Contract
*
Certain
portions of this exhibit have been omitted pursuant to a request for
confidential treatment and those portions have been filed separately with
the
Securities and Exchange Commission.
THIS
AGREEMENT made as of the 11 day of April 2007. ("Effective Date")
BETWEEN:
SKINVISIBLE
PHARMACEUTICALS, INC., a
company
incorporated under the laws of the State of Nevada having its principal place
of
business located at Xxxx #00 - 0000 Xxxxx Xxxxxxxx Xxxx, Xxx Xxxxx, Xxxxxx,
00000 (“Skinvisible”);
AND:
DRJ
GROUP, INC,
a
company incorporated under the laws of the State of California having its
principal place of business located at 000 Xxxxxx Xxxx, Xxxxx 000 Xxxxxxxxx,
XX
00000 (the “Licensee”).
WHEREAS:
| A. |
Skinvisible
is in the business of developing polymer-based delivery systems and
related technologies for combining hydrophilic and hydrophobic polymer
emulsions and licensing its technologies and selling its polymer
delivery
systems to established brand manufacturers and providers of topical
prescription and over-the-counter cosmetic and skin-care
products.
|
| B. |
The
Licensee is engaging in the business of marketing and distributing
OTC
products.
|
| C. |
Skinvisible
and the Licensee have agreed to enter into this Agreement, whereby
the
Licensee will have the right to distribute, market, sell and promote
the
Product throughout the Territory.
|
NOW,
THEREFORE, in consideration of the foregoing premises and the mutual covenants
herein set forth and other good and valuable consideration, the parties agree
as
follows:
I. DEFINITIONS
In
this
Agreement, the following terms have the following meanings:
|
1.1
|
“Customers”
means, at any time and from time to time, the customers of the
Licensee in
respect of the Product.
|
|
1.2
|
“Confidential
Information” means
any and all technical or business information, data, designs, concepts,
ideas, Product, processes, methods, techniques, specifications,
formulas,
compositions, samples, know-how, trade secrets, and improvements
of a
confidential or proprietary nature, whether in tangible form or
not, which
relate to the Product, or the development, manufacture, end-use,
or
commercialization thereof, and were disclosed by one party to the
other
party under this Agreement. As used herein, “Confidential Information”
shall not include information a party can demonstrate through its
records:
|
|
(a)
|
is,
at the time of disclosure, available to the general
public;
|
*
Certain
portions of this exhibit have been omitted pursuant to a request for
confidential treatment and those portions have been filed separately
with the
Securities and Exchange Commission.
|
(b)
|
becomes
at a later date available to the general public through no fault
of the
receiving party, and then only after said later
date;
|
|
(c)
|
was
already in the possession of the receiving party without restriction
prior
to the date of disclosure;
|
|
(d)
|
is
disclosed to the party without secrecy obligations by a third party
who
had a lawful right to disclose it;
or
|
|
(e)
|
is
independently developed by personnel of the receiving party who
had no
direct or indirect access to the Confidential Information of the
disclosing party.
|
|
1.3
|
“Formula”
shall mean the specific ingredients, composition, and process for
preparing the Product (as defined below).
|
|
1.4
|
“Patents”
shall
mean U.S. Patent No. 6,756,059 issued June 29th,
2004 for "Topical Composition, Topical Composition Precursor, and
Methods
for Manufacturing and Using the Same"; PCT Application No. US02/26301
filed on August 16, 2002 for purposes of the countries designated
therein
that are within the Territory; and all divisions, continuations,
continuation-in-parts, reissues, reexamination applications, extensions,
foreign equivalents within the Territory, and patents issuing therefrom
which are owned or controlled by Skinvisible pertaining to the
Product,
Confidential Information, and Improvement
Inventions.
|
|
1.5
|
“Polymer”
means Skinvisible’s proprietary and patented Invisicare® delivery system
technology and further identified in Schedule
A.
|
|
1.6
|
“Product”
means
Skinvisible's proprietary formula including Invisicare® polymer and
incorporating active ingredient(s), and further identified in Schedule
B.
|
|
1.7
|
"Product
Specifications"
shall mean the specifications for the Product that will likely
be needed
to meet customer and regulatory requirements. These Product Specifications
as set forth on the attached Schedule B shall not be modified without
the
express, written agreement of the parties.
|
|
1.8
|
"Territory"
means those countries identified in Schedule
C.
|
|
1.9
|
“Net
Sales” *
|
II. APPOINTMENT,
TERRITORY AND PRODUCT
|
2.1
|
Subject
to the terms hereof, Skinvisible hereby appoints the Licensee and
grants
to the Licensee the exclusive right to distribute, sell, market
and
promote the Product within the Territory. For greater certainty,
while
this Agreement shall remain in effect, no person, firm or corporation
will
be granted the right to distribute, sell, market or promote the
Product
within the Territory other than the
Licensee.
|
|
2.2
|
The
Licensee shall be restricted from integrating the Product into
the
manufacture and production of a separate finished formulation to
be
distributed, sold, marketed and promoted by or on behalf of the
Licensee
or its permitted agents, associates, or
affiliates.
|
*
The
confidential portion has been omitted and filed separately with the Securities
and Exchange Commission
2
*
Certain
portions of this exhibit have been omitted pursuant to a request for
confidential treatment and those portions have been filed separately with
the
Securities and Exchange Commission.
|
2.3
|
In
the event the Licensee seeks to private label the Product in the
Territory, the Licensee agrees
to:
|
|
(a)
|
*
|
|
(b)
|
*
|
|
2.4
|
Licensee
recognizes that Skinvisible is in the business of developing, marketing,
selling, and distributing its polymer-based delivery systems and
related
technologies (including Product), and developing end-use applications
therefore, on a worldwide basis. For so long as Licensee retains
its
license rights for the Product granted under Section 2.1 of this
Agreement, Skinvisible shall refrain from selling the Product to
customers
within the Territory, or engaging any third party as a Licensee
of the
Product within the Territory.
|
III. LICENSEE
NOT MADE AGENT OR LEGAL REPRESENTATIVE
|
This
Agreement does not render Licensee an agent or legal representative
of
Skinvisible for any purpose whatsoever. The Licensee is not granted
any
right or authority to assume or to create any obligation or
responsibility, express or implied, on behalf of or in the name
of
Skinvisible or to bind Skinvisible in any manner or thing
whatsoever.
|
IV. PRICING
AND PAYMENT
|
4.1
|
*
|
|
4.2
|
*
|
|
4.3
|
*
|
|
4.4
|
*
|
*
The
confidential portion has been omitted and filed separately with the Securities
and Exchange Commission
3
*
Certain
portions of this exhibit have been omitted pursuant to a request for
confidential treatment and those portions have been filed separately with
the
Securities and Exchange Commission.
|
4.5
|
*
|
| 4.6 |
*
|
V. TERMS
AND CONDITIONS OF POLYMER ORDERS
|
5.1
|
The
Licensee shall submit a written purchase order to Skinvisible specifying
the amount of Polymer required. Skinvisible agrees to provide an
acceptance of an order within three (3) business
days after receiving a written purchase order from the Licensee.
|
|
5.2
|
All
of the Polymer ordered by the Licensee shall be shipped within
three (3)
weeks from the date the acceptance of an order has been delivered
to the
Licensee and shall carry an expiration date of two (2) years from
the date
of shipment. Delivery of all Polymer sold by Skinvisible to the
Licensee
shall be F.O.B. the place of Polymer manufacture. The
method and route of shipment shall be at the sole discretion of
the
Licensee subject to Skinvisible’s guidelines for the method and conditions
of shipment which would provide for arrival of the Polymer at the
Licensee’s point of delivery in substantially the same condition as such
Polymer were at the point of shipment. These guidelines include
conditions
regarding temperature (which shall not exceed at a maximum of
450
Celsius and at a minimum of 40
Celsius) to preserve the quality and integrity of the Polymer during
shipment. Failure of Licensee to abide by Skinvisible’s guidelines in the
shipment of the Polymer shall bar the Licensee from making any
claim
whatsoever against Skinvisible arising from any defect in the Polymer
which occurred or arose during shipment. Nothing in this section
shall
mean or be implied to mean that there is any shifting of the risk
of loss
of goods to Skinvisible once such goods are placed in the control
of
Licensee’s carrier. All such risk of loss is borne by Licensee once the
Polymer to be shipped has been delivered to or placed in the control
of
the carrier.
|
*
The
confidential portion has been omitted and filed separately with the Securities
and Exchange Commission
4
*
Certain
portions of this exhibit have been omitted pursuant to a request for
confidential treatment and those portions have been filed separately with
the
Securities and Exchange Commission.
|
5.3
|
Title
to the Polymer shall pass from Skinvisible to the Licensee upon
the
delivery to a recognized commercial carrier of the Polymer for
shipment to
the Licensee.
|
|
5.4
|
Skinvisible
shall deliver the Polymer to the Licensee free and clear of all
liens,
encumbrances and security interests and shall not, without the
prior
written consent of the Licensee: (a) transfer, deliver or otherwise
provide the Polymer as listed in the written purchase order submitted
by
the Licensee to any other person or entity; or (b) assign any rights
to
the Polymer as listed in the written order submitted by the Licensee
to
any other person or entity.
|
|
5.5
|
Prior
to receiving an acceptance of the written order from Skinvisible,
the
Licensee may cancel any order at any time, with or without cause,
and the
Licensee’s liability for such cancellation shall be limited to
Skinvisible’s out-of-pocket costs and expenses incurred for such cancelled
order.
|
|
5.6
|
The
Licensee shall give notice to Skinvisible of any claims relating
to the
non-conformity of Polymer. The Licensee shall make all claims with
respect
to the Polymer as follows:
|
|
(a)
|
Any
claim that a shipment contains a shortage of Polymer or other error
in
delivery must be made by the Licensee to Skinvisible in writing
within
seven (7) days from the date of receipt by the
Licensee of
such shipment of Polymer together with a reasonable description
of the
delivery error. The Licensee’s failure to make a claim in accordance with
the foregoing sentence shall constitute agreement by the Licensee
that
there was no error in delivery. Provided that the Licensee makes
a claim
in accordance with this Section 5.6(a) and proves that the shipment
contained a shortage of Polymer or other error in delivery, Skinvisible,
at the Licensee’s option, shall deliver to the Customer to such
location(s) designated by the Licensee, at Skinvisible’s risk and cost and
expense, the number of Polymer in shortage in such shipment, or
credit the
Licensee the amount of such shortage.
|
|
(b)
|
In
the event that the Licensee claims that upon delivery any of the
Polymer
is non-conforming because the Polymer is not consistent with the
Certificate of Analysis, the Licensee may reject the same, provided
that
(i) within thirty (30) days after receipt by the
Licensee of such shipment of Polymer, the Licensee notifies Skinvisible
in
writing of the nonconformity, (ii) the Licensee sends the Polymer
out for
further review and inspection and it is determined that the Polymer
are
not consistent with the Certificate of Analysis, (iii) the Licensee
returns to Skinvisible, at Skinvisible’s expense, the rejected Polymer or
shipment, subject to the terms and conditions hereinafter provided,
within
seven (7) days after the Licensee receives notice that the further
review
and inspection of the Polymer found the Polymer to be inconsistent
with
the Certificate of Analysis, and (iv) none of the Polymer has been
changed
from its original condition. The Licensee’s failure to make a claim in
accordance with the foregoing sentence shall constitute unqualified
acceptance of all shipments and Polymer. Following receipt of the
rejected
Polymer under this Section 5.6(b), Skinvisible shall deliver Polymer
consistent with the Certificate of Analysis within fourteen (14)
days.
Provided that the rejected Polymer has been rejected by the Licensee
in
accordance with the terms of this Section 5.6(b) and are proved
to have
been non-conforming, then Skinvisible shall credit the Licensee
for the
cost of the Polymer and all costs and expenses incurred by the
Licensee in
shipping the rejected Polymer back to Skinvisible, if such Polymer
return
requested is made by Skinvisible to the Licensee. The Licensee
shall pay
the costs of the conforming Polymer within thirty (30) days after
receipt
by the Licensee. The Licensee shall not be responsible for any
royalty
payments on the sale of any Polymer that do not conform to the
Certificate
of Analysis.
|
5
*
Certain
portions of this exhibit have been omitted pursuant to a request for
confidential treatment and those portions have been filed separately
with the
Securities and Exchange Commission.
|
(c)
|
In
the event that the Licensee claims that upon delivery any of the
Polymer
are non-conforming for any reasons other than as set forth in Section
5.6(a) or (b), then Licensee may reject the same, provided that
(i) within
thirty (30) days after receipt by the
Licensee of such shipment of Polymer, the Licensee notifies Skinvisible
of
such rejection, in writing, together with a reasonable description
of why
the Polymer have been rejected (the “Rejection Notice”), (ii) the
Licensee, at Skinvisible’s option, may return to Skinvisible the rejected
Polymer or shipment, subject to the terms and conditions hereinafter
provided, within thirty (30) days after the Licensee sends the
Rejection
Notice, and (iii) none of the Polymer has been changed from its
original
condition. The Licensee’s failure to make a claim in accordance with the
foregoing sentence shall constitute unqualified acceptance of all
shipments and Polymer. Provided that the rejected Polymer has been
rejected by the Licensee in accordance with the terms of this Section
5.5(c) and are proved to have been non-conforming, Skinvisible
shall
credit the Licensee for the cost of the Polymer and all costs and
expenses
incurred by the Licensee in shipping the rejected Polymer back
to
Skinvisible, if such Polymer return requested is made by Skinvisible
to
the Licensee.
|
|
5.7
|
The
warranty for defective Polymer of Skinvisible as from time to time
in
effect shall be applicable to all sales of the Polymer by Skinvisible
to
the Licensee. Notwithstanding the provisions of Article XII hereof,
Skinvisible shall have no obligation or liability to the Licensee
for any
loss, damage or expense of any kind caused directly or indirectly
by the
Polymer or the use, maintenance, repairs or adjustments of or to
the
Polymer except as may be provided in such warranty.
|
VI. OBLIGATIONS
OF SKINVISIBLE
6.1 Skinvisible
shall at all times during the Term of the Agreement:
|
(a)
|
publish
and make available to the Licensee from time to time a list of
the Polymer
and a list of the prices charged by Skinvisible
therefore;
|
|
(b)
|
with
respect to each Polymer sold to the Licensee, provide the Licensee
with a
standard Certificate of Analysis;
|
|
(c)
|
reimburse
the Licensee under any warranty obligation of
Skinvisible;
|
|
(d)
|
permit
the Licensee to use Skinvisible's Invisicare® trademark (collectively
"Trademark") for the sole purpose of advertising, marketing and
distributing the Product within the Territory, and strictly in
accordance
with the terms and conditions of the Trademark License Agreement
of
Schedule E.
|
|
(e)
|
use
at least 20% of the royalty fee to help create greater consumer
awareness
of Skinvisible’s Invisicare® trademark and its
value.
|
|
6.2
|
Skinvisible
hereby grants Licensee a royalty-free, non-exclusive, non-transferable
license to use Skinvisible's Confidential Information, Improvement
Inventions, and Patents that are directly relevant to the advertising,
marketing, distribution, and sale of the Product within the Territory
under this Agreement, and the manufacture by Licensee of the Product,
where applicable under Article VII. This license is limited in
scope, and
shall not authorize Licensee to use Skinvisible's Confidential
Information, Improvement Inventions, or Patents outside of this
Agreement
without Skinvisible's prior, written
consent.
|
6
*
Certain
portions of this exhibit have been omitted pursuant to a request for
confidential treatment and those portions have been filed separately with
the
Securities and Exchange Commission.
VII. RIGHT
TO MANUFACTURE
|
7.1
|
Licensee
shall have the right to manufacture the Product covered by this
Agreement,
instead of sourcing it from Skinvisible, provided that: (a) Licensee
makes
the Product strictly in accordance with the Formula, and that it
achieves
the Product Specifications; (b) Licensee sources the Polymer ingredient
for the Product from Skinvisible; (c) Licensee applies Skinvisible's
Invisicare® Trademark in a prominent fashion to all packaging, labels,
tags, advertising, and promotional materials associated with the
Products;
and (d) Licensee pays Skinvisible the license fees and royalties
due
pursuant to Sections 4.4 and 4.5. Licensee shall notify Skinvisible
ninety
(90) days prior to its commencement of the manufacture of Product
under
this Section 7.1.
|
|
7.2
|
Should
Licensee decide to manufacture Product under this Agreement, Skinvisible
shall disclose to Licensee as soon reasonably practicable the Formula,
Product Specifications, and manufacturing know-how in sufficient
detail
(using reasonable commercial efforts) to enable Licensee to make
the
Product. This information shall be treated as Skinvisible's Confidential
Information pursuant to Article IX. Notwithstanding the foregoing,
Skinvisible shall not be required to disclose any specific information
to
Licensee in the event that any agreement with a third party would
preclude
Skinvisible from doing so.
|
|
7.3
|
Licensee
shall bear all costs associated with the: (a) disclosure of the
Formula,
Product Specifications, manufacturing know-how; (b) adapting such
information or technology for its use by Licensee; (c) any necessary
training; and (d) any documentation done for Licensee's internal
purposes.
|
|
7.4
|
Licensee
shall permit duly authorized representatives of Skinvisible, at
reasonable
times, upon reasonable nature, and in the company of Licensee's
employees
to enter any facility where the Product is being manufactured for
the
purpose of: (a) inspecting those portions of the facility used
in the
manufacture, handling, or storage of the Product; (b) inspecting
the
manufacture, handling, and storage of the Product; and (c) ensuring
that
the provisions of this Agreement are being complied with by Licensee.
Such
representatives shall comply with all of Licensee's plant safety
and other
rules and regulations while at the facility.
|
VIII. IMPROVEMENT
INVENTIONS
|
8.1
|
Licensee
shall have no right to make any modifications or improvements to
the
Product without Skinvisible's prior, written permission. Modifications
or
improvements to the Product will not be unreasonably withheld.
In the
event that Licensee does conceive, develop, or reduce to practice
any
invention or other information arising from or based upon the use
of
Skinvisible's Confidential Information or Product (hereinafter
"Improvement Invention"), then Skinvisible shall be the sole owner
of such
Improvement Invention, which shall be subject to the exclusive
Licenseeship grant of Article II. Should Licensee desire modification
or
improvement to be made to the Product, then it shall contract with
Skinvisible under a separate agreement to develop such modifications
or
improvements.
|
|
8.2
|
Only
Skinvisible shall have the right, in its sole discretion, to patent
the
Product and Improvement Inventions.
|
7
*
Certain
portions of this exhibit have been omitted pursuant to a request for
confidential treatment and those portions have been filed separately with
the
Securities and Exchange Commission.
IX. CONFIDENTIALITY
|
9.1
|
Each
party recognizes the importance to the other party that of that
other
party’s Confidential Information, and such information is critical to
the
business of the disclosing party. Each party recognizes that neither
party
would enter into this Agreement without assurance that its Confidential
Information and the value thereof will be protected as provided
in this
Article IX and elsewhere in this
Agreement.
|
|
9.2
|
All
Confidential Information shall remain the property of the disclosing
party. The receiving party shall hold in strict confidence the
disclosing
party’s Confidential Information and with no less than the same degree
of
care that it holds its own confidential and proprietary information,
and
it will take all reasonable precautions to protect such Confidential
Information. The receiving party shall make the Confidential Information
received under this Agreement available only to those of its employees
who
have a need to know the same in connection with their work assignments
to
further the objections contemplated under this Agreement. No disclosures
to third parties shall be made by the receiving party of such Confidential
Information without the prior written approval of the disclosing
party.
The receiving party will use the disclosing party’s Confidential
Information only for the purposes and under the circumstances provided
in
this Agreement.
|
|
9.3
|
Upon
any termination of this Agreement, or earlier at a party's request,
each
party will return the other party’s Confidential Information and all
documents or media containing any such Confidential Information
to the
other party, except that the receiving party has the right to keep
one
copy of such information for legal purposes (which shall remain
subject to
the confidentiality provisions set forth herein), including, but
not
limited to, copies of all documentation required by the
FDA.
|
|
9.4
|
Each
party acknowledges and agrees that the other party shall be entitled
to
appropriate equitable relief in addition to whatever remedies it
may have
at law in the event of a breach by the other party of its covenants
contained in this Article IX. The foregoing provision is in addition
to,
and not in limitation of, any and all remedies at law, in equity
or
otherwise, that the non-breaching party may have upon the other
party’s
breach of this Agreement.
|
|
9.5
|
Except
as otherwise provided in this Agreement, either party shall immediately
notify the other party of any private or governmental request for
Confidential Information or any other information or documents
relating to
the Product or this Agreement. Each party shall have the right
to
participate in the other party’s response to any such request. If a party
receives any legal instrument requiring the production of data,
work
papers, reports, or other materials relating to this Agreement,
that party
shall: (a) give the other party, if possible, the opportunity to
participate in quashing, modifying or otherwise responding to any
compulsory process in an appropriate and timely manner; and (b)
cooperate
fully with the other party’s efforts to narrow the scope of any such
compulsory process, to obtain a protective order limiting the use
or
disclosure of the information sought, or in any other lawful way
to obtain
continued protection of the Confidential
Information.
|
|
9.6
|
If
either party becomes aware of the loss, theft or misappropriation
of
Confidential Information which is in its possession or control,
it shall
notify the other party in writing within seven (7) days of its
discovery
of such loss, theft or
misappropriation.
|
|
9.7
|
The
rights and duties of this Article 9 shall survive the termination
of this
Agreement, whether upon expiration or termination by either
party.
|
8
*
Certain
portions of this exhibit have been omitted pursuant to a request for
confidential treatment and those portions have been filed separately with
the
Securities and Exchange Commission.
X. TERM
AND TERMINATION
|
10.1
|
This
Agreement shall continue in full force and effect for twenty (20)
years
from the Effective Date or the last to expire of the Patents, whichever
occurs first, unless otherwise terminated as provided in Section
10.2
below, or by mutual written consent of the parties
hereto.
|
|
10.2
|
Either
party may terminate this Agreement at any time as follows:
|
|
(a)
|
By
either party, effective immediately, in the event that the other
party
should fail to materially perform any of its material obligations
under
this Agreement and should fail to remedy such failure within thirty
(30)
calendar days after receiving written demand to remedy such
failure.
|
|
(b)
|
By
either party, upon thirty (30) days’ written notice if a force majeure
event described in Section 15.1 shall have occurred and continue
for sixty
(60) days.
|
|
10.3
|
Skinvisible
may terminate this agreement at any time if the Licensee should
become the
subject of any voluntary or involuntary bankruptcy, receivership
or other
insolvency proceedings or make an assignment or other arrangement
for the
benefit of its creditors, or if such other party should be nationalized
or
have any of its material assets
expropriated.
|
|
10.4
|
This
Agreement may also be terminated by mutual agreement of the
parties.
|
XI. EFFECT
OF TERMINATION
|
11.1
|
The
rights, duties and obligations of the parties upon and following
the
expiration or termination of this Agreement however occurring shall
be
governed by the following
provisions:
|
|
(a)
|
The
termination of this Agreement shall not release or affect, and
this
Agreement shall remain fully operative as to, any obligations or
liabilities incurred by either party prior to the effective date
of such
termination;
|
|
(b)
|
Skinvisible,
subject to its production capabilities, shall fill all orders submitted
by
the Licensee during the term of this Agreement regardless of whether
any
of the Polymer in such orders are to be delivered after the expiration
or
termination of this Agreement. During such period of time that
Skinvisible
is filling such orders, all terms of this Agreement shall apply
between
the parties with respect to such production;
and
|
|
(c)
|
Notwithstanding
the provisions of Article XII hereof, Skinvisible shall, by reason
only of
the expiration or termination of this Agreement in accordance with
the
terms of this Agreement, be liable in any manner whatsoever to
the
Licensee for any damage of any kind whether direct, indirect or
conse-quential, or for any profits on anticipated sales, or for
any
expenditures or investments; and
|
|
(d)
|
Upon
the effective date of termination of this Agreement, the parties
hereto
acknowledge that the provisions set forth in Article II herein
will no
longer be in effect and that any limitations on the parties pertaining
to
sales and marketing and potential customers are dissolved and the
parties
are free to contract with any third party for future business;
and
|
|
(e)
|
Termination
or expiration of this Agreement for any reason shall not relieve
the
parties of their obligations under Articles VII, IX, X, XI, XII,
XIII, and
XIV of this Agreement.
|
9
*
Certain
portions of this exhibit have been omitted pursuant to a request for
confidential treatment and those portions have been filed separately with
the
Securities and Exchange Commission.
XII. WARRANTY
AND REPRESENTATIONS
|
12.1
|
As
an essential term of this Agreement, each party hereby warrants
and
represents to the other party that it is entitled to disclose to
and
license the other party to use its Confidential Information, Improvement
Inventions, and Patents under the terms of this Agreement without
violating the trade secret or contractual rights of any third
party.
|
EXCEPT
AS
SET FORTH IN SECTION 12.1 OR AS OTHERWISE SPECIFICALLY STATED HEREIN, THE
PARTIES EXPRESSLY DISCLAIM ALL WARRANTIES, EXPRESS OR IMPLIED, INCLUDING
WITHOUT
LIMITATION, WARRANTIES OF MERCHANTABILITY, FITNESS OR A PARTICULAR PURPOSE,
PATENT VALIDITY, OR NON-INFRINGEMENT OF A THIRD-PARTY PATENT OF OTHER
INTELLECTUAL PROPERTY RIGHTS REGARDING THE USE OR COMMERCIALIZATION OF PRODUCT,
CONFIDENTIAL INFORMATION, IMPROVEMENT INVENTIONS, OR PATENTS.
XIII. INDEMNIFICATION
|
13.1
|
Each
party shall indemnify, defend and hold harmless the other party
from any
and all claims, costs, liabilities, or damages (including reasonable
attorney's fees) arising from its:
|
(a) uncured
material breach of this Agreement;
(b) breach
of
any Warranty or Representation provided pursuant to Article XI;
|
(c)
|
grossly
negligent, or wilful acts or omissions. Each party shall be responsible
for any and all damages that it is subjected to by means of its
own
grossly negligent, or wilful acts or
omissions.
|
| 13.2 |
In
the event a third-party lawsuit is filed against a party (the
"Indemnitee") due to the grossly negligent, or wilful actions or
omissions
of the other party (the "Indemnitor"), then the Indemnitee shall
promptly
provide notice of such suit to the Indemnitor, and permit the Indemnitor
to control its defense, including the terms under which any such
suit is
settled. The Indemnitee shall provide all reasonable cooperation
to the
Indemnitor at the Indemnitor's expense in the defense of that
suit.
|
| 13.3 |
Provided
Licensee gives Licensor prompt written notice of any claim, Licensor
will
indemnify, defend and hold Licensee harmless from any and all claims,
suits, actions, proceedings, costs and expenses, including reasonable
attorney fees and expenses, incurred by Licensee arising from any
claim by
a third party that the Confidential Information, Improvement
Inventions and Patents of Licensor included in this Agreement
infringe on the proprietary rights of a third party. The defense
and
settlement of any such claim will be the sole responsibility of
Licensor.
|
XIV. MISCELLANEOUS
PROVISIONS
|
14.1
|
Neither
party shall be in default hereunder by reason of any failure or
delay in
the performance of any obligation under this Agreement where such
failure
or delay arises out of any cause beyond the reasonable control
and without
the fault or negligence of such party. Such causes shall include,
without
limitation, storms, floods, other acts of nature, fires, explosions,
riots, war or civil disturbance, strikes or other labor unrests,
embargoes
and other governmental actions or regulations which would prohibit
either
party from ordering or furnishing the Polymer or Product, or from
performing any other aspects of the obligations hereunder, delays
in
transportation, and inability to obtain necessary labor, supplies
or
manufacturing facilities.
|
10
*
Certain
portions of this exhibit have been omitted pursuant to a request for
confidential treatment and those portions have been filed separately with
the
Securities and Exchange Commission.
|
14.2
|
Each
and every right and remedy hereunder is cumulative with each and
every
other right and remedy herein or in any other agreement between
the
parties or under applicable law.
|
|
14.3
|
Each
party hereby acknowledges receipt of a signed copy of this
Agreement.
|
|
14.4
|
Nothing
contained in this Agreement shall create or shall be construed
as creating
a partnership, a joint venture, agency or employment relationship
between
the parties. The parties agree to perform their obligations in
accordance
with this Agreement at arms’ length and only as independent contractors.
Neither party has the right or authority to assume nor create any
obligations or responsibilities, express or implied, on behalf
of the
other party, and neither party may bind the other party in any
manner or
thing whatsoever. Neither party shall be liable, except as expressly
provided otherwise in this Agreement, for any expenses, liabilities
or
other obligations incurred by the
other.
|
|
14.5
|
Skinvisible
and the Licensee each represent and warrant to the other that it
is duly
organized, validly existing and in good standing under the laws
of the
State or Commonwealth (as applicable) in which incorporated, and
that it
has full corporate power and authority to carry on the business
presently
being conducted by it and to enter into and to perform its obligations
under this Agreement.
|
|
14.6
|
Skinvisible
and the Licensee each represent and warrant to the other that it
has taken
all action necessary to authorize the execution and delivery of
this
Agreement and the performance of each party’s respective obligations
hereunder. Each party’s officer executing this Agreement on its behalf has
the legal power, right and authority to bind the party to the terms
and
conditions of this Agreement, and when he or she executes and delivers
this Agreement and any instruments contemplated herein, he or she
will
have the power, right and authority to bind the party
thereto.
|
|
14.7
|
All
notices, requests, demands and other communications hereunder shall
be
given in writing and shall be: (a) personally delivered; (b) sent
by
telecopy, facsimile transmission or other electronic means of transmitting
written documents with confirmation of receipt; or (c) sent to
the parties
at their respective addresses indicated herein by registered or
certified
mail, return receipt requested and postage prepaid, or by private
overnight mail courier services with confirmation of receipt. The
respective addresses to be used for all such notices, demands or
requests
shall be as set forth on page 1 hereof or to such other person
or address
as either party shall furnish to the other in writing from time
to time.
If personally delivered, such communication shall be deemed delivered
upon
actual receipt by the “attention” addressee or a person authorized to
accept for such addressee; if electronically transmitted pursuant
to this
paragraph, such communication shall be deemed delivered the next
business
day after transmission (and sender shall bear the burden of proof
of
delivery); if sent by overnight courier pursuant to this paragraph,
such
communication shall be deemed delivered upon receipt by the “attention”
addressee or a person authorized to accept for such address; and
if sent
by mail pursuant to this paragraph, such communication shall be
deemed
delivered as of the date of delivery indicated on the receipt issued
by
the relevant postal service, or, if the addressee fails or refuses
to
accept delivery, as of the date of such failure or refusal. Any
party to
this Agreement may change its address for the purposes of this
Agreement
by giving notice thereof in accordance with this Section
14.7.
|
|
14.8
|
This
Agreement may not be amended or modified otherwise than by a written
agreement executed by the parties hereto or their respective successors
and legal representatives.
|
|
14.9
|
This
Agreement is not intended, nor shall it be construed, to confer
upon any
person except the parties hereto and its successors and permitted
assigns
any rights or remedies under or by reason of this Agreement, except
as
contemplated herein.
|
11
*
Certain
portions of this exhibit have been omitted pursuant to a request for
confidential treatment and those portions have been filed separately
with the
Securities and Exchange Commission.
|
14.10
|
This
Agreement and all matters arising under or growing out of or in
connection
with or in respect of this Agreement shall be governed by and construed
in
accordance with the laws of the State of Nevada.
|
|
14.11
|
The
headings in this Agreement are inserted for convenience only and
shall not
constitute a part hereof.
|
|
14.12
|
Each
provision contained in this Agreement is declared to constitute
a separate
and distinct covenant and provision and to be severable from all
other
separate, distinct covenants and provisions. In any provision of
this
Agreement is or becomes invalid, illegal, or unenforceable in any
jurisdiction, such provision shall be deemed amended to conform
to
applicable laws as to be valid and enforceable or, if it cannot
be so
amended without materially altering the intention of the parties,
it shall
be stricken and the remainder of this Agreement shall remain in
full force
and effect.
|
|
14.13
|
No
waiver of a breach of any provision of this Agreement shall be
deemed to
be, or shall constitute, a waiver of a breach of any other provision
of
this Agreement, whether or not similar, nor shall such waiver constitute
a
continuing waiver of such breach unless otherwise expressly provided
in
such waiver.
|
|
14.14
|
This
Agreement may not be assigned by the Licensee without the prior
written
consent of Skinvisible which may not be unreasonably withheld.
Skinvisible
may assign, transfer, or convey its manufacturing obligations to
third
parties who shall be bound by the same standards as Skinvisible.
|
|
14.15
|
All
prices quoted in this Agreement are exclusive of all applicable
sales, use
or other excise taxes (including sales tax and goods and services
tax).
The Licensee is responsible for all taxes and similar charges customary
for a buyer of product and services as herein
contemplated.
|
|
14.16
|
All
disputes, claims or controversies arising out of or relating to
this
Agreement, or the breach, termination or invalidity hereof, shall
be finally settled in United States under the Rules of Commercial
Arbitration of the American Arbitration Association by one or more
arbitrators appointed in accordance with the said Rules. The arbitration
shall take place in Las Vegas,
Nevada.
|
|
14.17
|
The
parties agree to execute such documents, make such filings and
take such
actions as may be reasonably necessary at the request of the other
party
to give full force and effect to the provisions
hereof.
|
| 14.18 |
This
Agreement may be executed in one or more counterparts, each of which
when
taken together shall constitute one and the same instrument. This
Agreement may be delivered by personal delivery of facsimile
transmission.
|
IN
WITNESS WHEREOF, the parties have executed this Agreement as of the date
and
year first written above.
| SKINVISIBLE PHARMACEUTICALS, INC. | ||
| By: | /s/ Xxxxx X. Xxxxxxx | Date: 04/11/07 |
| Name: Xxxxx X. Xxxxxxx | ||
| Title: President / CEO |
|
DRJ
GROUP, INC.
|
||
|
By:
|
/s/ Xxxxxx X. Xxxxxx |
Date:
04/11/07
|
|
Name:
Xx. Xxxxxx X. Xxxxxx
|
||
|
Title:
President
|
12
*
Certain
portions of this exhibit have been omitted pursuant to a request for
confidential treatment and those portions have been filed separately with
the
Securities and Exchange Commission.
SCHEDULE
A
Invisicare®
Polymer Description
This
information is supplied under Confidentiality Agreement
U.S.
Patent Application Number
6,756,059
|
Invisicare®
Polymer Series
|
INCI
Name
|
PH
Range
|
|
M-1
|
PVM/MA
Copolymer VP/Hexadecene Copolymer
VP/Eicosene
Copolymer
|
5.5
- 8.0
|
|
Invisicare
M-1 Polymer Specifications
|
||
|
Specification
|
Allowed
|
Method
Used
|
|
Bacterial
Screen (cfu/ml)
|
0
|
USP<61>
|
|
Total
Solids
|
55
to 65%
|
SOP
#1
|
|
pH
|
3.0
to 3.5
|
USP
<791>
|
|
pH
+ Triethanolamine (750µl/10g)
|
6.5
to 7.5
|
USP
<791>
|
|
Total
Hydrophobic
|
49
to 55%
|
SOP
#24
|
13
*
Certain
portions of this exhibit have been omitted pursuant to a request for
confidential treatment and those portions have been filed separately with
the
Securities and Exchange Commission.
SCHEDULE
B
Product
Formulation and Specifications
*
*
The
confidential portion has been omitted and filed separately with the Securities
and Exchange Commission
14
*
Certain
portions of this exhibit have been omitted pursuant to a request for
confidential treatment and those portions have been filed separately with
the
Securities and Exchange Commission.
SCHEDULE
C
Territory
North
America
15
*
Certain
portions of this exhibit have been omitted pursuant to a request for
confidential treatment and those portions have been filed separately with
the
Securities and Exchange Commission.
SCHEDULE
D
Polymer
Pricing per Lb.
|
Invisicare®
|
00
- 000 Xxx.
|
0000
- 0000 Xxx.
|
2574
- 3861 Lbs.
|
4290
+ Lbs.
|
|
Polymer
|
1
Pail to 2 Drums
|
3
to 5 Drums
|
6
to 9 Drums
|
10+
Drums
|
|
|
|
|
|
|
|
Invisicare®
M-1
|
*
|
*
|
*
|
*
|
*
The
confidential portion has been omitted and filed separately with the Securities
and Exchange Commission
16
*
Certain
portions of this exhibit have been omitted pursuant to a request for
confidential treatment and those portions have been filed separately with
the
Securities and Exchange Commission.
SCHEDULE
E
TRADEMARK
LICENSE AGREEMENT
BY
AND
BETWEEN;
SKINVISIBLE
PHARMACEUTICALS, INC., a
company
incorporated under the laws of the State of Nevada having its principal place
of
business located at Xxxx #00 - 0000 Xxxxx Xxxxxxxx Xxxx, Xxx Xxxxx, Xxxxxx,
00000 (“Skinvisible”);
AND
DRJ
GROUP, INC.,
a
company incorporated under the laws of the State of California having its
principal place of business located at 000 Xxxxxx Xxxx, Xxxxx 000 Xxxxxxxxx,
XX
00000 (hereinafter referred to as "Licensee").
WITNESSETH:
WHEREAS,
Skinvisible is the owner of the trademark Invisicare®, which is the subject of
U.S. Registration No. 2,663,235 issued on December 17, 2002 for "excipients,
namely, polymers for use in the manufacture of topically applied
pharmaceuticals, cosmetics, and skincare products in classes 1, 5, 6, 10,
26 and
46." (collectively "Trademark");
WHEREAS,
Licensee desires to obtain a license to use the said Trademark in connection
with the advertising, marketing, distribution, and sale of Skinvisible's
Product
within the Territory under the terms and conditions of the Licensing Agreement
between the Parties of even date herewith ("Licensing Agreement"), as such
Product and Territory terms are defined therein; and
WHEREAS,
Skinvisible is willing to permit Licensee to use the Trademark under the
terms
and conditions of this Agreement.
NOW,
THEREFORE, in consideration of the mutual undertakings and obligations herein
contained, the Parties agree as follows:
|
1.
|
Skinvisible
hereby grants to Licensee, subject to all the terms and conditions
herein
contained, a non-exclusive, royalty-free, non-transferable license
to use
the Trademarks for the sole purpose of manufacturing, advertising,
marketing, distributing, and selling the Products within Territory
strictly in accordance with the terms and conditions of the Licensing
Agreement.
|
|
2.
|
Licensee
agrees that it will use the Trademark on all Product or on the
packages
for such Product, but only on Product which are produced and packaged
in
strict compliance with the standards and directions laid down in
writing
by Skinvisible, and further agrees that it will use the Trademark
only on
or in connection with Product which meets or exceeds Skinvisible's
standards.
|
|
3.
|
Skinvisible
shall have the right at all reasonable times to inspect and examine
the
methods, processes, containers, and materials used by Licensee
in
producing the Product on which the Licensee uses the Trademark,
and to
request samples of such Product and associated materials, and Licensee
agrees to permit such inspections and examinations and to furnish
such
samples.
|
17
*
Certain
portions of this exhibit have been omitted pursuant to a request for
confidential treatment and those portions have been filed separately with
the
Securities and Exchange Commission.
|
4.
|
Licensee
shall have the right to refer to the Trademark in advertising and
promotional literature and the like, as well as on labels for the
Products
sold under the Trademark. Licensee agrees that, on each label,
advertisement, or other piece of material bearing the Trademark,
such
Trademark shall be conspicuously displayed and shall be keyed by
a
footnote reading "Invisicare® is a registered trademark used under license
from Skinvisible Pharmaceuticals, Inc." Licensee further agrees
that all
labels, advertising, and other materials in which the Trademark
is used,
and which have not been supplied to Licensee by Skinvisible, must
have the
prior approval of Skinvisible, and Licensee agrees to submit samples
of
all such labels, etc. to Skinvisible prior to
use.
|
|
5.
|
Licensee
acknowledges Skinvisible's exclusive ownership of all right, title,
and
interest in and to the Trademark, and agrees that Licensee's use
of the
Trademark shall inure to the benefit of Skinvisible. Licensee further
agrees that it will in no way dispute, impugn, or attack the validity
of
said Trademark or rights thereto.
|
|
6.
|
The
term of this Agreement shall be the same as the term set forth
in Article
X of the Licensing Agreement. Once Licensee ceases to distribute
and sell
the Product, it shall immediately stop using the Trademark.
|
|
7.
|
If,
at any time, Licensee should use the Trademark for goods not produced
in
accordance with the standards and directions laid down by Skinvisible,
or
for goods not meeting the quality standards set forth in the Licensing
Agreement, or if, at any time, Licensee breaches any other provision
of
this Agreement or fails to observe any of its obligations hereunder,
then
the license granted herein shall terminate thirty (30) days after
receipt
of written notice from Skinvisible to that effect, provided that
Licensee
has not cured any breach or default to the satisfaction of Skinvisible
by
the end of said thirty (30) day
period.
|
|
8.
|
This
Agreement may not be assigned or otherwise transferred by Licensee
(by
operation of law or otherwise) to any entity without prior written
consent
of Skinvisible which will not be unreasonably withheld..
|
|
9.
|
Licensee
agrees to notify Skinvisible immediately of any apparent infringement
of
the Trademark. Skinvisible shall take such action regarding such
infringement as it deems, in its sole discretion, to be necessary
or
desirable, and Licensee agrees to cooperate
therein.
|
| 10. |
Skinvisible
will maintain the Trademark registration at its own
cost.
|
