbitration shall be borne by the party against whom the reward is
rendered or, if in the interest of fairness, as allocated in accordance with the
judgment of the arbitrators. All awards in arbitration made in good faith and
not infected with fraud or other misconduct shall be final and binding.
18. Miscellaneous.
(a) Good Faith Cooperation. Each party hereto agrees to keep the other party
informed relating to the rights, duties and obligations of the parties hereunder
and render good faith cooperation to the other party in order to consummate the
transactions contemplated hereby.
Licensor and Licensee agree to execute and deliver all requisite forms of
assignment to enable Licensee to file this assignment with the U.S. Patent
Office.
(b) Binding Effect. This Agreement shall be binding upon and inure to the
benefit of the parties hereto and their respective successors and assigns.
(c) Amendments. This Agreement may be amended only by a written document
signed by the parties and stating that the document is intended to amend this
Agreement.
(d) Notices. Any notice required by this Agreement or given in connection
with it, shall be in writing and shall be given to the appropriate party by
personal delivery or by certified mail, postage prepaid, or recognized overnight
delivery services.
If to Licensor:
Xxxxx X. Xxxxxxxx, Xx.
X.X. Xxxxxx 00000
Xxxxxxx, XX 00000
Phone: (000) 000-0000
Fax: (000) 000-0000
If to Licensee:
Maxxon, Inc.
0000 Xxxxx Xxxx Xxxxxx, Xxxxx 000
Xxxxx, XX 00000
Phone: (000) 000-0000
Fax: (000) 000-0000
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
executed effective as of the 30th day of April, 1997.
Maxxon, Inc.
By:___________________________ __________________________
Xxxxx X. Xxxxxxxx, Xx., an individual Xxxxxxx X. Xxxxx, Chairman
