EXHIBIT 10.20
PATENT LICENSE AGREEMENT
The Eye Microsurgery Entersectoral Research and Technology Complex, Moscow,
Russia, represented by General Director Xx. Xxxxxxx S. N., from here and
referred to as the "Licenser" and STAAR Surgical AG, a Swise corporation, Hidau,
Switzerland represented by President Xx. Xxxxxxxx Xxxxxxxx and Director Xx. Xxxx
X. Xxxx, from here and referred to as the "Licensiate", taking into account that
the Licenser possesses the "Technology for Producing Collagen-Based Cross-Linked
Drain", and the Licensiate wants to acquired the license on this technology.
The Licenser and Licensiate agree as follow understandings, which shall
become in force since 1. 1. 96.
ARTICLE 1.
DEFINITIONS: For the purpose of this Agreement the following expressions have
the meanings indicated below:
1.1 "Product" is the product described in Appendix 1.
1.2 "Patent" is the patent whose detailed description is given in Appendix
2 and also future inventions are given in Appendix 3.
1.3 "Technical knowledge" stands for technical information, know-how,
manufacturing technology, technical data, material specifications, and other
information used by the Licenser during the manufacture of the product (or which
is necessary and sufficient for the Licensiate to make the Product according to
the standard and quality of the product made by the Licenser), (including any
improvements obtained during the validity period of this Agreement).
1.4 "Territory" covers all countries listed in Appendix 5.
1.5 "Exclusive territory" covers the countries listed
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in part 1 of Appendix 4.
1.6 "Non-exclusive territory" covers the countries listed in part 2 of
Appendix 4.
1.7 "Year" means any period of time of 12 months starting from the date of
executing the Agreement.
ARTICLE 2.
The Licenser is an owner of Patents listed in Appendix 2, and has the right
of disposal of the said Patents.
No prior transfers occured. No share or total property covered by the
Patents have been transfered, yielded or alienated to any person exept for the
Licensiate according to this Agreement.
The Licenser has not given any license under listed in Appendix 2 patents
yet. The Licenser's rights are free from the right of detension, pledge, backing
interest or other proprietary burdans. The Licenser disclosed to any third legal
or phisical person no confidental information, production secrets or know-how,
relating to the technical aspects of the Patents, except claim 3 in Appendix 1,
on which Licenser conduct the joint measures only with Licensiate.
Furthermore. the Licenser has production secrets and experience (know-how)
concerning the subject matter of this license.
ARTICLE 3.
Transferense of rights on the Patents and patent applications.
For valuable consideration, the receipt and sufficient of which are
confirmed by the Licensiate, the Licenser assigns to the Licensiate its entire
and exclusive rights, title, interest, and material right relating to the
"Patent" described in Appendix 2, and also the future Patents described in
Appendix 3 to this Agreement. The Licensiate shall acquire the entire and
exclusive right belonging to the Licenser to the Licensiates benefit for the
whole term of validity of the Patent.
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ARTICLE 4.
I. Technical field of application.
The license for the "Technology for Producing Collagen-Based Cross-Linked
Drains" relates to time entire sphere of application of the inventions mentioned
in the patents and listed in the Appendix 2 and 3, as well as everything that
definitively stems from these inventions.
The Parties shall infirm each other openly and without any reservations on
the possible fields of application of the inventions, that were unknown to the
Parties at the day of conclusion of the Agreement, and, as proved later, can be
carried by the Parties into effect and/or can be wanted for realization.
II. License type.
The Patent deals with an exclusive license:
(a) In so doing, however, the Licenser keeps the right of manufacturing
the products covered by the license, to use them or sell on a non-exclusive
territory specified in part 2 of Appendix 4.
(b) Furthermore, the Licenser reserves a right of realizing the product by
the license in its branches and joint ventures, existing or to be created, on
the exclusive specified in part 1 of Appendix 4, without right of salling to any
another third person on the exclusive territory. This thesis in force only for
cases when operation in medical branches and joint ventures is realized
surgeons, these surgeons works in Eye Microsurgery Intersectoral Research and
Technology Complex and officialy sents on the contract with the Licenser.
(c) This license is intended for manufacture, use and sale.
ARTICLE 5.
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Territory covered by the Agreement.
The license was granted for use on the exclusive territiry (see Appendix
4).
The Licensiate has the right of production on the other countries including
those where the Licenser has no protective rights. The Licenser shall prevent
export to the countries which belongs to non-exculsive territory.
If, in spite of this, the export shall be effected, the Licensiate shall
have the right of cancelling the Agreement by means of a simple written message.
The Licenser shall pay conventional penalty equal to 20-fold price of the
export delivery, which is inadmissible by virtue of the above statements.
In the equivalent manner the Licenser shall put on its customers an
obligation to avoid export of the subject matter of this license, because it is
inadmissible according to the above statemnts, and to pay to it a conventional
penalty in an amount of 20-fold price of the exported goods in every case of
infringment. This sum the Licenser shall transfer to Licensiate.
Article 6.
License registration.
Each Party shall have the right of registering the license in the Patent
Office provided that such registration of the country or countries, with respect
to which the license is given. The Licenser shall transfer to the licensiate the
authority and approval swich is necessary for this purpose. The registration fee
shall be covered by the licensiate.
Article 7.
Drawings and descriptive documents.
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The Licenser shall give to the Licensiate all existing drawing, plans,
quality inspection system, and other technical documents required for the
manufacture under license. These documents may be dublicated. The Licensiate
shall treat these drawings and documents as secret materials during the entire
term of action of this Agreement and after it will be expired.
Article 8.
Mastering.
The Licenser is released from responsibility for the risk associated with
the industrial-scale mastering of the manufacture under license for which the
Licensiate is responsible.
The Licenser is released from responsibility for the risk of the commercial
realization of the invention. The realization risk is taken solely by the
Licensiate.
Article 9.
I. Quality of products manufactured under license.
The Licesiate shall manufacture the products under license whose quality is
the same as those manufactured by Licenser. The licenser provides all necessary
consultations and information accumulated from its own experience.
II. Consequences of poor quality of products manufactured under license.
The Licenser has the right of quality monitoring so as to check of the
products manufactured under license correspond to the quality established by the
Agreement.
III. Sublicenses.
1. The Licensiate has the right to offer sublicenses.
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2. In case of selling of sublicense the earning is distributed
between the Licenser and Licensiate of this Agreement in equal parts.
Article 10.
Improvements and amendments of the subject of license.
The Parties concluding this Agreement agree that they consider as secret
all technical and technological information relating to the Production under
license and made available to the Licensiate.
The information obtained from the Licenser is kept in secret during the
entire validity period of the Agreement and after the validity period of this
Agreement is expired.
The Licensiate has the right to use free of charge the entire technical
information after the validity period of this Agreement is expired.
Article 11.
Improvements and amendments of the subject of license.
The Licenser is obliged to inform the Licensiate about all modifications
made and improvements, that shall be made during the validity period of this
Agreement and concerning the subject matter of the license.
If the amendments and improvements shall lead to a patentable invention, it
must be transferred to the Licensiate free of charge with simultaneous
prolongation of the period validity under definite conditions.
Article 12.
Technical assistance.
The Licenser submits to the Licensiate scrupulously and unconditionally all
technical assistance and necessary advisement.
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The Licenser, at the expense of the Licensiate, shall sent specialists
under the following conditions:
- the skill of the sent personnel must be sufficient for solving the
technical problems that may arise with respect to the Agreement;
- the period of working shall be agreed later;
- the Licensiate shall cover the expenses associated with the
accommodation, transportation and insurance of the expartiate personnel.
The Licensiate shall pay the personnel wages in US dollars in an amount
twice he sum they have in their own country.
Article 13.
Amendments and improvements to be made by Licensiate.
The amendments and improvements that shall be made by the Licensiate with
respect to the subject of the license may be made without special permission of
the Licenser. The Licensiate has the right to perform the amendments and
improvements without Licenser's permission provided that the Licensiate alone
shall be responsible for these amendments and improvements.
Article 14.
Payment with conclusion of the Agreement.
14.1 The Licensiate shall pay to the Licenser on the corresponding account
of Russian "Vneshtorgbank" No 000-000-000 in the National Republican Bank of
New-York, USA, with an order to credit for the above sum account No 00000000/001
the Eye Microsurgery Intersectoral Research and Technology Complex in the
"Vneshtorgbank" Moscow the cum of the three hundred fifty thousand US dollars
(350.000 USD) as a single payment within 10 days when this Agreement come into
force and before transference of documents and draughts. Documentation shall be
transfered to the Licensiate when said sum comes to the specified bank.
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14.2 The sum of two hundred fifty thousand US dollars (250.000 USD) shall
be payed by the Licensiate on the before specified account within 10 dais after
receipt if the signed by the Licenser acts about full concession of the patent
rights.
14.3 The sum of one hundred fifty thousand US dollars (150.000 USD) shall
be payed by the Licensiate on the before specified account within 10 days after
receipt of the official decision of US Patent Office about registration of full
concession on the Licensiate name.
Article 15.
Royalty.
The Licensiate pays to the Licenser royalty depending on the volume of year
sales and as compensation of license price. Royalty pays as a percentages of
sums paid by its buyers for the products made under conditions of free plant
without packing, as well as the sums obtained from learning the technology used
in opthalmosurgery with deduction of trade taxes.
Then the volume of sales:
to 25.000 pieces.................5,0%
from 25.000 to 50.000 pieces.................4,5%
from 50.000 to 75.000 pieces.................4,0%
from 75.000 to 100,000 pieces................3,5%
more than 100,000 pieces................3,0%
Article 16.
Appearance of the right for license payment.
The right for license payment arises as soon as the Licensiate gets payment
from the buyer.
Article 17.
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Taxes and duties.
If direct sales taxes is taken in the Licesiates country, or in the country
on non-exclusive territory, they are paid by the Licensiate.
Article 18.
Accounting and reports.
The Licensiate is obligated to keep account in special books, in which it
shall put the accurate number of the products manufactured under license
according to this Agreement, original numbers applied onto the machines and all
other data need for calculation of the license prise. The Licenser has the right
to give an order to audit these books and their correspondence with the general
accounting of the Licensiate through an auditor by the Licensiate.
The Licensiate shall bear the expenses associated with such an audit.
Article 19.
Calculation on license payments.
The calculations on the license payments are performed at the end of each
quarter of a calendar year. The Licensiate shall send the complete data on these
calculations within a month following the day of their performance and to remit
the calculated sum within the same period.
If the Licensiate exceeds a time limit for payment, the Licenser may take
annual interest of 6% within 60 days each quarter.
Article 20.
Obligation on using the license.
The Licensiate is obliged to use the license.
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Article 21.
Affair on patent applications.
The Licenser pledges oneself to continue affair in russia and other
countries on application, patents on witch are not given by Patient Offices.
The Licensiate pledges oneself to give to the Licenser the copies of
decision of Patient Offices about full transference of patient rights on
inventions, within 10 days since the moment of receipt by the Licensiate.
Article 22.
Patent support.
The Licensiate shall support the Patent that is put as a base of this
license Agreement.
Article 23.
Patent rights protection.
If the Patent is infringed by a third party and the Licenser becomes aware
such infringement, the Licenser shall promptly notify the Licensiate in writing
of such infringement or unfair competition. The Licensiate, in its sole
discretion, shall determine if it shall defend the Patent infringement or unfair
competition, it shall so notify the Licenser. The Licenser agrees to cooperate
and assist in prosecution of any action in the nature of unfair competition or
patent infringement prosecuted by the Licensiate.
The Licenser shall support the Licensiate, fir of all, if such a support is
provided by the property right of the respective country. The Licenser shall
give the Licensiate all necessary authority and documents that shall enable the
Licensiate to bring a suit and to present witnesses or
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coauthors and also to take an active part infringement proceeding.
The party making a decision to suit the third party bears possible expenses
in preparation and conduction of legal proceedings.
Article 24.
Licensiates obligation to defend the parent rights.
The Licensiates commit itself that neither its personally nor its
authorized person shall dispute the patent rights put in the base of this
Agreement except the cases.
Article 25.
Cancellation of Patent: its effect on the Agreement.
If the protective rights setting up the base of this Agreement are
cancelled by the claim of a third party, the paid license payments in no case
shall be reimbursed, however, if the term of their payment does not yet
come,they shall not be taken.
Article 26.
Agreement validity.
The Agreement validity period is equal to that of the patent validity.
The Agreement shall come into force from the moment of its signing.
Article 27.
Force Majeure.
Either party is relieved from liability for partial or complete non-
performance of their obligations under present
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Agreement is some circumstances that aroused independent of their will.
The circumstances caused by events that were independent of the will of the
parties of this Agreement so that the fair party could not avoid or eliminate,
are considered as cases realising this party from its obligations, if they take
place after signing the Agreement and prevent its fulfillment completely of
partially.
The cases of unsurmountable force are reduced to the following events: war,
military actions, revolts, mobilization, road accidents and natural disasters,
legal acts of authorities affecting the fulfillment of the obligations, and all
other events which are considered as circumstances of unsurmountable force by a
competent arbitration court.
Article 28.
Applicable legislation.
This Agreement is applicable to the Swiss Law.
Article 29.
Legal protection and arbitration.
If any dispute or difference shall arise between the parties to this
Agreement as to any matter or thing arising in connection with the Agreement
then the agrrieved party shall give to the other party a notice in writing
setting out in full detailed particulars of the dispute or differences. Upon
receipt of the notice the parties shall agree to appoint the International
Chamber of Commerce shall appoint a date, time and venue (unless the parties
agree to a date, time and venue) for mediation proceedings to be held to discuss
in detail the dispute or difference. The parties shall not be legally
represented at the mediation proceedings but shall present, in their own manner,
with the assistance or witnesses and documentary evidence, the
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details of their respective cases. If, at the conclusion of the mediation
proceedings the parties fail to resolve the dispute or difference, either party
may give to the other party, within 14 days, a notice stating that the
expiration of 30 days it will proceed to have the dispute of differents referred
to a court of competent jurisdiction in Switzerland (or another country as the
parties agree) and at the expiration of such 30 days may so proceed.
Article 30.
Miscellaneous.
1. This Agreement covers all agreed provisions and aspects of the License
Agreement. It has no additional promises or terms as a condition of execution of
the License Agreement, along with other terms except those stated above. All
preliminary agreements, promises, negotiations or presentations, which are not
included into this License Agreement shall not be valid from the moment of its
singing. Any subsequent agreement, which shall lead to a charge or cancellation
of this License Agreement, shall be valid solely if it is made in writing and
signed by the authorized representatives of both parties.
2. Successors and Assigns.
This Agreement and all of its provisions shall be binding and insure to the
benefit of the successors and assigns of the parties.
If not states specifically in this Agreement, all requested notices,
requirements, questions, agreed statements, approvals, or other communications
between the partners shall be made in writing and delivered: (A) by a messenger
(such a message is delivered personally), (B) by telegraph or air express mail
(in doing so the messaged are sent by R-mail), (C) electronic mail, fax or
telephone provided that the receipt has a compatible device or confirms the
receipt of the message (in this case it is assumed that the
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transmission or reception of the message will be confirmed), or (D) by mailing a
registered or valuable letter (in this case it is assumed that the letter shall
be delivered at the 14th day after dispatching). The messaged are sent to the
following addresses:
Licensiate: STAAR Surgical AG
Xxxxxxxxxxxx 000
XX 0000 Xxxxx
Xxxxxxxxxxx
Attn: President
A copy to address:
STAAR Surgical Company
0000 Xxxxxx Xxxxxx
Xxxxxxxx, Xxxxxxxxxx 00000
Attn: President - Chief Executive Officer
Licenser: Eye Microsurgery Intersectoral Research and
Xxxxxxxxxx Xxxxxxx, Xxxxxx, Xxxxxx, 000000,
Beskudnikovsky bulvar, 59-a.
The above addresses may be changed by notifying the other party about this
action, as mentioned above.
3. The right of signing the document.
Each party states that it has all necessary authority to sign this License
Agreement. All individual signings of this Agreement for the party that is a
corporation, company or another legal counsel, or a signature of a proxy or
another authorized person, is accompanied by confirmation of the fact that this
person has the right of putting his signature under the given document on behalf
of a respective organization or its manager.
4. Counterpart Copies.
This Agreement may be signed in counterpart or duplicate copies, and any
signed counterpart or duplicate copy shall
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be equivalent to a signed original for all purposes.
5. Completeness of the Agreement.
This is the entire agreement between the parties covering everything agreed
upon or understood between the parties covering everything agreed upon or
understood with respect to the subject matter of it. There are no promises,
conditions, representations or terms of any kind as conditions or inducements to
the execution hereby or in effect between the parties other than as herein set
forth. Any prior agreement, promises, negotiations or representations not
expressly set forth in this Agreement are of not force or effect. Any agreement
hereafter made shall be ineffective to change, modify, discharge or effect an
abandonment of this Agreement in whole or in part unless such agreement is in
writing and signed by the party against whim enforcement of the change,
modification, discharge or abandonment is sought.
6. Preparation of Agreement.
It is acknowledged that each party hereto either had separate and
independent advice of counsel or the opportunity to avail itself of same. This
Agreement was prepared by the parties to it in conjunction with counseling from
their respective attorneys, or the opportunity to obtain such counseling. In
light of these facts it is acknowledged that no party to this Agreement shall be
construed to be solely responsible for the drafting of it, and therefore any
ambiguity shall not be construed against any party as the alleged draftsman of
this Agreement.
7. Gender and Number.
As used in this Agreement, the masculine, feminine, or neuter gender, and
the singular or plural number, shall include the others whenever the context so
indicated.
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8. Headings.
The titles and headings of the various sections of the Agreement are
intended solely for convenience of reference and are not intended solely for
convenience and are not intendid to explain, modify, or place any construction
on any of the provisions of this Agreement.
9. No Waiver.
The failure of a party to insist on the strict performance of any covenant
or duty required by this Agreement, or to pursue any remedy under the Agreement,
shall not constitute a waiver of the breach or the remedy.
10. Severability.
If any part or provision of this Agreement shall be determined to be
invalid, illegal or unenforceable,then the remaining part of this Agreement
which can be separated from the invalid, illegal or unenforceable provision
shall continue in full force and effect, and the invalid, illegal or
unenforceable provision shall continue in full force and effect, and the
invalid, illegal or unenforceable provision shall be construed as if they had
never been incorporated into this Agreement.
This Agreement and all of its provisions shall be binding on and inure to
the benefit of the successors of the parties.
11. Counterparts and Facsimiles.
For the convenience of the parties to this Agreement, this document may be
executed by facsimile signatures and in counterpart which shall together
constitute the agreement of the parties as one and the same instrument.
This License Agreement is conclude din four authentic copies, two of which
are in English and in Russian, all copies has an equal juridical force.
IN WITNESS WHEREOF, the parties thereto have executed this Assignment
Agreement on the day and year set forth opposite their respective signatures
below:
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"Licenser": Eye Microsurgery Intersectoral Research
and Technology Complex
General Director, academician
/s/ S.N. Fedorov S.N. Fedorov
-------------------
"Licensiate": STAAR Surgical AG
President and Director
/s/ Xxxxxxxx Xxxxxxxx Xxxxxxxx Xxxxxxxx
---------------------
Director
/s/ Xxxx X. Xxxx Xxxx X. Xxxx
-------------------
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Appendix N 1.
Technology of production intraocular lenses from collagen co-polimers
Nowadays, intraocular correction is one of the basic medical treatment
method of vision body disease.
Artificial eye linses are used not only when cataract, but also for removal
of refraction anomalies.
Artificial eye lenses, which are implantated through small sizes, are most
perspective. Several requirements are produced to artificial eye lenses like
elasticity, biocompatibility, low specific density and high solidity on rupture.
Artificial eye lenses from collagen co-polimers corresponds to these principles.
Highest elasticity, hight solidity on rupture are the main quality of these
products. It allows to make implantation as tool-making method of injection
also.
Lenses, which are maked an special technology, passed experimental and
hospital tests successfully and inculcated in wide surgical practice as in Eye
Microsurgery Intersectoral Research and Technology Complex so in the other
Russian and CIS hospitals.
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1. US patent N 6.286.829 (Russion application N 4745668) "Biocompatible
polymer material and a process for producing same", inventors. S.N. Fedorov,
S.N. Bagrov, X.X. Xxxxxx, X.X. Xxxxxx, I.A. Maklakova. A.N. Kosmynin, E.V.
Larionov, priority 13.10.89, patentee Eye Microsurgery Intersectorial Research
and Technology Complex.
2. Russian patent N 2033165 (Russian application N 474568) "Process for
producing plastic material from collagen", inventors S.N. Fedorov, S.N. Bagrov,
A.V. Osivpov, X.X. Xxxxxx, I.A. Maklakova A.N. Kosmynin, E.V. Larionov, priority
13.10.89, patentee Eye Microsurgery Intersectorial Research and Technology
Complex.
3. USSR Inventors Certificate N 1823178 (Russian application N 4881670)
"Artificial eye lens and process of its implantation in back eye camera",
inventors S.N. Fedorov, X.X. Xxxx, X.X. Aznabaev, priority 21.11.80.
4. USA patent N 5258025 (Russian application N 4881670) "correctional
intraocular lens", inventors S.N. Fedorov, X.X. Xxxx, X.X. Aznabaev, priority
21.11.80, patentee - Eye Microsurgery Intersectoral Research and Technology
Complex.
5. German laid-open application (Russian application N 4881670)
"Correctional intraocular lens", inventors S.N. Xxxxxxx, X.X. Aznabaev, X.X.
Xxxx, priority 22.04.93, patentee - Eye Microsurgery Intersectoral Research and
Technology Complex.
6. Russian patent N 2033114 (Russian application N
