LICENSE AGREEMENT
This License Agreement, (hereinafter referred to as the "AGREEMENT")
effective as of the 11th day of December, 1998 (hereinafter referred to as
"EFFECTIVE DATE"), is by and between The Med-Design Corporation, having an
address at 0000 Xxxxxx Xxxxxx, Xxxxxxx, Xxxxxxxxxx 00000 (hereinafter referred
to as "LICENSOR"), and Becton, Xxxxxxxxx and Company, having a place of business
at 0 Xxxxxx Xxxxx, Xxxxxxxx Xxxxx, Xxx Xxxxxx 00000-0000 (hereinafter referred
to as "BECTON").
WITNESSETH
WHEREAS, LICENSOR represents and warrants that it is the sole and exclusive
owner of the entire right, title and interest in and to a certain inventions
relating to retractable needle assemblies as described and claimed in the
patents and patent applications including, but not limited to those listed in
Appendix A of this AGREEMENT and all corresponding re-examinations, reissues,
continuations, divisionals, continuations-in-part and all foreign counterparts
(except as relating to U.S. Patent No. 4,904,242) thereof and as described and
shown by the technical information including, but not limited to those in
Appendix B and Appendix C;
WHEREAS, LICENSOR represents and warrants that it is the sole and exclusive
owner of the entire right, title and interest in and to certain technical and
business information necessary to develop, manufacture and sell retractable
needle assemblies;
WHEREAS, BECTON desires to obtain from LICENSOR an exclusive worldwide
license to make, have made, use and sell said certain inventions relating to
retractable needle assemblies, including, but not limited to the Safe Step
Safety Blood Collection Needle, Safe Step Safety Winged Set Blood Collection
Needle, Safe Step Safety Wing Needle Set/Catheter, Safe Step Safety PICC
Catheter System and Safe Step Safety I.V. Catheter Systems and LICENSOR is
willing to grant such a license to BECTON; and
WHEREAS, BECTON desires to obtain from LICENSOR an exclusive worldwide
license to the technical and business information necessary to develop,
manufacture and sell retractable needle assemblies.
NOW, THEREFORE, in consideration of the premises and the mutual promises
and covenants herein contained, it is agreed by and between the parties hereto
as follows:
ARTICLE I - DEFINITIONS
-----------------------
1. "STOCK PURCHASE AGREEMENT" as used herein shall mean those certain
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Agreements and related documents between BECTON and LICENSOR entered into on
even date with this AGREEMENT.
2. "TRANSFER AGREEMENT" as used herein shall mean that certain Agreement
between BECTON and LICENSOR relating to the transfer of U.S. Patent No.
4,900,307 entered into on an even date with this AGREEMENT in accordance with
Appendix G of this AGREEMENT.
3. "BECTON" as used herein shall include Becton, Xxxxxxxxx and Company and
any entity which at any time during the life of this AGREEMENT directly or
indirectly, through one or more intermediaries, controls BECTON, is controlled
by BECTON, or is under common control of BECTON, (including subsidiaries of
BECTON), or is controlled by an entity that controls BECTON.
4. "LICENSOR" as used herein shall include The Med-Design Corporation and
any entity which at any time during the life of this AGREEMENT directly or
indirectly, through one or more intermediaries, controls The Med-Design
Corporation, is controlled by The Med-Design Corporation, or is under common
control of The Med-Design Corporation, including but not limited to subsidiaries
of The Med-Design Corporation, MDC Research Ltd. or MDC Investment Holdings,
Inc., or is controlled by an entity that controls The Med-Design Corporation.
5. "DEVICE(S)" as used herein shall mean:
a. The Safe Step Safety Blood Collection Needle of the type illustrated
and described in the Product information in Appendix B;
b. The Safe Step Safety Winged Set Blood Collection Needle of the type
illustrated and described in the Product Information in Appendix B;
c. The Safe Step Safety Wing Needle Set/Catheter of the type illustrated
and described in the Product Information in Appendix C;
d. The Safe Step Safety PICC Catheter System of the type illustrated and
described in the Product Information in Appendix C;
e. The Safe Step Safety I.V. Catheter Systems of the type illustrated
and described in the Product Information in Appendix C;
f. Any retractable needle blood collection device designed to operate in
conjunction with a separable vacuum container. It is understood that DEVICE(S)
does not include arterial blood gas syringes and retractable needle blood donor
systems designed to
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operate in conjunction with an expandable reservoir and does not include needles
used for drawing blood and infusing blood to operate with dialysis systems; and
g. Any retractable needle device for venous, or arterial insertion of
any fluid delivery catheter or diagnostic catheter, as taught and claimed in the
patent applications and patents including, but not limited to those of Appendix
A of this AGREEMENT.
6. "TECHNICAL INFORMATION" as used herein shall mean, but is not limited to
unpublished research and development information, improvements, know-how,
drawings, specifications and technical data in the possession of LICENSOR which
are needed to produce DEVICES and which LICENSOR has the right to provide to
BECTON and including, but not limited to the information described and shown in
Appendix B and Appendix C. It is understood that TECHNICAL INFORMATION disclosed
to BECTON shall be maintained in confidence by BECTON as set forth in ARTICLE
XII, Paragraph 7.
7. "PATENT RIGHTS" as used herein shall mean patents or patent applications
relating to the DEVICES, or any improvement or modification to said DEVICES, its
manufacture or use, including, but not limited to the patents and patent
applications of Appendix A of this AGREEMENT, as well as all re-examinations,
reissues, continuations, divisionals, and continuations-in-part (except as
relating to U.S. Patent No. 4,904,242) and their counterparts in other
countries, in whole or in part, and any subsequently filed patent applications,
and any patents issuing therefrom that are owned by or assigned to LICENSOR, or
any of the foregoing in which LICENSOR has an ownership or licensable interest
as relating to this AGREEMENT.
8. "VALID CLAIM(S)" as used herein shall mean a claim of a pending patent
application or a claim of an issued or granted patent within PATENT RIGHTS so
long as such claim is enforceable and shall not have been disclaimed by LICENSOR
or shall not have been held invalid by BECTON or, any third party or not
infringed by BECTON in an unappealed or unappealable decision rendered by a
tribunal of competent jurisdiction.
9. "LICENSED PRODUCT(S)" as used herein shall mean any DEVICE whose
manufacture, use or sale by BECTON, would, but for this AGREEMENT, in a
jurisdiction where a VALID CLAIM exists, infringe such a VALID CLAIM under
PATENT RIGHTS whether or not any DEVICE is made, at least in part, using the
TECHNICAL INFORMATION.
10. "NET SALES" as used herein shall mean, unless otherwise provided, the
invoice price at which the LICENSED PRODUCTS is sold by BECTON, to a purchaser
other than BECTON, less returns, allowances or credits, rebates, excise, sales,
use or value-added taxes, delivery charges billed on the invoice to the
purchaser, cash and trade discounts allowed, import duty, and commissions to
agents other than employees of BECTON.
11. "IMPROVEMENTS" as used herein shall mean improvements made to said
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DEVICES by BECTON.
12. "DEVELOPMENTS" as used herein shall mean improvements and modifications
made to DEVICE(S) by LICENSOR during the term of this AGREEMENT.
13. "OPTION PRODUCTS" as used herein shall mean:
(a) Safety Hypodermic Syringe, fixed or stake needle, using retractable
needle technology;
(b) Safety Hypodermic Syringe, luer type, using retractable needle
technology;
(c) Safety Arterial Blood Gas Syringe, add-on type, using retractable
needle technology;
(d) Safety prefilled glass Syringe, fixed or stake needle, using
retractable needle technology;
(e) Safety prefilled glass Syringe, luer type, using retractable
needle.
OPTION PRODUCTS shall not mean devices for injecting medication from
pre-filled vials, cartridges or ampoules.
ARTICLE II - GRANT
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1. Subject to the terms and conditions of this AGREEMENT, LICENSOR hereby
grants to BECTON (i) an exclusive worldwide right and license, under the PATENT
RIGHTS to make, have made, use and sell the LICENSED PRODUCTS, together with the
right to grant sublicenses throughout the world; (ii) an exclusive worldwide
right and license to use the TECHNICAL INFORMATION to make or have made the
LICENSED PRODUCTS, together with the right to grant sublicenses throughout the
world; and (iii) an assignment of ownership to U.S. Patent No. 4,900,307 in
accordance with Appendix F of this AGREEMENT.
ARTICLE III - PAYMENTS
----------------------
1. In consideration of the right and license herein granted to it, BECTON
shall purchase from LICENSOR for an aggregate purchase price of One Million Five
Hundred Thousand Dollars ($1,500,000) for shares of stock of Med-Design
Corporation and receive a seat on the Board of Directors of Med-Design
Corporation, as further described in the separate
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STOCK PURCHASE AGREEMENT, BECTON shall pay LICENSOR a nonrefundable payment of
Four Million Five Hundred Thousand Dollars ($4,500,000), within ten (10) days of
the EFFECTIVE DATE of this AGREEMENT and BECTON shall grant to LICENSOR a
limited non-exclusive right under U.S. Patent No. 4,900,307 in accordance with
Appendix G of this AGREEMENT.
2. In further consideration of the right and license herein granted to it,
BECTON agrees to pay LICENSOR while this AGREEMENT is in effect, for the term
herein defined, a royalty of [two and three quarter percent (2-3/4%)] of NET
SALES of LICENSED PRODUCTS sold by BECTON, from the EFFECTIVE DATE of this
AGREEMENT, except as provided in Paragraph 3 of this ARTICLE. The royalties
payable under this Paragraph are not applicable to LICENSED PRODUCTS sold by any
sublicensees, except as provided in ARTICLE X, Paragraph 3.
3. If no U.S. patent which contains a VALID CLAIM that covers the LICENSED
PRODUCT shall issue within two (2) years of the EFFECTIVE DATE of this
AGREEMENT, BECTON's obligation to pay royalties in the U.S. with respect to such
LICENSED PRODUCT shall be [one and three-eighths percent (1-3/8%)] of NET SALES
of the LICENSED PRODUCT, until such time as such U.S. patent does issue,
provided however, that if no U.S. patent with a VALID CLAIM covering the
LICENSED PRODUCT shall issue within six (6) years of the EFFECTIVE DATE of this
AGREEMENT then BECTON'S obligation to pay royalties on the LICENSED PRODUCT
made, used or sold shall cease.
4. It is mutually agreed that in situations where the LICENSED PRODUCT
hereunder is sold by BECTON in combination with other products not licensed
hereunder, such as a kit or package, the NET SALES on which the royalty rate is
applied shall be the NET SALES of the LICENSED PRODUCT if sold separately in a
transaction in substantially the same quantity at the same time as the
transaction to which this Paragraph relates and in accordance with Paragraphs 2
and 3. If the LICENSED PRODUCT is not sold separately in a transaction in
substantially the same quantity at the same time as the transaction to which
this paragraph relates, the NET SALES on which the royalty rate is applied shall
be calculated by applying to the total net selling price of the kit or package a
fractional multiplier having as its denominator the total manufacturing cost of
the kit or package and as its numerator the manufacturing cost of the included
LICENSED PRODUCT and in accordance with Paragraphs 2 and 3.
5. Royalties are payable by BECTON based solely on LICENSED PRODUCTS sold
by BECTON, on a country-by-country basis, until the PATENT RIGHTS on a
country-by-country basis herein expire or if no U.S. patent which contains a
VALID CLAIM that covers the LICENSED PRODUCT shall issue within six (6) years of
the EFFECTIVE DATE of this AGREEMENT, then BECTON's obligation to pay royalties
on the LICENSED PRODUCT shall cease.
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6. At the expiration of the period set forth in Paragraph 5 of this
ARTICLE, BECTON shall have a completely paid-up, royalty-free right and license
to subsequently make, have made, use, sell and sublicense the LICENSED PRODUCT,
and to use and sublicense the TECHNICAL INFORMATION to make or have made the
LICENSED PRODUCT throughout the world and shall have no further obligations to
LICENSOR.
7. (A) BECTON agrees to pay a minimum annual royalty to maintain its
exclusive licensee status hereunder only so long as there exists an unexpired
patent under PATENT RIGHTS having a VALID CLAIM covering one of the LICENSED
PRODUCTS. If the foregoing conditions are met, for each year, commencing on the
second anniversary of the EFFECTIVE DATE of this AGREEMENT, BECTON agrees to pay
to LICENSOR a minimum annual royalty, less any earned royalties which shall have
been paid to LICENSOR during the previous twelve (12) months, according to the
following schedule:
a. [One Hundred Thousand Dollars ($100,000)] on the second anniversary of
this AGREEMENT.
b. [Two Hundred Thousand Dollars ($200,000)] on the third anniversary of
this AGREEMENT.
c. [Three Hundred Thousand Dollars ($300,000)] on the fourth anniversary
of this AGREEMENT;
d. [Four Hundred Thousand Dollars ($400,000)] on the fifth anniversary of
this AGREEMENT and on each anniversary thereafter during the remaining
term of this AGREEMENT.
(B) If no U.S. patent which contains a VALID CLAIM that covers a
LICENSED PRODUCT shall issue within six (6) years of the EFFECTIVE DATE of this
AGREEMENT, BECTON'S obligation to pay minimums shall cease.
8. (A) Payment by BECTON of the royalties referred to in Paragraphs 2, 3
and 4 of this ARTICLE, or the minimum annual royalty referred to in Paragraph 7
of this ARTICLE, is considered to be complete satisfaction of any duty imposed
upon BECTON to commercially exploit the LICENSED PRODUCTS and is accepted by
LICENSOR in lieu of any best efforts obligation on the part of BECTON.
(B) Nothing in this AGREEMENT shall impose upon BECTON the obligation to
create, continue or maximize sales of the LICENSED PRODUCTS or prevent BECTON
from making, using or selling or causing to be made, have made, used or sold,
any place in the world, products competitive in nature to LICENSED PRODUCTS.
Nothing herein contained shall in any way limit BECTON's free and exclusive
right to determine in its discretion the timing or manner of marketing,
manufacturing or advertising the LICENSED PRODUCTS.
9. If BECTON does not pay the minimum annual royalty at the time such
minimum is payable, LICENSOR, at its option, may convert this AGREEMENT to a
nonexclusive license, at one-half the royalty rates as set forth in Paragraphs 2
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and 3 of this ARTICLE, upon written notice to BECTON. BECTON shall have ninety
(90) days after receiving such notice to make up any deficiencies in its
payments in order to maintain its exclusive licensee status. It is understood
that the monies representing any outstanding minimum payments are not
collectable as damages by LICENSOR if BECTON fails to make any such minimum
royalty payments, with the only remedy for LICENSOR being the conversion of the
license granted herein to a non-exclusive license as set forth above.
ARTICLE IV - COMMERCIAL DEVELOPMENT ACTIVITIES
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1. LICENSOR in consultation with BECTON, shall use its best efforts to work
with BECTON in any further design and development necessary to complete the
commercial development of the DEVICES and all of the objectives of the
commercial development program identified in Appendix E hereto.
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ARTICLE V - REPRESENTATIONS AND WARRANTIES
------------------------------------------
1. LICENSOR represents and warrants that it has the right to grant the
exclusive license as set forth in this AGREEMENT and is able to enter into this
AGREEMENT and become bound by the terms hereof.
2. LICENSOR represents and warrants that it knows of no patent and patent
applications owned by a third party that would be infringed by the making,
using, offering for sale, sale or importing of one of the products illustrated
and described in Appendix B and Appendix C.
3. LICENSOR represents and warrants that it has not received any notice,
whether written or oral, that the products illustrated and described in Appendix
B and Appendix C infringe any patents or patent applications of a third party.
4. LICENSOR represents and warrants that all documents, including, but not
limited to debt instruments, third party agreements, financing statements,
security interests, encumbrances and liens, have been disclosed by copy and in
writing to BECTON prior to the EFFECTIVE DATE of this AGREEMENT and that such
documents do not contain terms and conditions which would alter, amend,
supersede, interfere or void the terms and conditions of this AGREEMENT.
5. LICENSOR represents and warrants that it is under no obligation to any
third party that would interfere with its representations or obligations under
this AGREEMENT.
ARTICLE VI - PATENT PROSECUTION AND MAINTENANCE
-----------------------------------------------
1. (A) LICENSOR agrees to file and prosecute in good faith and without
delay all patent applications covering the DEVICES coming within PATENT RIGHTS.
LICENSOR shall keep BECTON currently informed of the filing and progress of all
aspects of the prosecution of all such applications and of the issuance of
patents, and shall inform BECTON to receive its input in any decisions which
would affect the scope of any issued VALID CLAIMS and other prosecutorial
details, including the potential abandonment of any application.
(B) LICENSOR agrees to file and prosecute in good faith and without
delay all patent applications coming within PATENT RIGHTS in the foreign
countries designated in writing by BECTON to LICENSOR, except as provided in
Paragraph C of this ARTICLE. LICENSOR agrees to prepare and dispatch foreign
filings within such period of time as will result in the application claiming
priority to the relating parent applications. LICENSOR shall keep BECTON
currently informed of the filing and progress of all aspects of the prosecution
of all such foreign applications and the issuance of foreign patents, and shall
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inform BECTON to receive its input in any decision which would affect the scope
of any issued VALID CLAIMS and other potential abandonment of any application.
(C) A country which BECTON desires LICENSOR to file and/or prosecute a
patent application in and LICENSOR does not desire to do so, shall be considered
an "ELECTED COUNTRY." LICENSOR shall file and/or prosecute the patent
application in the ELECTED COUNTRY and BECTON shall reimburse LICENSOR for
reasonable costs, expenses and legal fees that LICENSOR incurs for such activity
after the EFFECTIVE DATE of this AGREEMENT, provided, however, that one-half of
any payment made by BECTON to LICENSOR for such activity shall be credited
against future earned royalties for LICENSED PRODUCTS sold in the ELECTED
COUNTRY. LICENSOR shall provide a monthly itemized invoice to BECTON for such
expenses that are incurred after the EFFECTIVE DATE of this AGREEMENT no later
than thirty (30) days after the last day of each monthly period. Such itemized
invoice shall be forwarded to the attention of the Intellectual Property
Department at Becton Xxxxxxxxx and Company, I Becton Drive, MC 000, Xxxxxxxx
Xxxxx, Xxx Xxxxxx 00000. Payment of the invoice shall be made by BECTON to
LICENSOR within forty-five (45) days following review and approval by the
responsible attorney or designee, of the invoice submitted by LICENSOR. LICENSOR
shall make a good faith effort to negotiate a fair and reasonable rate for
costs, expenses and legal fees that will be reimbursed by BECTON.
2. LICENSOR agrees to maintain all issued U.S. and foreign patents and
applications coming within PATENT RIGHTS in good faith and without delay.
LICENSOR shall keep BECTON currently informed and shall permit BECTON to provide
its input in the potential abandonment of any patent or application.
3. All costs and expenses under this ARTICLE associated with all patent
applications and patents coming within PATENT RIGHTS shall be borne entirely by
LICENSOR, except as otherwise provided in this ARTICLE.
4. In no event shall BECTON be liable or responsible for any such costs or
expenses as set forth in Paragraph I of this ARTICLE after the termination of
this AGREEMENT, the expiration of this AGREEMENT, or in the event the AGREEMENT
becomes non-exclusive or royalties have ceased as provided in ARTICLE III,
Paragraph 3.
5. It is understood and agreed that all right, title and interest to
IMPROVEMENTS made by BECTON, including, but not limited to, any patents issued,
remain the sole property of BECTON and shall not be subject to any of the terms
of this AGREEMENT unless said IMPROVEMENTS would infringe a VALID CLAIM.
6. It is understood and agreed that LICENSOR shall promptly disclose to
BECTON all DEVELOPMENTS made by LICENSOR during the term of this AGREEMENT in
writing to BECTON and grant to BECTON, at BECTON's option an exclusive worldwide
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license, to make, use, sell and sublicense any one or more of LICENSOR's
DEVELOPMENTS, whether patented or not, at the same terms and conditions of this
AGREEMENT with the exception of the payment in ARTICLE III, Paragraph 1.
LICENSOR retains the exclusive rights to the DEVELOPMENTS for use with products
other than the DEVICES and any elected and licensed OPTION PRODUCTS. It is
understood that the DEVELOPMENTS disclosed to BECTON become part of the
TECHNICAL INFORMATION defined in ARTICLE I, Paragraph 5 and BECTON shall
maintain the DEVELOPMENTS in confidence as set forth in ARTICLE XII,
Paragraph 7.
ARTICLE VII - BOOKS OF ACCOUNT AND REPORTS
1. BECTON agrees to keep complete and accurate records of its sales of the
LICENSED PRODUCT sold and all data necessary for the computation of payments to
be made to LICENSOR hereunder. However, BECTON shall have no duty of trust or
other fiduciary relationship with LICENSOR regarding the maintenance of the
books of account or the calculation and reporting of royalties.
2. Payments under ARTICLE III, when due, shall be made on or before the
last business day of June, September, December and March of each year for the
sales of the LICENSED PRODUCT sold by BECTON during the preceding quarterly
periods ending on the last day of March, June, September and December,
respectively. Such payments to LICENSOR shall be accompanied by a statement
showing the total NET SALES of the LICENSED PRODUCTS sold by BECTON, and such
other particulars as are necessary for an account of the payments to be made
pursuant to this AGREEMENT. Payment of the amount due shall accompany such
statement, which shall be deemed to be true and correct unless objected to and
audited in accordance with Paragraph 4 of this ARTICLE.
3. (A) To the extent sales requiring a royalty payment may have been made
by BECTON in a country other than the United States, such royalty payments shall
be made by BECTON in United States dollars on the basis of conversion, from the
currency of such other country, at the rate of exchange recited in the report
entitled "Rates of Exchange" issued monthly by BECTON's International Finance
Department which provides spot exchange rates for each other country where sales
were made, on the last business day of the calendar quarter when the sales
occurred, and shall be paid at the time and in the manner set forth above,
provided however, that royalties based on sales in any other country shall be
payable to LICENSOR only after deducting for exchange and all other charges due
to other governments, including withholding taxes, arising from the origin and
transmittal of such royalties.
(B) The foregoing is subject to the right of BECTON to make payment of
royalties in any country where the currency is blocked and where legal
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conversion of the currency billed cannot be made into United States dollars by
depositing such royalty payments in each LICENSOR's name in a bank designated by
each LICENSOR within such country.
4. LICENSOR, at its own expense, shall have the right for a period of two
(2) years after receiving any report from BECTON to nominate an independent
Certified Public Accountant, acceptable to BECTON which acceptance shall not be
unreasonably withheld, who shall have access to BECTON's records during
reasonable business hours for the purpose of verifying the payments made under
this AGREEMENT, but this right may not be exercised more than once in any
calendar year and the Accountant shall disclose to LICENSOR information limited
only to the accuracy of the payment report and the payments made in accordance
with this AGREEMENT, provided, however, that if the payments made by BECTON on
the basis of BECTON'S reports are found to be in error by more than a negative
ten percent (10%), BECTON shall bear the cost of the audit. The failure of
LICENSOR to request verification of any payment report during said two (2) year
period shall be considered acceptance of the accuracy of such report and BECTON
shall have no obligation to maintain any records pertaining to such report
beyond said two (2) year period.
ARTICLE VIII - PATENT LITIGATION
--------------------------------
1. (A) In the event either party hereto receives notice of alleged
infringement of any of the PATENT RIGHTS, covering the DEVICES, it shall
promptly notify the other party in writing of such infringement. BECTON shall
have the right, but not the obligation, to bring suit and to control the conduct
thereof against the alleged infringer, and to join LICENSOR as a party to such
suit, in which event BECTON shall hold LICENSOR free, clear and harmless from
any and all costs and expenses of such litigation, including attorneys' fees. In
the event BECTON exercises the right to bring suit herein conferred, LICENSOR
shall have the right to receive twenty-five percent (25%) of the damages
recovered after a deduction for all legal expenses by BECTON, including
attorneys' fees, incurred and paid by BECTON in such lawsuit and BECTON shall
have the right to retain any remaining damages thereafter.
(B) If BECTON does not bring suit against said infringer, as herein
provided, within one hundred twenty (120) days after receipt of such notice,
LICENSOR shall have the right, but shall not be obligated, to bring suit for
such alleged infringement, and to join BECTON as a party to such suit only if a
court of competent jurisdiction determines BECTON is a necessary party to such
suit, in which event LICENSOR shall hold BECTON free, clear and harmless from
any and all costs and expenses of such litigation, including attorneys' fees. In
the event LICENSOR exercises the right to bring suit for such alleged
infringement, BECTON shall have the right to receive twenty-five percent (25%)
of all damages recovered after deduction for all legal expenses, including
attorneys' fees, incurred and paid by LICENSOR in such lawsuit and LICENSOR
shall have the right to retain any remaining damages thereafter.
(C) In any litigation under Paragraph I of this ARTICLE in which a third
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party challenges validity of those VALID CLAIMS alleged to be infringed, or any
litigation in which BECTON in a particular country challenges validity of those
VALID CLAIMS covering the LICENSED PRODUCT in a particular country, then upon
filing of such suit by a third party or BECTON, fifty-percent (50%) of all the
earned and minimum royalty payments, attributed to the country in which the
lawsuit is brought, which would otherwise be paid to LICENSOR, with respect to
LICENSED PRODUCT made or sold in the country affected by such lawsuit, shall be
deposited in an interest bearing escrow account. All monies in the escrow
account, together with all accrued interest, in the country affected by such
litigation, shall be retained by BECTON if those VALID CLAIMS are found invalid
or unenforceable by a court of proper jurisdiction in an unappealed or
unappealable decision, and, if at least one VALID CLAIM is found not invalid by
a court of proper jurisdiction in an unappealed or unappealable decision, all
monies in the interest bearing escrow account, together with all accrued
interest, in the country affected by such litigation, shall be released to
LICENSOR.
(D) Any VALID CLAIM held to be invalid, or unenforceable shall be
considered canceled from the PATENT RIGHTS effective as of the date BECTON or
the third party had received judgment in such legal action, subject however, to
reinstatement in the PATENT RIGHTS in the event that such VALID CLAIM is held
valid or enforceable by a court of proper jurisdiction in an unappealed or
unappealable decision.
(E) Each party shall always have the right to be represented by counsel
of its own selection and at its own expense in any suit instituted by the other
for infringement, under the terms hereof. Either party has the right, within
ninety (90) days of the filing of the original complaint, to join in, but not
control, any such infringement suit brought by the other party and shall share
equally in the cost and expenses of such litigation, including attorneys' fees,
and any sums recovered.
2. (A) If BECTON is sued by a third party, in a country, charging
infringement of a patent relating to LICENSED PRODUCTS resulting from the
making, using, or selling by BECTON, of LICENSED PRODUCTS, BECTON shall promptly
notify LICENSOR. Upon filing of such suit by a third party, fifty-percent (50%)
of all the earned and minimum royalty payments, attributable to the country in
which the lawsuit was brought, which would otherwise be paid to LICENSOR, with
respect to LICENSED PRODUCT made or sold in the country affected by such
lawsuit, shall be deposited in an interest bearing escrow account in the United
States.
(B) In the event of (i) a final adjudication in any suit enjoining
BECTON from making, using, or selling the LICENSED PRODUCT or holding BECTON
liable for damages or (ii) a settlement of such suit requiring payment of
damages by BECTON, an amount shall be deducted by BECTON from the escrow account
described in Paragraph 2 (A) of this ARTICLE, sufficient to reimburse itself for
all damages and legal expenses incurred and paid by BECTON in such suit. After
such deduction, any funds remaining in the escrow account, together with all
earnings on such account, shall be released and paid over to LICENSOR.
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(C) In the event of a final adjudication in any such suit which holds
the patent of such third party invalid or valid but not infringed, BECTON shall
deduct an amount from the escrow account described in Paragraph 2 (A) of this
ARTICLE, equal to its reasonable legal expenses incurred and paid by BECTON in
such suit that are not fully recovered as a result of final adjudication. After
such deduction, any funds remaining in the escrow account, shall be released and
paid over to LICENSOR.
3. While this AGREEMENT is in effect, should BECTON find it necessary, or
an exercise of reasonable business prudence, to obtain a license under any
patent rights from a third party in a particular country in order to render
marketable the LICENSED PRODUCT manufactured by or for, and/or sold by, BECTON,
or used by its customers or to use the TECHNICAL INFORMATION, it shall notify
LICENSOR of such decision. If such a third party license is obtained by BECTON,
or as a result of a settlement entered into with respect to patent rights
dominant to the rights herein granted, BECTON is required to pay and does pay
royalties to a party other than LICENSOR in respect of BECTON's sales of the
LICENSED PRODUCT in the particular country, the applicable prospective royalties
payable to LICENSOR with respect to the particular country, pursuant to this
AGREEMENT shall be reduced by BECTON to an amount equal to the amount of
royalties paid to such third party.
ARTICLE IX - OPTION
-------------------
1. During the first twelve (12) months of the EFFECTIVE DATE of this
AGREEMENT, LICENSOR shall disclose in writing to BECTON, subject to the
confidentiality conditions of ARTICLE XII, Paragraph 7, all information,
including, but not limited to patent applications, specifications, designs and
prototypes for OPTION PRODUCTS not previously disclosed to BECTON under any
other Agreement, for BECTON's consideration. At BECTON's option, LICENSOR shall
grant to BECTON an exclusive worldwide license, to make, use, sell and
sublicense any one or more of LICENSOR's OPTION PRODUCTS whether patented or
not, at terms and conditions to be negotiated.
2. In the event BECTON does not elect to exercise the option for an OPTION
PRODUCT under Paragraph I of this ARTICLE, BECTON agrees to grant LICENSOR a
limited non-exclusive license to make, use and sell the non-elected OPTION
PRODUCT under U.S. Patent No. 4,900,307. In accordance with Appendix H of this
AGREEMENT.
ARTICLE X - SUBLICENSING
------------------------
1. Sublicensing shall be the responsibility of BECTON so long as this
AGREEMENT remains in effect. Sublicenses granted under PATENT RIGHTS by BECTON
shall be non-exclusive licenses.
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2. The granting by BECTON of sublicenses under PATENT RIGHTS shall be in
the discretion of BECTON and BECTON shall have the sole and exclusive power to
determine whether or not to grant sublicenses under PATENT RIGHTS, the identity
of the sublicenses, royalty rates and terms and conditions of sublicenses.
ARTICLE XI - DURATION AND TERMINATION
-------------------------------------
1. Unless sooner terminated as herein provided in Paragraph 2 of this
ARTICLE, this AGREEMENT shall continue in effect until the expiration of the
last to expire patent within PATENT RIGHTS having a VALID CLAIM.
2. This AGREEMENT may be sooner terminated as follows:
(A) By BECTON at any time, giving LICENSOR sixty (60) days advance
written notice thereof. Such termination shall not operate to relieve BECTON of
its obligation to pay all unpaid earned royalties on the LICENSED PRODUCTS sold
prior to the effective date of termination. No payment of any outstanding
minimum royalty is due by BECTON to LICENSOR, if BECTON terminates this
AGREEMENT. BECTON's right to grant sublicenses shall terminate as of the date of
any such notice hereunder and all sublicenses granted prior to the date of such
notice shall terminate with the termination of this AGREEMENT.
(B) By LICENSOR effective immediately on notice to BECTON if BECTON: (i)
files a petition under the Federal Bankruptcy Code, or (ii) makes an assignment
for the benefit of creditors or has a receiver appointed for it, or otherwise
takes advantage of laws designed for the relief of debtors, all to the extent
permitted by the Intellectual Property Bankruptcy Protection Act (1988).
(C) Should a party hereto fail to perform any material covenant of this
AGREEMENT the sole and exclusive remedy of the non-defaulting party shall be
written notice of such failure to the party in breach or default who shall have
sixty (60) days from the date of notice to correct the breach or default, and
upon failure to do so, the party not in breach or default may cancel and
terminate this AGREEMENT upon written notice.
3. In the event this AGREEMENT is terminated by BECTON, BECTON agrees to
grant LICENSOR a non-exclusive, royalty-free license to U.S. Patent No.
4,900,307 in accordance with Appendix I of this AGREEMENT.
ARTICLE XII - MISCELLANEOUS
---------------------------
1. Any notice or other communication required or permitted by this
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AGREEMENT shall be deemed to have been validly delivered on the date mailed if
the same shall be mailed by registered or certified mail, postage prepaid,
return receipt requested, or faxed with confirmation, addressed as follows:
To LICENSOR: Med-Design Corporation
0000 Xxxxxx Xxxxxx
Xxxxxxx, Xxxxxxxxxx 00000
Attention: ________________
Tel No.: __________________
Fax No.: __________________
To BECTON: Becton, Xxxxxxxxx and Company
Becton Xxxxxxxxx Vacutainer Systems Division
0 Xxxxxx Xxxxx
Xxxxxxxx Xxxxx, XX 00000-0000
Attention: President
Tel. No.: (201) ___________
Fax No.: (000) 000-0000
With copy to: Becton, Xxxxxxxxx and Company
0 Xxxxxx Xxxxx
Xxxxxxxx Xxxxx, XX 00000-0000
Attention: Chief Intellectual Property Counsel
Tel. No.: (000) 000-0000
Fax No.: (000) 000-0000
2. This AGREEMENT shall not be assigned or transferable by LICENSOR without
the prior written consent of BECTON, which consent shall not be unreasonably
withheld, and shall be freely assignable or transferable by BECTON.
3. This AGREEMENT shall be binding upon and inure to the benefit of the
successor and assigns of BECTON to which this AGREEMENT relates and shall be
binding upon and inure to the benefit of the successors and assigns of the
LICENSOR to which this AGREEMENT relates.
4. Nothing herein contained shall be construed to place the parties in the
relationship of partners or joint venturers or principal and agent or create any
entity or association, and neither party shall have the power to obligate or
bind the other in any manner whatsoever.
5. LICENSOR shall not use the name of BECTON or any adaptation thereof in
any advertising, promotion, sales literature or packaging in a manner which
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would constitute an expressed or implied endorsement for any commercial product
without the prior written consent of BECTON.
6. Nothing herein contained shall be construed to grant to LICENSOR any
license or rights in any of BECTON's intellectual property including, but not
limited to, BECTON's know-how, trade secrets, and patents which are assigned
and/or licensed to BECTON, except as provided in this AGREEMENT with respect to
U.S. Patent No. 4,900,307.
7. In the event LICENSOR discloses TECHNICAL INFORMATION, DEVELOPMENTS,
OPTION PRODUCTS and/or information on PATENT RIGHTS under prosecution to BECTON,
and BECTON discloses confidential information under ARTICLE IV and APPENDIX E to
LICENSOR, during the term of this AGREEMENT that were not previously disclosed
under any other Agreement, BECTON and LICENSOR agree to the following terms and
conditions:
a. For a period of three (3) years from the EFFECTIVE DATE of this
AGREEMENT, BECTON agrees not to disclose the TECHNICAL INFORMATION,
DEVELOPMENTS, OPTION PRODUCTS, and/or information on PATENT RIGHTS under
prosecution, it receives from LICENSOR that is marked confidential to
anyone not employed by BECTON without LICENSOR's consent and LICENSOR
agrees not to disclose BECTON's confidential information under ARTICLE IV
and APPENDIX E it receives from BECTON that is marked confidential to
anyone not employed by LICENSOR without BECTON's consent.
b. The recipient of the information in Section a shall not be bound by the
obligations of this Paragraph 7 unless the discloser provides the recipient
such information reduced to writing and marked as "Confidential" within
thirty (30) days of such disclosure.
c. The obligations of the recipient under this Paragraph 7 shall not apply
to any information, which:
(i) is already known to recipient or is independently developed by
recipient as established by recipient's written records; or
(ii) is or becomes publicly known, through no wrongful act of
recipient; or
(iii) is rightfully received from a third party without restriction
and without breach of this Agreement; or
(iv) is approved for release by written authorization by discloser.
8. Neither BECTON nor LICENSOR shall be responsible for and the terms of
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this AGREEMENT shall be inapplicable to any default or delays which are due to
cause beyond BECTON's or LICENSOR's control, including but without limitation
acts of God or of the public enemy, acts or any order of a government, fires,
floods, or other natural disasters, embargoes, accidents, explosions, strikes,
or other labor disturbances (regardless of the reasonableness of the demands of
labor), shortages of fuel, power or raw materials, inability to obtain or delays
of transportation facilities, incidents of war, or other events causing the
inability of BECTON or LICENSOR, acting in good faith with due diligence, to
perform its obligations under this AGREEMENT.
9. BECTON makes no warranty and will accept no liability for any expenses
or damages of whatever kind or nature, including consequential damages, incurred
by LICENSOR as a result of this AGREEMENT.
10. This AGREEMENT constitutes the entire agreement between the parties
hereto with respect to the subject matter hereof, and no modification of this
AGREEMENT shall be effective unless it is in writing and is signed by a duly
authorized representative of each party. There are no understandings,
representations or warranties except as herein expressly set forth.
11. The failure or delay of a party hereto to enforce any of its rights
under this AGREEMENT shall not be deemed to be a continuing waiver or a
modification by such party of any of its rights under this AGREEMENT, and a
party may, within the time provided by the applicable law, commence appropriate
legal proceedings to enforce any or all of its rights under this AGREEMENT. Any
failure to enforce or delay in enforcement shall not constitute a defense.
12. LICENSOR shall not originate any publicity, news release or public
announcement, written or oral, whether to the public, press or otherwise,
relating to this AGREEMENT, or that the AGREEMENT has been negotiated or
executed, or the terms and conditions of this AGREEMENT, or to any amendment
hereto or performance hereunder, without the written approval of BECTON, which
approval shall not be unreasonably held. LICENSOR shall not disclose to any
third party the terms and conditions of this AGREEMENT unless required by law.
13. Should any part or provision of this AGREEMENT be held unenforceable
or in conflict with the law of any jurisdiction, the validity of the remaining
part or provisions shall not be affected by such holdings.
14. This AGREEMENT shall be construed, interpreted and applied in
accordance with and governed by the laws of the State of New Jersey, United
States of America and the parties hereby submit to the jurisdiction of the
courts of that State.
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IN WITNESS WHEREOF, LICENSOR and BECTON have caused this AGREEMENT to be duly
executed in duplicate originals as of the date first hereinabove written.
The Med-Design Corporation, Becton, Xxxxxxxxx and Company
By: /s/ Xxxxx Xxxxxxx By: /s/ Xxxxxxx Xxxxxx
--------------------- ----------------------
Xxxxx Xxxxxxx Xxxx Xxxxxx
President President
Worldwide Sample Collection
Date: December 11, 1998 Dated: December 11, 1998
----------------------- ------------------------
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