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Exhibit 10
LICENSE AGREEMENT
AGREEMENT (this "Agreement") made as of the 5th day of January, 1998 by
and among Regent Court Technologies ("Licensor"), a general partnership of which
Xxxxxx X. Xxxxxxxx ("Xxxxxxxx"), of Manakin-Sabot, Virginia, and Xxxxxxx
X'Xxxxxxx, Xx., M.D. ("X'Xxxxxxx"), of Chesterfield, Missouri, are partners,
Xxxxxxxx, individually, X'Xxxxxxx individually, and Star Tobacco and
Pharmaceuticals, Inc., a Virginia corporation ("Licensee").
WHEREAS, Licensor is the assignee of Xxxxxxxx of certain intellectual
property rights, including without limitation United States patent applications
and foreign patent filings relating to methods to cure tobacco so as to
eliminate or reduce the amount of tobacco-specific nitrosamines in cured
tobacco, and products containing such specially-cured tobacco;
WHEREAS, Licensee is desirous of acquiring an exclusive license with
respect to certain of said products; and
WHEREAS, Licensor, Xxxxxxxx and X'Xxxxxxx are willing to grant said
license upon the terms and conditions hereinafter recited;
NOW, THEREFORE, in consideration of the mutual covenants hereinafter
set forth, and for other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, the parties hereto agree as
follows:
1. DEFINITIONS.
1.1 "Patent Rights," as used in this Agreement, shall mean (i)
all claims of patent applications and issued patents which are now owned by
Licensor in the United States and in foreign countries, or to which Licensor has
rights, and which read on TSNA-Free Tobacco or which read on the Know-How; (ii)
all claims of such patent applications and issued patents which may hereafter be
filed or issued, or of which Licensor or Xxxxxxxx or X'Xxxxxxx may hereafter
become owner, or to which any of them may hereafter acquire rights during the
term of this Agreement, and which read on TSNA-Free Tobacco or which read on the
Know-How; (iii) any inventions, conceived or reduced to practice before the date
of this Agreement or during the term of this Agreement, and thereafter made the
subject of a patent application, relating to the production, treatment or curing
of tobacco, or a method of manufacturing a product containing tobacco, or of
extracting one or more substances from tobacco for the purpose of incorporating
such substance or substances in a product or products, and which Licensor,
Xxxxxxxx or X'Xxxxxxx may hereafter own or acquire rights to.
1.2 "Know-How," as used in this Agreement shall mean all
information, including without limitation trade secrets, whether or not
patentable, relating to, used in, or useful in connection with, TSNA- Free
Tobacco, or any methods or devices which are claimed to result in and be useful
in connection with tobacco or any product containing tobacco that is less
harmful to humans, or for which therapeutic claims are made, whether any such
information is now in the possession of Licensor, Xxxxxxxx or X'Xxxxxxx, or
developed or acquired by any of them during the term of this Agreement.
1.3 "TSNA-Free Tobacco," shall mean tobacco in which the
presence of one or more tobacco-specific nitrosamines has been eliminated to
undetectable levels or been reduced to insignificant (for human use) levels or
been prevented from forming to either of such levels. "TSNA-Free Tobacco" shall
also refer to any method or device used to produce TSNA-Free Tobacco.
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1.4 "Product" shall mean any article, composition, apparatus,
substance, chemical, material, method or services which is made, used,
distributed or sold which: (i) is covered in whole or in part by one or more
pending or unexpired claims contained in any patent included in the Patent
Rights; (ii) is manufactured using a method or process which is covered in whole
or in part by one or more pending or unexpired claims contained in any patent
included in the Patent Rights and/or which utilizes any of the Know-How; or
(iii) the use of which is covered in whole or in part by one or more pending or
unexpired claims contained in any patent included in the Patent Rights. For
purposes of this definition, a Product is covered by a pending or unexpired
claim of a patent if in the course of manufacture, use, distribution or sale, it
would, in the absence of this Agreement, infringe one or more claims of a patent
which has not been held invalid by a court from which no appeal can be taken.
1.5 "License," shall mean the license granted in Section 2
hereof.
1.6 "FDA" shall mean the United States Food and Drug
Administration.
1.7 "Licensor Affiliate," shall mean any entity controlled by
Xxxxxxxx and/or X'Xxxxxxx.
1.8 "Royalties" shall mean the royalties payable by Licensee
to Licensor as set forth in Section 3.1 of this Agreement.
1.9 "Affiliated Sublicensee" shall mean an entity which
Licensee owns or controls or which owns or controls Licensee or which is under
the common ownership or control of another Affiliated Sublicensee.
1.10 "Royalty Income" shall mean all royalties, license fees
and other revenue howsoever characterized earned by Licensee and any Affiliated
Sublicensee from any third party other than Licensee or any Affiliated
Sublicensee by reason of or pursuant to a sublicense, or rights in the nature of
a sublicense, granted under the License or otherwise.
2. GRANT OF LICENSE.
Subject to the terms and conditions of this Agreement,
Licensor hereby grants and agrees to grant to Licensee an exclusive and
irrevocable license, with the right to grant sublicenses as provided in this
Agreement, under the Patent Rights and under the Know-How, to make, have made,
use, sell or otherwise dispose of, or deal in, any Product anywhere in the
United States and its possessions. All rights under the Patent Rights and
Know-How to make, have made, use, sell or otherwise dispose of or deal in, any
Product anywhere outside of the United States and its possessions are expressly
reserved to the Licensor.
3. ROYALTIES.
3.1 In consideration of the grant of License hereunder,
Licensee agrees to pay to Licensor (a) a royalty of two percent (2%) on the Net
Sales Price on the sale of Products, less any Deductions, by Licensee and any
Affiliated Sublicensee (the "Royalties"), and (b) a royalty of six percent (6%)
on the Royalty Income, less any Deductions earned by Licensee and any Affiliated
Sublicensee. As used herein, "Deductions" shall refer to all expenses accruable
under generally accepted accounting practices for (i) the cost of applying for,
obtaining, maintaining, enforcing and defending any Patents Rights, (ii)
research and development costs related to any Product or any potential Product,
or any improvement thereto, or any technology which would be encompassed within
the definition of Patent Rights or Know-How. Only those Deductions accruable
from and after January 1, 1998, shall be deducted from the Net Sales Price in
order to determine the amount of Royalties earned for that period.
3.2 All Royalties shall be paid by Licensee to Licensor on a
quarterly basis within thirty (30) days after the end of each calendar quarter
in which such Royalties and Licensing Payments are accrued. Each such payment
shall be accompanied by an accounting statement which shall include:
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(i) the quantity and classification (e.g.,
tobacco, cigarettes, snuff, chewing
tobacco, or cigars) of Products sold;
(ii) the aggregate Net Sales Price of each
classification of Products sold and the
aggregate Net Sales Price of all Products
sold;
(iii) the amount of Royalty Income earned, broken
down by identity of sublicensee and a
description of the transaction by which the
Royalty Income has been earned, including,
if applicable, a copy of any royalty report
or similar report received by Licensee or
any Affiliated Sublicensee;
(iv) the amount and classification (i.e., whether
patent-related expense or research and
development expense) of Deductions, and the
aggregate amount of all Deductions; and
(v) the total of all Royalties payable to Licensor.
3.3 Licensee and all Affiliated Sublicensees shall keep proper
books of account showing sales of Products. Licensor's designated auditing firm
shall have access to the books and records of Licensee and all Affiliated
Sublicensee at all reasonable times to independently determine the amount of
Royalties payable hereunder, but for no other purpose. Under no circumstances
shall Licensor require such an examination more often than once a calendar year.
All information obtained by Licensor and its auditing firm shall be kept
strictly confidential by Licensor and its auditing firm.
3.4 "Net Sales Price" shall mean the gross sales price of a
Product, less any rebates actually paid, discounts and allowances actually
taken, and returns to the extent credit is given or paid. There shall be no
deduction from Net Sales Price of any federal excise or sales taxes payable on
account of the sale of Products or otherwise, including without limitation
tobacco product excise taxes.
4. RETENTION OF RIGHTS.
Notwithstanding the exclusive license granted in Section 2,
and in addition to the rights reserved to Licensor in Section 2 Licensor will
have the absolute, nontransferable right to use the technology covered by the
Patent Rights and Know-How and all improvements thereof, for conducting
research.
5. PATENT PROSECUTION.
5.1 Licensee shall diligently prosecute at Licensee's
discretion and at Licensee's expense all Untied States patent applications
included within the Patent Rights and shall otherwise at its discretion take
such action as shall perfect or effect its title to the Patent Rights. Licensee
shall provide Licensor with copies of all U.S. patent applications included in
Patent Rights, and, generally, shall provide to Licensor such other information
regarding the Patent Rights as Licensor may request from time to time. All
patent prosecution information supplied by Licensee to Licensor hereunder shall
be subject to the confidentiality provisions of this Agreement.
5.2 If Licensor so elects, Licensee shall also diligently
prosecute, as instructed by and as agent for Licensor, the Patent Rights in such
foreign jurisdictions as Licensor may designate from time to time. Licensor
shall reimburse Licensee for all expenses incurred in the prosecution of the
Patent Rights in such foreign jurisdictions and as instructed or authorized by
Licensor and Licensee shall have the right to offset such expenses actually
incurred against Royalties payable. Licensee acknowledges that, in performing
the services required of it under this Section 5.2, no license of Patent Rights
in foreign jurisdictions is being granted to it.
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6. PATENT INFRINGEMENT.
6.1 Licensee shall promptly notify Licensor of all claims,
allegations and notifications of infringement of third party patents. Except for
the placing in escrow of a portion of royalties as referred to hereinafter,
Licensor shall have no obligation or liability in the event that legal action is
brought against Licensee for patent infringement. Such obligation and liability
shall be borne by Licensee. Licensee may choose legal counsel and defend the
patent infringement lawsuit. During such lawsuit, Licensee may place all
Royalties in an interest-bearing escrow account. The escrow account shall be
established in a bank mutually acceptable to both parties under escrow
instructions insulating the funds from claims of any creditor. Upon termination
of the action, one-half (1/2) of any judgment amount, reasonable attorneys' fees
and costs, may be paid from this escrow account. In addition, should the
settlement of any such patent infringement lawsuit involve payment of royalties
by Licensee to a third party for the continued right to manufacture, use, and
sell a Product, then funds in the escrow account and royalties payable to
Licensor may be applied against up to one-half (1/2) of such royalties to a
third party. Any funds thereafter remaining in the escrow shall be paid to
Licensor. The above shall constitute Licensor's sole liability and
responsibility in the event of such action. During the patent infringement
litigation both parties shall keep each other informed in writing of significant
developments in the lawsuit.
6.2 Licensee shall promptly notify Licensor of any potential
infringement of any of the Patent Rights. In the event that a third party
infringes on any of the Patent Rights, Licensee shall have the right but not an
obligation to bring legal action to enforce any such patent. If Licensee
exercises such right, Licensee shall select legal counsel and pay all legal fees
and costs of prosection of such action. In the event that Licensee shall choose
not to take such action, Licensor shall have the right, at its option and at its
own expense, to prosecute any action to enjoin such infringement or to prosecute
any claim for damages. The party prosecuting any such action shall be entitled
to retain any funds received as a result of settlement or judgment of such
action. The parties may also agree to jointly pursue infringers. After deduction
and payment to the parties of their respective costs and fees (including without
limitation reasonable attorneys' fees) incurred in prosecuting any such actions,
the net funds obtained as a result of settlement or of judgment of any such
jointly prosecuted action shall be divided in the following manner: 25% of all
net funds shall be divided equally by the parties and 75% of all the net funds
shall be divided between the parties in the proportion to the amount of legal
fees and costs incurred by the paries in the prosecution of such actions. If
funds are insufficient to pay all costs and fees then all of the funds shall be
paid to the parties in said proportion.
6.3 During any litigation described in Section 6, both parties
shall keep each other timely informed of any significant development in the
litigation and provide all reasonably requested technical assistance. During any
such controversy, full royalty payment shall continue, except as otherwise
provided herein.
7. SUBLICENSE PERMISSION.
Licensee may sublicense any of the Patent Rights only with the
prior written permission of Licensor, which permission will not be unreasonably
withheld. Notwithstanding the foregoing, no such permission is required with
respect to a sublicense granted to any Affiliated Sublicensee, provided,
however, that any Affiliated Sublicensee shall agree in writing to be jointly
and severally obligated and liable to Licensor for all of the obligations of
Licensee under this Agreement, and that no further right to sublicense may be
granted to an Affiliated Sublicensee.
8. PATENT MARKING.
Licensee, all Affiliated Sublicensees and any other
sublicensee shall use reasonable efforts to place all appropriate patent and
other intellectual property notices, markings and indicia on product and
marketing literature for any Products as needed to protect the patent and other
intellectual property rights of Licensor and right for damages for infringement
thereof.
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9. TERMINATION.
9.1 Upon the breach of or default under this License Agreement
by either party, the non- breaching party may terminate this License Agreement
by forty-five (45) days written notice to the breaching party. Said notice shall
be effective at the end of such period unless during said period breaching party
shall remedy such defect or default. Licensee may also terminate this Agreement
at any time, for any reason, by providing Licensor a thirty (30) days written
notice. No Royalties shall be returnable. This Agreement may also be terminated
immediately by Licensor upon notice to Licensee upon the occurrence of any of
the following: (i) Licensee attempts to use, sublicense, transfer or assign its
rights or obligations under this Agreement in any manner contrary to the terms
of this Agreement or in derogation of Licensor's proprietary rights; or (ii)
Licensee is determined to be insolvent or makes an assignment for the benefit of
creditors, or has a bankruptcy petition filed by or against it, or a receiver or
trustee in bankruptcy or similar officer is appointed to take charge of all or
part of Licensee's property. Upon termination of the Agreement all rights
granted to or provided by each party to the other shall automatically and
irrevocably revert to the granting party.
9.2 Surviving any termination are:
(i) Licensee's obligation to pay Royalties
accrued or accruable.
(ii) Licensee's obligations under Section 3.3 of
this Agreement.
(iii) Any cause of action or claim of Licensee or
Licensor, accrued or to accrue, because of
any breach or default by the other party.
(iv) The provisions of Sections 6, 9.3, 10, 14,
16, 17 and 18.
9.3 Upon termination of this License Agreement, Licensee
agrees to immediately discontinue the manufacture and sale of the Products and
the use of the Patent Rights. Within twenty (20) days after such termination,
Licensee shall provide Licensor with a written inventory of all Products
currently in its stock as of the date of termination (the "Inventory"). Licensee
shall have the right to dispose of such Inventory within four (4) months after
said termination. The disposition of all such Inventory shall be subject to all
of the terms and conditions of this License Agreement. After the four (4) month
sell-off period, Licensee shall destroy or certify their destruction or return
to Licensor all remaining unsold Products, all packaging and marketing
materials, and shall certify their destruction or return to Licensor specifying
the number of each destroyed or returned. All royalty obligations, shall be
accelerated and shall become immediately due and payable. In addition, Licensee
shall immediately deliver to Licensor (i) all materials relating the Patents
together with all copies thereof, and (ii) all market studies or other tests or
studies conducted by Licensee with respect to the Products, all at no cost
whatsoever to Licensor. This Paragraph 9.3 shall not apply if the termination of
this License Agreement arises from the expiration of the term of this Agreement
under Section
10. REMEDIES.
Licensee acknowledges and agrees that any violation of this
License Agreement by Licensee would result in irreparable harm to Licensor.
Accordingly, Licensee consents and agrees that, if Licensee violates any of the
provisions of this License Agreement, Licensor shall be entitled, in addition to
other remedies available to it, to an injunction to be issued by any court of
competent jurisdiction restraining Licensee from committing or continuing any
violation of this License Agreement, without the need for posting any bond or
any other undertaking.
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11. NOTICES, REPORTS AND PAYMENTS.
Any notice, report or payment permitted or required under this
Agreement shall be in writing, and shall be sent or delivered to the receiving
party at the address set forth below or at such address as either party may from
time to time designate in writing.
Licensor: Regent Court Technologies
c/o Xxxxxxx X. X'Xxxxxxx, Xx., M.D.
000 Xxx Xxxxxxxx Xxxx
Xxxxxxxxxxxx, XX 00000
Licensee: Star Tobacco & Pharmaceuticals, Inc.
00 Xxxxx Xxxxxx Xxxxxx
Xxxxxxxxxx, XX 00000
Attn: Chief Executive Officer
12. PARAGRAPH HEADINGS.
Paragraph headings are for the convenience of this Agreement
only and shall not add to or detract from any of the terms or provisions.
13. SEVERABILITY.
If any provision of this Agreement is held invalid under any
law applicable to the parties, Affiliated Sublicensees and other sublicensees
and/or assignees, that provision shall be considered severable and its
invalidity shall not affect the remainder of this Agreement, which shall
continue in full force and effect.
14. CONTROLLING LAW, JURISDICTION AND VENUE.
This Agreement shall be deemed to be executed and to be
performed in the Commonwealth of Virginia, and shall be construed in accordance
with the laws of the Commonwealth of Virginia as to all matters, including but
not limited to matters of validity, constriction, effect and performance. In the
event of any controversy, claim or dispute between the parties hereto arising
out of or relating to this Agreement, such controversy, claim or dispute may be
tried exclusively in the courts of the Commonwealth of Virginia or in the United
States Federal District Court located in, or closest to, Richmond, Virginia, as
either party may elect. Each of the par-ties hereby waives any defense of lack
of in personam jurisdiction, improper venue and forum non conveniens, and agrees
that service of process of such court may be made upon each of them by personal
delivery or by mailing certified or registered mail, return receipt requested,
to the other party at the address provided for in Section 11 hereof. Both
parties hereby submit to the jurisdiction of the court so selected, to the
exclusion of any other courts which may have had jurisdiction apart from this
Section 14.
15. TERM OF THE AGREEMENT.
Except as otherwise terminated pursuant to the other
provisions of this License Agreement, this Agreement shall terminate upon
expiration of the last to expire of the Patent Rights.
16. NEGATION OF WARRANTIES.
16.1 Nothing in this Agreement shall be construed as:
i. a warranty or representation by Licensor as
to the validity or scope of any of the
Patent Rights; or
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ii. a warranty or representation that any
Products made, used, sold or otherwise
disposed of under any license granted in
this Agreement is or will be free from
infringement of patents of third parties; or
iii. an obligation to bring or prosecute actions
or suits against third parties for
infringement; or
iv. conferring the rights to use in advertising,
publicity or otherwise any trademark, trade
name, or names or any contraction,
abbreviation, simulation or adoption
thereof, of Licensor; or
v. any obligation to furnish any know-how not
provided.
16.2 LICENSOR MAKES NO EXPRESS OR IMPLIED WARRANTIES OF
MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE, nor does Licensor represent
that the rights granted hereunder will result in Products that are commercially
successful.
16.3 Licensee further agrees that it will not rely upon
technical information provided by Licensor in developing and manufacturing any
Products hereunder, but will independently test, analyze and evaluate all
Products prior to manufacture and distribution of such Products.
17. INDEMNITY.
17.1 Licensee shall defend, indemnify and hold harmless
Licensor and its partners, employees and agents and Xxxxxxxx and X'Xxxxxxx, and
their respective successors, heirs and assigns (the "Indemnitees"), against all
liabilities, demands, losses, costs, and expenses (including without limitation
attorneys' fees) incurred by or imposed upon the Indemnitees or any one of them
in connection with any claims, suits, actions, demands or judgments arising out
of any theory of liability (including but not limited to, actions in the form of
tort, warranty, or strict liability) for death, personal injury, illness, or
property damage arising from Licensee's use, sale, or other disposition of any
Products, or exercise of any of rights under the License.
17.2 Licensee agrees, at its own expense, to provide attorneys
reasonably acceptable to Licensor to defend against any actions brought or filed
against any party indemnified hereunder with respect to the subject of indemnity
contained herein, whether or not such actions are rightfully brought.
17.3 As a condition precedent to a grant of permission by
Licensor for Licensee to sublicense any of the Patent Rights herein, the
prospective sublicensee shall agree to indemnify Licensee and Licensor to the
same extent and degree as Licensee has agreed to indemnify Licensor herein.
18. ATTORNEYS' FEES.
In any action on or concerning this Agreement, the prevailing
party shall be awarded its reasonable attorneys' fees, costs and necessary
disbursements, to be paid by the nonprevailing party.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement as
of the date first above written.
Regent Court Technologies
by: /s/ Xxxxxxx X. X'Xxxxxxx, Xx.
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General Partner
Star Tobacco and Pharmaceuticals, Inc.
by: /s/ Xxxxxx X. Xxxxx, Xx.
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Xxxxxx X. Xxxxx, Xx.
/s/ Xxxxxx X. Xxxxxxxx
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Xxxxxx X. Xxxxxxxx
/s/ Xxxxxxx X. X'Xxxxxxx, Xx.
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Xxxxxxx X. X'Xxxxxxx, Xx.
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