1
EXHIBIT 10.3
LICENSE AGREEMENT
THIS AGREEMENT, is made by and between:
Creative Products International, Inc. ("Creative), a corporation, organized and
existing under the laws of Delaware, located at X.X. Xxx 0000, Xxxxxxx,
Xxxxxxxxxx 00000, and Caring Products International, Inc. ("Caring"), a
corporation, organized and existing under the laws of Delaware, located at 000
Xxxxx Xxxxxx Xxxx, 0xx Xxxxx, Xxxxxxx, Xxxxxxxxxx 00000;
WHEREAS, Creative is the owner of a certain Patent (as defined below); and
WHEREAS, Caring wishes to acquire the right to use such Patent.
NOW, THEREFORE, in consideration of the foregoing and of the mutual promises
hereinafter set forth, the sufficiency of which is hereby acknowledged, the
parties agree as follows:
1. DEFINITIONS
As used in this Agreement, the following terms shall have the meaning as set
forth below:
1.01 "Patent" or "Licensed Patent" means U.S. Patent Number 5,360,522 issued on
November 1, 1994.
1.02 "Licensed Products" shall mean adult pant-sized goods within the Licensed
Field whose manufacture, use, importation, offer for sale, and/or sale is
covered by one or more of the claims of the Licensed Patent.
1.03 "Licensed Field" shall mean the adult incontinence market. For the purpose
of this Agreement, "Adult Incontinence" is defined as the temporary or permanent
loss of bladder function of men and women over the age of 21. The following
markets are specifically excluded from the Licensed Field: children's toilet
training, handicapped children including those wearing adult-sized incontinence
products of any type, child bed wetters, infant diaper use, control of excess
fluids caused by menstruation or hemorrhaging, fecal incontinence, or any other
market other than Adult Incontinence as defined above.
1.04 "Effective Date" shall mean that date of execution of the last party to
execute this Agreement, as shown on the execution page.
1.05 "Maintenance Costs" shall mean all government, maintenance, renewal, issue,
extension fees, annuities, and attorneys' fees, and all other expenses and costs
incurred in maintaining the Licensed Patents in full force and effect as set
forth in Section 8 below.
2
1.06 "Confidential Information" shall mean any and all inventions, ideas,
processes, methods, prototypes, designs, drawings, specifications,
documentation, instructions, and any and all technical, trade, marketing,
manufacturing, production, customer, pricing, margin, distribution, business,
sales, and other information obtained by Caring from Creative under the terms of
this Agreement.
1.07 "Improvements" shall mean all modifications, improvements, variations,
enhancements, refinements, or developments made by Caring to the Licensed
Product.
2. GRANT OF LICENSE
Creative grants to Caring a worldwide, exclusive, nontransferable,
non-assignable royalty-free license to offer for sale, import, manufacture, have
manufactured, use, and/or sell Licensed Products in the Licensed Field
3. IMPROVEMENTS
No Improvements may be made without the express consent of Creative. Any such
Improvements made by Caring shall be the sole and exclusive property of
Creative. Creative hereby grants and agrees to grant to Caring a non-exclusive
license for any such Improvements developed by Caring.
4. OWNERSHIP OF PATENT
Caring acknowledges the ownership of the Patent by Creative, will do nothing
inconsistent with such ownership, and will assist Creative in recording this
Agreement with appropriate government authorities if so requested by Creative.
Nothing in this License shall give Caring any right, title, or interest in the
Patent other than the right to use the Patent in accordance with this License,
and Caring will not attack the title of Creative to the Patent or attack the
validity of this License.
5. FORM OF USE
Caring agrees to xxxx permanently and legibly all products and documentation
imported, manufactured, offered for sale, or sold by it under this Agreement
with such patent notice as may be permitted or required under Title 35 of the
United States Code.
6. INFRINGEMENT PROCEEDINGS
6.01 Caring agrees to notify Creative in writing of any unauthorized use or
other suspected infringement of the Licensed Patent by others promptly as it
comes to Caring's attention. Creative may bring, in its sole discretion,
appropriate proceedings against such infringers. Any such suit shall be
prosecuted wherever possible in the name of Creative and by its counsel, and the
expenses of any such suit shall be borne by Creative. Creative shall not be
liable in any way to Caring for taking or for not taking any action regarding
such actual or suspected infringement.
2
3
6.02 Caring shall not be entitled to take or institute any action thereon,
either by way of informal protest or legal, equitable or criminal proceedings,
without express written approval unless, after notice by Caring, Creative fails
to take reasonable action to protect the Patent and such failure may lead to an
impairment of Caring's rights under this Agreement. In such case, the costs
shall be borne entirely by Caring. Creative shall execute all papers necessary
in connection with such suit and shall testify in any such suit whenever
required to do so by Caring all, however, at the expense of Caring with respect
to travel and similar out-of-pocket disbursements.
7. TERM
This Agreement shall begin on the Effective Date and shall expire on the expiry
date of the Licensed Patent unless sooner terminated as provided for herein.
8. PROSECUTION AND MAINTENANCE
8.01 Creative, at its sole cost and expense, shall take or cause to be taken all
actions necessary or otherwise required to maintain in full force and effect,
the Licensed Patent including the payment of all maintenance fees, and the
submission, filing, and recordation of all necessary papers, documents,
arguments, and the like, for the Licensed Patent.
8.02 Creative is under no obligation to file for patent protection outside the
United States. Should Caring wish to file for such protection, it may, after
notifying Creative in writing, do so at its own expense in the name of Creative
Products.
9. CONFIDENTIALITY AND NON-USE
9.01 Caring shall not disclose, disseminate and/or in any way make available to
any third parties or use any Confidential Information provided by Creative,
provided, however, that disclosure and use may be made of any such Confidential
Information at any time if Caring can prove: (i) that it first obtained the
prior written consent of Creative for such disclosure or use; or (ii) the
Confidential Information has become generally publicly known in the industry
through no fault of Caring; or (iii) the Confidential Information was provided
to Caring by a third-party having no duty to retain such Confidential
Information in confidence; or (iv) the Confidential Information was
independently developed by Caring without the use or benefit of any Confidential
Information disclosed to it under this Agreement.
9.02 Caring shall use reasonable and appropriate care to avoid unauthorized
disclosure, access and/or dissemination of any Confidential Information.
Prohibition of disclosure and use of Confidential Information shall not apply to
disclosure by Caring to, or use by, its employees and agents, provided that such
disclosure or use is reasonably necessary under this Agreement and provided that
Caring secures written confidentiality and non-use agreements for all such
employees and agents whereby each such person agrees to be bound by the
confidentiality and non-use terms and provisions of this Agreement.
9.03 The terms, provisions and conditions of this Section 9 shall survive the
expiration and/or termination of this Agreement.
10. TERMINATION FOR CAUSE
10.01 Except as may otherwise be expressly provided in this Agreement, in the
event either party hereto shall materially breach or default in the performance
of any of the terms, conditions or obligations to be performed by it hereunder,
and if such breach or default is not cured within thirty (30) days after the
breaching or defaulting party receives written notice from the other party of
such material breach or default, then and in any such event, the non-breaching
or defaulting party may immediately terminate this Agreement and all of the
rights and obligations hereunder (except as otherwise expressly provided by this
Agreement).
3
4
10.02. In the event Caring sells all or substantially all of its business,
ceases doing business, and/or otherwise winds up its business this Agreement
shall terminate immediately without notice or need of any further action by any
party hereto.
10.03 Creative shall have the right to terminate this Agreement upon thirty (30)
days written notice to Caring in the event of any affirmative act of insolvency
by Caring, or upon the appointment of any receiver or trustee to take possession
of the properties of Caring or upon the winding-up, sale, consolidation, merger
or any sequestration by governmental authority of Caring, or upon breach of any
of the provisions hereof by Caring.
10.04 Creative shall have the right to terminate this Agreement upon thirty (30)
days written notice to Caring in the event that Caring fails to market any
Licensed Product within the Licensed Field within a period of two years from the
Effective Date of this Agreement.
11. EFFECT OF TERMINATION
11.01 Upon termination of this Agreement Caring agrees: (a) to immediately
discontinue all use of the Patent, (b) to cooperate with Creative or its
appointed agent to apply to the appropriate authorities to cancel any recording
of this Agreement from all government records, and (c) that all rights in the
Patent shall continue to remain the sole and exclusive property of Creative and
that Caring shall have no rights of any kind in the Patent.
11.02 In the event of any termination for cause, in addition to the other rights
and remedies granted in this Agreement, Creative may exercise all remedies
available to it at law or in equity.
12. WARRANTIES
Nothing in this Agreement shall be deemed to be a representation or warranty by
Creative (a) of the validity or scope of the Patent; (b) that anything imported,
made, used, offered for sale, sold, or otherwise disposed of is or will be free
from infringement of patents of third persons; (c) that any process performed
under any license granted in this Agreement is or will be free from infringement
of patents of third parties; (d) of the accuracy, safety, or usefulness for any
purpose, of any patent any time made available by Creative. Caring assumes the
risk of all of its activities hereunder, including use of the Patent and the
importing, manufacture, use, offering for sale, or sale of the Licensed
Products.
13. ASSIGNMENTS
This Agreement and/or the rights and licenses granted herein may not be assigned
and/or otherwise transferred by Caring without the prior written consent of
Creative.
14. RELATIONSHIP OF THE PARTIES
Nothing in this Agreement shall be construed to create a partnership, joint
venture, or agency relationship between the parties. Neither Caring nor Creative
shall have any right, power, or authority to act as a legal representative of
the other, and neither party shall have any power to obligate or bind the other,
or to make any representations, express or implied, on behalf of or in the name
of the other in any manner for any purpose whatsoever.
15. SEVERABILITY
If any part, term, or provision of this Agreement shall for any reason be found
invalid, illegal, unenforceable, or in conflict with any valid controlling law,
such term or provision shall be separated from this Agreement and such
invalidity, illegality or unenforceability shall not affect any other term or
provision hereof and this Agreement shall
4
5
be interrupted construed as if such term or provision, to the extent the same
shall have been held invalid, illegal, or unenforceable, had never been
contained herein.
16. WAIVER, INTEGRATION, ALTERATION
16.01 Waiver. The waiver of a breach hereunder may be effected only by a writing
signed by the waiving party and shall not constitute, or be held to be, a waiver
of any other or subsequent breach, or to affect in any way the effectiveness of
such provision. Failure by either party to object to a breach by the other party
shall not constitute or be held to be a waiver of the party's right to later
object to, or to terminate this Agreement, due to any other breach or subsequent
breach.
16.02 Integration. This Agreement contains the entire agreement between the
parties and supersedes all other agreements, representations, and warranties,
expressed or implied, between the parties concerning the Licensed Patent and
Licensed Products.
16.03 Alteration. Any modification or amendment of this Agreement shall be
effective only if made in writing and signed by both parties hereto.
17. INTERPRETATION OF AGREEMENT
Caring and Creative each understand, acknowledge and agree that this Agreement
is and shall be deemed to have been negotiated, signed and entered into in New
York, New York, United States of America. This Agreement shall be construed and
governed in accordance with the laws of the State of Washington, United States
of America, without regard to the rules of conflicts of law, except as to any
provisions hereof that are governed by the laws of the United States of America,
in which case that U.S. law shall govern. The parties agree that any lawsuit or
dispute relating to the enforcement, interpretation, or construction of this
Agreement shall be brought only in a United States District Court in Seattle,
Washington, and/or, if applicable, a State court in the County of King, State of
Washington hereby consent to exclusive personal jurisdiction by such courts, and
agree that venue is proper only in such court(s). The parties hereby waive all
objection to such jurisdiction and venue.
18. NOTICES. Any communications or notices required or permitted to be given
under this Agreement shall be in writing and will be deemed sufficiently given
if delivered personally, sent by documented overnight delivery service, mailed
by certified mail, or to the extent that receipt is confirmed, telecopy, telefax
or other electronic transmission service, addressed to the party concerned as
follows:
If to Creative:
Xx. Xxxxx Xxxxxxxx
--------------------------------
0000 Xxxxxxxx Xxxxxx
--------------------------------
Xxxxxxx, Xxxxxxxxxx 00000
--------------------------------
Facsimile: (000) 000-0000
-----------------------------
Telephone number: (000) 000-0000
----------------------
with a copy to:
Xxxxxx X. Xxxxx, Esq.
--------------------------------
Xxxxx Xxxx, LLP
--------------------------------
000 Xxxx Xxxxxx
--------------------------------
Xxx Xxxx, Xxx Xxxx 00000
--------------------------------
Facsimile: (000) 000-0000
-----------------------------
Telephone number: (000) 000-0000
----------------------
5
6
If to Caring:
000 Xxxxx Xxxxxx Xxxx
--------------------------------
Xxxxxxx, Xxxxxxxxxx 00000
--------------------------------
Facsimile: (000) 000-0000
-----------------------------
Telephone number: (000) 000-0000
----------------------
19. BINDING
This Agreement shall be binding upon the parties hereto and their respective
permitted successors and assigns.
20. HEADINGS
All Section headings are provided in this Agreement for convenience only and
shall not be deemed to substantively alter the content of such Sections.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
as of the date below their respective signatures.
CREATIVE PRODUCTS INTERNATIONAL, INC.
/s/ Xxxxx Xxxxxxxx
--------------------------------------
By: Xxxxx Xxxxxxxx
Title: Chairman of the Board
Date: June 30, 1999
-----------------------------------
CARING PRODUCTS INTERNATIONAL, INC.
/s/ Xxxxx Xxxxxxxx
--------------------------------------
By: Xxxxx Xxxxxxxx
Title: President
Date: June 30, 1999
-----------------------------------
6