EXHIBIT 10.16
Date 14 March, 1996
XX XXXXXXX XXXXXXX
- and -
GEMINI INTERNATIONAL HOLDINGS LIMITED
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LICENCE AGREEMENT
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XXXXXX, XXXXXX & XXXXXXXX
Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
INDEX
Clause Page
1 DEFINITIONS 1
2 GRANT OF RIGHTS 3
3 PAYMENTS
4 ASSIGNMENT OF FUTURE WORKS 4
5 ADDITIONAL RESEARCH CONTRACTS 4
6 WARRANTIES AND UNDERTAKINGS 4
7 TERMINATION 5
8 EFFECT OF TERMINATION 5
9 POST TERMINATION COVENANTS 6
10 NOTICES 7
11 GENERAL PROVISIONS 7
12 GOVERNING LAW AND JURISDICTION 8
SCHEDULE
THE WORKS 9
THIS LICENCE AGREEMENT is made on 14 March 1996
BETWEEN:
(1) XX XXXXXXX XXXXXXX of St. Xxxxxx' Hospital, Lambeth Palace Road, London
SEI 7EH (the "Licensor") and
(2) GEMINI INTERNATIONAL HOLDINGS LIMITED, incorporated in the British Virgin
Islands with company number 160246 whose registered office is a Xxxxxxxxx
Xxxxxxxx, XX Xxx 00, Xxxx Xxxx, Xxxxxxx, Xxxxxxx Xxxxxx Xxxxxxx (the
"Licensee")
WHEREAS:
(A) Save as disclosed in writing, the Licensor is the owner with full title
guarantee of the copyright and all other intellectual property rights of a
like nature conferred under the laws of the United Kingdom (and all other
countries in the world) in the Works as defined in Clause 1 of this
Agreement.
(B) The Licensor wishes to grant to the Licensee and the Licensee wishes to
take from the Licensor a licence to use the Works in accordance with the
terms and conditions of this Agreement.
NOW IT IS HEREBY AGREED
1 DEFINITIONS
1.1 The expressions used in this Agreement shall have the following meanings:
"Agreement" means this agreement and its attached Schedule, together with
any letters or other agreements subsequently signed by both parties for the
purpose of amending or modifying this agreement in accordance with its
provisions for so doing;
"Future Works" shall mean all data, studies, reports and other information
or inventions whether patentable or not produced or obtained by the
Licensor either individually or in conjunction with the Researchers or
derived howsoever therefrom following the date of this Agreement in
relation to or in connection with:
(i) the Works; or
(ii) research carried out by the Licensor in connection with additional
sets of twins
in each case, including but not limited to all abstracts, articles and
other written materials relating to such research together with all
modifications, improvements and amendments thereto;
"Licence" shall mean the licence granted by the Licensor to the Licensee
under this Agreement in respect of the Works;
"Licensee's Group" shall mean any company (i) which is a subsidiary company
of the Licensee; or (ii) which is a holding company of the Licensee or any
subsidiary of such
holding company; or (iii) any company over which the Licensee has control
within the meaning of Section 534 Income and Corporation Taxes Xxx 0000;
and "holding company" and "subsidiary company" shall have the meanings
given to them by Xxxxxxx 000 Xxxxxxxxx Xxx 0000;
"Net Sales" means the gross revenue of the Licensee or any member of the
Licensee's Group from licencing, distribution or sales of Products to third
parties, excluding any non-commercial sales made in the course of
conducting regulatory trials, less (i) actual discounts and/or quantity
discounts allowed, (ii) actual credited allowances to customers for
spoiled, damaged, outdated or returned goods, (iii) charges for freight
handling, transportation insurance and transportation actually paid by the
relevant member of the Licensee's Group or permitted sub-licenses, (iv)
commissions paid to any party outside the Licensee's Group, and (v) sales
and use taxes and other similar taxes incurred, as determined in accordance
with generally accepted accounting principles;
"Products" means any products or services derived from the Works of Future
Works;
"Researchers" shall mean Dr. Xxxx Xxxxx and Xx. Xxxxx Xxxxxxxx and any
other scientist engaged by a member of the Licencee's Group from time to
time to develop the Works or Future Works;
"Royalty" shall mean the royalty to be paid by the Licensee to the Licensor
more particularly set out in Clause 3;
*
"Works" shall mean all data, studies, reports and other information
produced or obtained by the Licensor in relation to or in connection with
all the research that has ever been carried out by the Licensor (as more
particularly identified by headings only, in Schedule 1) in connection with
the sets of twins more particularly identified in Schedule 1 (by allocated
study number, initials of name and date of birth) including, but not
limited to, all abstracts, articles and other written materials relating to
all such research save for the *
1.2 Words denoting the singular shall include the plural and vice versa; words
denoting any gender shall include all genders; words denoting persons shall
include corporations and vice versa.
1.3 Reference to any statute or statutory provision includes a reference to
that statute or statutory provision as from time to time amended, extended or
re-enacted.
1.4 The headings in this Agreement are inserted for convenience only and shall
not affect the construction hereof.
2
Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
1.5 Unless otherwise stated a reference to a Clause or a Schedule is a
reference to respectively a clause in or a schedule to this Agreement.
2 GRANT OF RIGHTS
2.1 The Licensor hereby grants to the Licensee an exclusive worldwide license
to use, publish, comment on, sub-licence, or otherwise deal in the Works on the
terms set out in this Agreement. The Licence shall continue until terminated in
accordance with Clause 7.
2.2 The Licensor and Licensee understand and agree that the Licensor may use
the Works and the Future Works for the purpose of developing Future Works and
for any other non-commercial purpose incidental to the performance of the
duties of the Licensor in his capacity as a medical practitioner or scientist,
but not otherwise.
2.3 The Licensor may publish the Works and/or the Future Works only with the
prior written consent of the Licensee (such consent not to be unreasonably
withheld) provided that, in each instance, (i) the Licensor first provides the
Licensee with full copies of the Works and/or Future Works desired to be
published and, (ii) if the consent of the Licensee is not given within 4 weeks
of the date on which it is requested by the Licensor (the "Request Date"), the
Licensor may publish the Works and/or the Future Works in question without the
consent of the Licensee at any time following the expiry of the 6 month period
commencing on the Request Date.
2.4 Forthwith upon execution of this Agreement the Licensor shall hold the
Works on behalf of the Licensee pursuant to the terms of this Licence and shall
supply the Licensee with such copies of the Works which practically may be
reproduced promptly at the reasonable request of the Licensee made from time to
time.
2.5 Following the written request of the Licensee, the Licensor and the
Licensee agree that the * shall be deemed to be included in the definition of
"Works" from the date of the receipt of such notice, subject to the Licensor
first obtaining all consents from the * deemed necessary by the parties. The
Licensor and the Licensee shall each use their respective best endeavors to
obtain such consents.
3 PAYMENTS
3.1 *
3.2 *
3.3 *
3
Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
4 ASSIGNMENT OF FUTURE WORKS
4.1 The Licensor hereby assigns all his property, right, interest and title to
the Future Works to the Licensee (or, subject to clause 11.2, such other company
as the Licensee may notify in writing to the Licensor).
4.2 The Licensor hereby undertakes to execute all such documents and do such
acts as may reasonably be requested by, and at the cost of, the Licensee for
vesting the full property, right, interest and title in the Future Works in the
Licensee (or its nominee) including but not limited to all such documents and
acts which maybe necessary for the Licensee to obtain patent protection for the
Future Works.
4.3 The Licensor acknowledges that all rights in the Future Works, created by
the Licensor including but not limited to the right to obtain patent protection
for the Future Works, are hereby vested in the Licensee. To the extent that any
patent or patent application in respect of the Future Works relies in part or in
whole on any part of the Works the Licensor hereby undertakes and warrants that
he will not claim or assert the existence of a separate patentable interest in
the Works.
5 ADDITIONAL RESEARCH CONTRACTS
5.1 The Licensor shall not knowingly enter into any research contracts with
third parties or undertake any research work sponsored by third parties after
the date of this Agreement which compete or conflict with the interests of the
Licensee.
5.2 In the event that the Licensor enters into a research contract with a third
party or undertakes any research work sponsored by a third party after the date
of this Agreement which relates or may relate to the Works or Future Works, the
Licensor shall not license or assign any of his rights arising thereunder
without the prior written consent of the Licensee.
6 WARRANTIES AND UNDERTAKINGS
6.1 Save as disclosed in writing, the Licensor undertakes, warrants and
represents to the Licensee that:-
(a) the Works are the sole and original creation of the Licensor and that
he is sole owner of all copyright and all other rights in the Works;
(b) the Future Works shall be the sole and original creation of the
Licensor and that he is the sole owner of all copyright and all other
rights in the Future Works except that where the Future Works have
been created in conjunction with the Researchers the Licensor
undertakes, warrants and represents that to the extent that the Future
Works are created by the Licensor, they shall be the original creation
of the Licensor and that the Licensor shall be the exclusive owner of
the copyright and all other rights in such Future Works;
(c) he is a British subject;
4
(d) he has not granted a license of the Works and/or the Future Works to
any third party and that he has not assigned all or any part of the
same to a third party;
(e) use of the Works and/or the Future Works will not infringe the rights
of third parties;
(f) no third party has any right, title or interest in the Works and/or
the Future Works or any part of them; and
(g) save as expressly permitted hereunder, he shall not grant a licence of
the Works and/or Future Works to any third party and that he shall not
assign all or any part of the same to a third party.
7 TERMINATION
7.1 This Agreement shall commence on the date of execution of this Agreement
and shall continue unless otherwise terminated in accordance with the provisions
of this Clause 7.
7.2 The Licensee may terminate this Agreement forthwith by sending written
notice to the Licensor if the Licensor commits a material breach of his
obligations under this Agreement and, in the case of a breach capable of
remedy, such breach is not remedied with 20 days of the Licensor being
specifically required to do so in writing.
7.3 The Licensor may terminate this Agreement forthwith by sending written
notice to the Licensee if the Licensee commits a material breach of his
obligation under this Agreement and, in the case of a breach capable of
remedy, such breach is not remedied with 20 days of the Licensee being
specifically required to do so in writing.
8 EFFECT OF TERMINATION
8.1 Any termination of this Agreement shall be without prejudice to any rights
or liabilities of the parties which have accrued on or before the date of
termination.
8.2 In the event that this Agreement is terminated pursuant to Clause 7.2, the
provisions of Clause 9 shall survive notwithstanding the termination of this
Agreement.
8.3 In the event that this Agreement is terminated pursuant to Clause 7.3:-
(a) the provisions of Clause 9 shall not survive the termination of this
Agreement; and
(b) the License hereby granted shall cease and all property, right and
title of the Licensee to the Works shall vest in the Licensor.
For the avoidance of doubt, the rights of the Licensee contained in
Clause 4 shall not be effected by termination of this Agreement pursuant to
Clause 7.3.
5
9 POST TERMINATION COVENANTS
9.1 Save as expressly permitted hereunder, the Licensor shall not at any time
after the date of this Agreement disclose or make available to any person for
use for any purpose of himself or any other person, any information in relation
to the Works or Future Works.
9.2 Clause 9.1 does not apply to any such information which is not, or could
not reasonably be expected to be, confidential or which is already in the public
domain other than following a breach of this Clause 9, or a bona fide disclosure
of such information:
(a) to a court, governmental, official or regulatory authority or to
inspectors or others authorised by such an authority or by or under
any legislation to carry out any inquiries or investigations; or
(b) to the Researchers or any employees or professional advisers of the
Licensor if it appears necessary or reasonable for such persons to
obtain the same for the purpose of discharging their responsibilities;
or
(c) in connection with any proceedings arising out of or in connection
with this Agreement,
provided always that the Licensor shall use his reasonable endeavours to procure
that any such information so disclosed is kept confidential by the person to
whom it is disclosed.
9.3 The Licensor shall not, during the period of 18 months after the date of
termination of this Agreement (the "Termination Date"), in any way, whether
directly or indirectly, be concerned or take part in the carrying on of any
business in the British Virgin Islands or Australia or the United Kingdom or the
United States of America which can reasonably be regarded as being or likely to
be in direct competition with any trade or business involving the use or
exploitation of the Works and/or the Future Works which:
(a) any member of the Licensee's Group carries on at that date or at the
Termination Date and still carries on at the relevant time; or
(b) the Licensor knows that a member of the Licensee's Group intends to
commence and, if commenced after the Termination Date, the relevant
member of the Licensee's Group still carries on at the relevant time.
9.4 The foregoing restrictions do not prevent the Licensor from carrying on a
business or doing anything else in accordance with the Licensee's prior written
consent not to be unreasonably withheld or delayed.
9.5 The parties agree that each of the foregoing restrictions operate as
separate restrictions and, taken separately and together, are no greater than is
required for the protection of the goodwill of the business of the licensee and
members of the Licensee's Group. In the event that any of the said restrictions
shall be held void, but would be valid if part of the wording thereof were
deleted, such restrictions shall apply with such deletion as may be necessary to
make it valid and effective.
6
10 NOTICES
10.1 Any notice or other document to be given under this Agreement shall be in
writing and shall be deemed fully given:
(a) if left at or sent by (i) first class post or airmail or (ii) telex or
(iii) facsimile transmission or other means of telecommunication in
permanent writing form to the address shown on the face hereof or any
other such address and/or number as either party may by notice to the
other expressly substitute therefor; and
(b) when in the ordinary course of the means of transmission it would
first be received by the addressee in normal business hours.
In proving the giving of a notice it shall be sufficient to prove that the
notice was left or that the envelope containing such notice was properly
addressed and dispatched or, as the case may be, electronically acknowledged.
11 GENERAL PROVISIONS
11.1 Partnership
Nothing in this Agreement shall create or be deemed to create a partnership
or the relationship of principal and agent between the parties.
11.2 Assignment
Neither party shall assign, sub-license, encumber or dispose of any of its
rights and obligations under this Agreement without the prior written consent of
the other party save, that (i) the Licensee may assign, sub-license, encumber or
otherwise dispose of any of its rights and obligations under this Agreement to
any member of the Licensee's Group provided that such disposal shall cease to
have effect if such member ceases to remain a member of the Licensee's Group and
that the Licensee has given prior written notice thereof to the Licensor and
(ii) the Licensor may assign, encumber or otherwise dispose of the benefit
hereof as he shall determine provided that he has given prior written notice
thereof to the Licensee.
11.3 Severability
If any part of this Agreement is found by a court or other competent
authority to be invalid, unlawful or unenforceable then such part shall be
severed from the remainder of this Agreement which shall continue to be valid
and enforceable to the fullest extent permitted by law.
11.4 Waiver
No delay or failure by either party to exercise any of its powers, rights
or remedies under this Agreement shall operate as a waiver of them, nor shall
any single or partial exercise of any such powers, rights or remedies preclude
any other or further exercise of them. The remedies provided in this Agreement
are cumulative and are not exclusive of any remedies provided by law.
7
11.5 Entire Agreement
(a) This Agreement supersedes any agreements made or existing between the
parties before or simultaneously with this Agreement (all of which
shall be deemed to have been terminated by mutual consent with effect
from the date of this Agreement) and constitutes the entire
understanding between the parties in relation to the subject matter
of this Agreement.
(b) Except as otherwise permitted by this Agreement, no change to its
terms shall be effective unless it is in writing and signed by or on
behalf of both parties.
12 GOVERNING LAW AND JURISDICTION
12.1 This Agreement shall be governed by and interpreted in accordance with
English law and the parties hereby submit to the jurisdiction of the courts and
tribunals of England and Wales.
8
SCHEDULE
THE WORKS
[Redacted]
9
Confidential Treatment Requested and the Redacted
Material has been separately filed with the Commission
IN WITNESS whereof this Agreement has been executed as a deed and delivered by
the Licensor and by the Licensee the day and year first above written,
Signed as a Deed and Delivered by )
GEMINI INTERNATIONAL HOLDINGS LIMITED )
acting by Xxxxxxx Xxxxxxxxxx )
expressly authorized in accordance with [ILLEGIBLE] )
the laws of the British Virgin Islands )
by virtue of a power of attorney granted )
by Gemini International Holdings Limited )
on 29 February 1996 in the presence of: )
Witness Signature: /s/ R.E.
Name: R. EUZIECE
Address: LE XXXXXX, 13-15 [ILLEGIBLE] MOULINS, MONACO
Signed as a Deed and Delivered by /s/ Xxxxxxx Xxxxxxx )
XX XXXXXXX XXXXXXX )
in the presence of: )
Witness Signature: /s/ Xxxxxxxx Brametson
Name: Xxxxxxxx Xxxxxxxxx
Address: 0 Xxxxxxx Xxxxx
Xxxxxxxxx [ILLEGIBLE]
[ILLEGIBLE]
10
27th March 1996
Xx. X.X. Xxxxxxx
The Twin Research Unit
St. Xxxxxx' HospitalLambeth Palace Road
London
England
Dear Xxx,
I refer to the Licence Agreement (the "Licence Agreement") dated 14th March 1996
and made between yourself and Gemini International Holdings Limited ("Gemini").
For the avoidance of doubt, it is agreed that the definition of "Licensee's
Group" is amended to read:
"Licensee's Group" shall mean any company (i) which is a subsidiary company of
the Licensee; or (ii) Genelink Holdings Limited ("Genelink") or any subsidiary
of Genelink until, in either instances, the Licensee ceases to be a subsidiary
of Genelink; or (iii) any company over which the Licensee has control within
the meaning of Section 534 Income and Corporation Taxes Xxx 0000; and "holding
company" and "subsidiary company" shall have the meanings given to them by
Section 736 Companies Act 1985."
The Licence Agreement shall be read and construed as incorporating the foregoing
from the date hereof.
Please signify your acceptance of and agreement to the foregoing by signing and
returning this letter to you.
Yours sincerely,
/s/ Xxxxxxx Xxxxxxxxxx
Xxxxxxx Xxxxxxxxxx
I hereby accept and agree to the foregoing.
/s/ X.X. Xxxxxxx
X.X. Xxxxxxx
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X.X.X.X. 000 X 00000 - X.X.X. 94 P 05641
"La Xxxxxx" 00-00 xxxxxxxxx xxx Xxxxxxx, XX 00000 Xxxxxx
Tel:x000 00 00 00 00 Fax: x000 00 00 00 00
Email: xxxxxx@xxxxxx.xx
