EXHIBIT 10.55
LICENSE AGREEMENT
BIO BALANCE CORP. - NEXGEN BACTERIUM INC.
As of August 11, 2003
This License is entered into, as of August 11, 2003 (the "Effective Date")
between Bio Balance Corp. a Delaware corporation ("Licensor"), and NexGen
Bacterium Inc., a Panamanian corporation ("Licensee").
RECITALS
Contemporaneously with the execution of this Agreement, Licensor entered into
an agreement ("Asset Purchase Agreement") with Licensee for the purchase of
certain assets ("Assets" or "Technology") as described in the Asset Purchase
Agreement and Exhibit A thereto appended.
Licensor has filed, in respect of the Assets, a patent application, a copy of
which is hereto appended (the "Patent Application").
NOW THEREFORE, the parties agree as follows:
1. DEFINITIONS For purposes of this Agreement, the following terms
shall have the meanings set forth below:
"LICENSED PATENTS" shall mean (i) the Patent Application and all patents
issuing therefrom; (ii) any international counterparts thereof; (iii) any
divisionals, continuations, continuations-in-part (except as provided below),
refilings, and extensions of any of the foregoing patents and patent
applications; (iv) all substitutions, reissues, renewals, reexaminations,
patents of addition, and inventors' certificates thereof, patent term
extensions, supplementary protection certificates and exclusivity extensions of
the foregoing patents; and (v) all patents issuing from any of the foregoing.
"Licensed Patents" shall also include patents and/or patent applications filed
or issuing after the Effective Date to the extent of any claims relating to the
Licensed Technology.
"LICENSED TECHNOLOGY" shall mean all tangible or intangible know-how, trade
secrets, inventions (whether or not patentable), data, clinical and preclinical
results, analytical reference materials and all confidential and/or proprietary
chemical substances, biological materials, assays, and technical information
(collectively, "Technology") developed prior to the Effective Date in connection
with novel probiotic bacterial strains of Bacillus subtilis HE and Bacillus
licheniformis, including, in particular, ATCC deposited strains PTA-5310 and
PTA-5311, pharmaceutical compositions, foodstuff and feedstuff containing same
and use thereof in the treatment of diseases and disorders which may benefit
from probiotic treatment as well as use thereof as pharmaceutical carriers.
"PRODUCTS" shall mean finished or semi-finished goods, the development,
manufacture or use of which relies upon or derives from the Licensed Technology
and which would otherwise infringe the Licensed Patents, exclusive of any goods
developed, manufactured, sold or commonly used as a treatment for
gastro-intestinal diseases or disorders.
2. LICENSE.
2.1 GRANT. For good and valuable consideration the sufficiency and receipt
of which are hereby acknowledged by Licensor, Licensor grants to Licensee a
worldwide, paid up, exclusive, perpetual, royalty free, non-transferable and
non-assignable license to use the Licensed Patents and Licensed Technology in
order to make, have made, use, sell, offer for sale, and import the Products
(collectively, the "Uses") and for no other use or purpose.
2.2 CONDITIONS AND LIMITATIONS The grant of the aforementioned License by
Licensor to Licensee is subject to the following conditions and limitations:
2.2.1 The Licensed Patents and License Technology, inclusive of any
developments, improvements, extensions, new applications, upgrades and
modifications thereof, are proprietary to Licensor, and Licensor shall retain
all rights, title and interest therein.
2.2.2 Licensee shall have no right to sub-license its rights pursuant to
this Agreement.
2.2.3 The terms of Section 9.3 (iii) of the Asset Purchase Agreement
notwithstanding, but subject to the terms of Section 2.2.1 above, Licensee shall
be entitled to engage in research and development of the Licensed Patents and
Licensed Technology, provided, however, that such research or development
relates directly to the Uses.
3. DELIVERY. Licensor shall, deliver to Licensee copies of the Patent
prosecution history file for the Patent Application, and of all pending and all
final issued patents and patent claims contained therein.
4. REPRESENTATIONS AND WARRANTIES
4.1 CORPORATE EXISTENCE AND POWER. As of the Effective Date, each Party
represents and warrants to the other that it (a) is a corporation duly
organized, validly existing and in good standing under the laws of the state in
which it is incorporated, and {b} has full corporate power and authority and
the legal right to own and operate its property and assets and to carry on its
business as it is now being conducted and is contemplated in this Agreement,
including, without limitation, the right to grant the licenses granted
hereunder.
4.2 AUTHORITY. As of the Effective Date, each Party represents and warrants to
the other that it (a) has the corporate power and authority and the legal right
to enter into this Agreement and perform its obligations hereunder; (b) has
taken all necessary corporate action on its part required to authorize the
execution and delivery of the Agreement and the performance of its obligations
hereunder; and (c) the Agreement has been duly executed and delivered on behalf
of such Party, and constitutes a legal, valid and binding obligation of such
Party and is enforceable against it in accordance with its terms.
4.3 NO APPROVALS OR CONSENTS. Except as otherwise described in this Agreement,
each Party represents and warrants to the other that all necessary consents,
approvals and authorizations of all governmental authorities and other persons
or entities required to be obtained by such Party in connection with entry into
this Agreement have been obtained.
4.3 NO CONFLICT. Each Party represents and warrants to the other that the
execution and delivery of the Agreement by such Party and the performance of
such Party's obligations hereunder (a) do not conflict with or violate any
requirement of applicable law or regulation or any provision of articles of
incorporation or bylaws of such Party in any material way, and (b) do not
conflict with, violate or breach or constitute a default or require any consent
under, any contractual obligation or court or administrative order by which such
Party is bound.
4.4 IMPLIED WARRANTIES. LICENSOR MAKES NO REPRESENTATION OR WARRANTY AS TO THE
LICENSED PATENTS, EXPRESS OR IMPLIED, EITHER IN FACT OR BY OPERATION OF LAW, BY
STATUTE OR OTHERWISE, AND LICENSEE SPECIFICALLY DISCLAIMS ANY AND ALL IMPLIED OR
STATUTORY WARRANTIES. Without limiting the foregoing, Licensee acknowledges that
it has not and is not relying upon any implied warranty of merchantability,
fitness for a particular purpose or otherwise, or upon any representation or
warranty whatsoever as to the prospects (financial, regulatory or otherwise), or
the validity or likelihood of success, of the Products.
5. CONFIDENTIALITY.
5.1 Except as provided elsewhere in this Agreement, Licensor and Licensee each
agree to maintain confidential information in confidence and not use, transfer
or disclose such confidential information to a third party without the prior
written approval of the other Party, except as is contemplated by this
Agreement, or as is required to be disclosed to recover damages for a breach of
this Agreement, or as is required to comply with any order of a court or any
applicable rule, regulation, or law of any jurisdiction. In the event that a
Party is required by judicial or administrative process to disclose confidential
information of the other Party (except with respect to disclosures to tax
authorities), it shall promptly notify the other Party and allow the other Party
a reasonable time to oppose such process. For disclosures to tax authorities, no
prior notification to the other Party shall be required. The foregoing
obligations shall remain in force until ten (10) years following termination of
this Agreement by either Party, except with respect to trade secrets for which
such obligations shall continue in perpetuity.
5.2 Both Licensor and Licensee shall protect confidential information by using
the same degree of care, but not less than a reasonable degree of care, to
prevent the unauthorized disclosure or use of confidential information, as that
Party uses to protect its own confidential information of like nature.
5.3 Any provision of this Agreement to the contrary notwithstanding, the parties
shall be entitled to disclose confidential information to the extent reasonably
necessary for the purposes of this Agreement, to their respective consultants,
outside contractors and clinical investigators on the condition that such
persons and entities agree to be bound by this Agreement with respect to
nondisclosure and/or non-use of such information.
6. INTELLECTUAL PROPERTY MANAGEMENT
6.1 PATENT PROSECUTION AND MAINTENANCE. Licensor shall be responsible for the
preparation, filing, prosecution and maintenance of the Licensed Patents
including all payment
obligations and shall on an ongoing basis promptly furnish copies of all related
documents to Licensee within thirty (30) days of receipt or deposition.
6.1.1 Licensor shall, subject to the prior approval of Licensee (not to be
unreasonably withheld), select registered patent attorneys or patent agents to
provide services for preparing, filing, prosecuting and maintaining the Licensed
Patents. Licensor shall directly pay such attorneys or agents and provide
Licensee copies of each invoice associated with such services, as well as
documentation that such invoices have been paid.
6.1.2 The parties agree to cooperate in connection with the filing, prosecution
and maintenance of the Licensed Patents and to take any and all actions
necessary to transfer the necessary documents and rights required for, and to do
such other things as are from time to time necessary to comply with the
requirements of this Section.
6.1.3 Each Party shall promptly inform the other as to all matters that come to
its attention that may affect the preparation, filing, prosecution, or
maintenance of the Licensed Patents and permit each other to provide comments
and suggestions with respect to such activities, which comments and suggestions
shall be reasonably considered by the other Party.
6.1.4 Upon receipt of approval to market Product in a country of a Territory,
Licensor shall provide assistance to Licensee in obtaining patent extensions,
supplementary protection certificates, and the like for the Licensed Patents to
the extent the laws of the country provide it. It is understood that Licensee is
responsible for promptly notifying Licensor of receipt of Regulatory Approval.
Licensee shall provide Licensor with at least sixty (60) days prior written
notice before surrendering or abandoning any Licensed Patent in any country of
the Territory.
6.1.5 Except with respect to the prosecution of the Patent Application as filed
in the United States and the maintenance of the patent issuing therefrom,
Licensor may, upon ninety (90) days written notice to Licensee, elect to not to
file applications in additional jurisdictions or to surrender its rights under
any particular Licensed Patent in any jurisdiction and owe no payment or other
obligation under this section for patent-related expenses incurred in that
country as to such Licensed Patent as of the effective date of such written
notice. To the extent that Licensee desires to file and/or continue maintenance
and/or prosecution of such Licensed Patents in such jurisdictions in which
Licensor has elected not to file and/or to surrender rights, Licensor shall
cooperate fully with Licensee, its attorneys, and agents in assuming such
responsibilities and provide Licensee with complete copies of any and all
documents or other materials that Licensee deems necessary to undertake such
responsibilities.
7. INFRINGEMENT AND MISAPPROPRIATION.
7.1 NOTICE. Each Party shall promptly notify the other in writing of any alleged
infringement or misappropriation by third parties of any Licensed Patent or
Licensed Technology and provide any information available to that Party relating
to such alleged infringement or misappropriation.
7.2 ENFORCEMENT OF LICENSED PATENTS. Licensor shall have the primary right, but
not the obligation, to take action in its own name to secure the cessation of
any infringement or
misappropriation or to enter suit against the infringer. Any such action will be
at Licensor's expense, employing counsel of its own choosing. If Licensor elects
not to exercise its right to prosecute or take other appropriate action in
connection with an infringement or misappropriation of the Licensed Patents or
fails to take any such action within sixty (60) days of first receiving of such
infringement or misappropriation, Licensee may do so at its own expense,
controlling such action. In the event of any infringement or misappropriation
suit against a third party brought by either Party pursuant to this Section, the
Party so proceeding shall pay to the other Party all of its costs and expenses
(but not attorney's fees) in connection with such action and such other Party
shall join in and reasonably cooperate with respect to such action to the extent
necessary to initiate and maintain it (e.g., by providing relevant documents,
witnesses and testimony, etc.).
7.3 ALLOCATION OF DAMAGES OR OTHER MONETARY AWARDS. If Licensor brings action,
any damages or other monetary awards recovered by Licensor shall be applied
proportionately first to defray the unreimbursed costs and expenses (including
reasonable attorneys' fees) incurred by either or both Parties in the action. If
any balance remains, such balance shall be the property of Licensor. If Licensor
fails to bring action and Licensee brings action, any damages or other monetary
awards recovered by Licensee shall be applied first to defray the costs and
expenses (including reasonable attorneys' fees) incurred in the action by either
or both of the Parties. If any balance remains, such balance shall be the
property of Licensee.
7.4 SETTLEMENT PROCEDURES. In the event that a party bringing suit under this
Section 7 dispose of the matter by way of settlement, consent judgment or other
voluntary final disposition, which settlement, judgment or disposition would
alter, derogate or diminish such other Party's rights under the Agreement or
otherwise materially adversely affect such other Party, such settlement, consent
judgment or other voluntary final disposition shall require the consent of the
other Party, which consent shall not be unreasonably withheld or delayed.
8. TERMINATION. Either party may terminate this Agreement by Notice, if the
other commits a material breach of this Agreement which is not cured within
thirty days' following Notice. Any such termination shall end the license rights
granted to Licensee under Section 1, provided, however, that Licensee shall be
entitled to exhaust existing inventories of Products, including as inventories
Products already in production. Upon termination of this Agreement, whether by
Licensor or Licensee, Licensee shall cease all use of any biological materials
and shall, upon request, return or destroy (at Licensor's option) all biological
materials under its control or in its possession within sixty (60) days and
provide a written warranty by an Officer of Licensee that the biological
materials have been returned or destroyed.
9. OTHER MATTERS.
9.1 NOTICE. "Notice" means notice given as described here. Notice will be
given to Licensor at 00 Xxxx 00 Xxxxxx Xxx Xxxx, X.X. 00000 , and to
Licensee, at NexGen Bacterium Inc Xxxxxx-Xxxxxxx Xxxxxxxx 0xx Xxxxx , Xxxx
00 Xxxxxx Xxxxxx. Each party can change its own Notice address, by Notice.
All notices or other communications required or permitted to be given
hereunder shall be in writing and shall be deemed to have been duly given
if delivered by hand, facsimile and confirmed in writing or mailed first
class, postage prepaid, by registered or
certified mail, return receipt requested (mailed notices shall be deemed to
have been given three (3) days after mailing; notices sent by facsimile and
confirmed in writing shall be deemed given on the date sent).
9.2 SEVERABILITY. Each clause of this agreement is severable. If any clause is
ruled void or unenforceable, the balance of the agreement shall nonetheless
remain in effect.
9.3 WAIVER; REMEDIES. Any term or provision of this Agreement may be waived at
any time by the Party entitled to the benefit thereof by a written instrument
executed by such Party. No delay on the part a Party in exercising any right,
power or privilege hereunder shall operate as a waiver thereof, nor shall any
waiver on the part of either Party of any right, power or privilege hereunder
operate as a waiver of any other right, power or privilege hereunder nor shall
any single or partial exercise of any right, power or privilege hereunder
preclude any other or further exercise thereof or the exercise of any other
right, power or privilege hereunder.
9.4 ASSIGNMENT. This agreement may not be assigned by Licensee without the
express written consent of Licensor, which consent will not be unreasonably
withheld.
9.5 GOVERNING LAW, JURISDICTION. This agreement is governed by the laws of the
State of New York. Any action brought between the parties may be brought only in
the state or federal courts located in New York, and in no other place unless
the parties expressly agree in writing to waive this requirement.
9.6 ATTORNEYS' FEES. The prevailing party in any suit, action, arbitration, or
appeal filed or held concerning this agreement shall be entitled to reasonable
attorneys' fees.
9.7 REPRESENTATION. This document is the result of negotiations between parties,
each of which was represented or had the opportunity to be represented in the
transaction, and has had the opportunity to have had the transactional documents
reviewed by counsel of its own choice.
9.8 ENTIRE AGREEMENT. This Agreement constitutes the entire agreement between
the Parties with respect to the subject matter hereof and supersedes all prior
communications, agreements or understandings, written or oral, of the Parties
relating thereto.
9.9 ATTACHMENTS. All Exhibits and other attachments to this Agreement are by
this reference incorporated herein and made a part of this Agreement.
9.10 AMENDMENT. This Agreement may be modified or amended only by written
agreement of the Parties hereto.
9.11 COUNTERPARTS. This Agreement may be executed in any number of counterparts,
each of which shall be deemed an original but all of which together shall
constitute a single instrument
LICENSOR LICENSEE
By: /s/ Xxxx Xxxxx By: /s/ Michel Xxxxxxxx Xxxxx uezo
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Print: Xxxx Xxxxx Print: Michel Xxxxxxxx Xxxxx Nuezo
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Title: Chief Business Officer Title: General Attorneys
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Date: August 18, 2003 Date: August 11, 2003
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m/LICENSE AGREEMENT
