Exhibit 10.9
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AGREEMENT
This Agreement made the 27th day of May, 1994, by and between BSD
Medical Corporation, a corporation of the State of Delaware with principal
offices located at 0000 Xxxx 0000 Xxxxx, Xxxx Xxxx Xxxx, Xxxx 00000, hereinafter
referred to as BSD, and Xx. Xxxxxxxxx Medizin Technik Gmbh, Munich, Germany,
hereinafter referred to as XXXXXXXXX
WITNESSETH:
WHEREAS, BSD manufactures and sells hyperthermia equipment:
WHEREAS, BSD has obtained and is the owner of US Patent 5,097,844 for
which a corresponding Patent Cooperation Treaty (PCT) patent application serial
number PCT/US91/08136 has been filed, and is title "Hyperthermia Apparatus
Having Three Dimensional Focusing" and for which a national phase European
Patent application must be filed in the European Patent Office by June 4, 1994
such European national phase application to be identified by European
Application No. 92905357.7.
WHEREAS, XXXXXXXXX is the distributor for BSD equipment in Germany,
Sweden, the United Kingdom, and various other European countries pursuant to a
distributorship agreement; and
WHEREAS, XXXXXXXXX is desirous of obtaining various rights under the
referred European national phase application No. 92905357.7 resulting from PCT
application PCT/US91/08136 and under any European Patents directly resulting
from this application which are owned by BSD.
NOW, THEREFORE, for and in consideration of the mutual promises
contained herein and of other good and valuable considerations, receipt of which
is hereby acknowledged, the parties hereto agree as follows:
1. BSD hereby grants to XXXXXXXXX the exclusive right and license for
the European application No. 92905357.7 and any subsequent European patents
issued therefrom in any European country to practice the inventions covered by
the patent application or patents by using and selling BSD manufactured
equipment, and to manufacture, use, and sell equipment or parts therefore
covered by the pending European patent application or patents issued therefrom
if BSD cannot supply such equipment or parts in accordance with the terms and
conditions of the Distributor Agreement between BSD and XXXXXXXXX.
2. XXXXXXXXX shall have the right, at his sole expense and at his
descretion, without approval from BSD, but upon notice to BSD, to enforce the
pending patent application or patents issued therefrom which are included in
this Agreement including the right to bring suit against infringers of the
patents. BSD will cooperate and make documents and personnel available as
reasonably requested by XXXXXXXXX, but at no expense to BSD, in supplying
information and support to XXXXXXXXX as required for enforcement of or
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litigation involving such pending patents. XXXXXXXXX shall also be responsible,
at his sole expense, for defending any challenges to the patent application or
patents included in this Agreement regardless of how such challenges arise. Any
and all costs of or resulting from any action brought or defended under this
section shall be fully paid by XXXXXXXXX and XXXXXXXXX shall fully indemnify and
hold BSD harmless from any and all costs and damages. If a monetary recovery or
settlement results from any enforcement or action hereunder, BSD shall receive
20% of such recovery or settlement after all costs of such enforcement or action
have been paid. However, XXXXXXXXX may not enter into a settlement without the
prior written consent of BSD as to all terms of such settlement. In any action
brought or defended hereunder, BSD may maintain its own representation at its
own expense. In the event BSD desires to pursue an infringer of the patent
application or any of the patents included in this Agreement and XXXXXXXXX does
not take action against such infringer within six months of notice by BSD to
XXXXXXXXX of such infringement and BSD's desire to have action taken, BSH may
take action on its own, at its own expense, and any and all recovery shall
belong to BSD.
3. XXXXXXXXX shall pay to BSD upon execution of this Agreement the
amount of $15,000.00 U.S. Dollars.
4. BSD shall file the European national phase of PCT/US91/08136 in
English with the European Patent Office.
5. XXXXXXXXX shall provide further payments as required to maintain the
application and any patents issuing therefrom, to obtain translations as
necessary, for filing required patent office responses, or for fulfilling other
patent office or country requirements to make the European Patent effective in
countries in which XXXXXXXXX elects to obtain patent protection for the BSD
equipment. XXXXXXXXX shall maintain the patents covered by this Agreement by
paying the annuities due in each country as and when such annuities become due.
BSD or its representative will notify XXXXXXXXX of payment requirements and
annuities at least 30 days prior to the due date or notify BSD at least 15 days
prior to the due date that payment will not be made by XXXXXXXXX. In the event
XXXXXXXXX does not make payment of an annuity or other fee due hereunder, this
Agreement will immediately terminate and all rights in and to the patents
included in this Agreement will immediately revert back to BSD. XXXXXXXXX may
obtain required translations directly rather than pay BSD translation fees.
6. XXXXXXXXX may not grant licenses or transfer other rights in and to
the patent application or patents covered hereby without the specific prior
written approval of BSD to all terms of such license and an agreement with
XXXXXXXXX as to how license revenues will be divided. 1.
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7. This Agreement, unless terminated earlier, will remain in force as
long as both XXXXXXXXX maintains a valid and current distributor agreement with
BSD and Xx. Xxxxxxxxx is personally associated with and active in XXXXXXXXX and
in its distribution and marketing of BSD equipment.
8. This Agreement may be terminated by XXXXXXXXX at any time upon
written notice to BSD.
9. Upon any breach or default of this Agreement by XXXXXXXXX, BSD may
terminate the Agreement by giving thirty (30) days written notice to SENNWALD.
Said notice shall become effective at the end of said thirty days unless, during
said thirty days, XXXXXXXXX shall cure such breach or default.
10. Any notice to be given a party pursuant to this Agreement shall be
given in writing to the party at the address first given above, or an address as
changed by notice given in accordance with this paragraph, by means of
communication whereby receipt of such notice can be verified.
11. XXXXXXXXX shall indemnify and hold BSD harmless from any and all
costs, damages, or penalties relating to or resulting from the exercise by
XXXXXXXXX of any rights given by this Agreement.
12. This Agreement does not supersede or replace the distributor
agreement in force between XXXXXXXXX and BSD and in the event of a conflict in
terms between this Agreement and the distributor agreement then in force between
the partiers, the distributor agreement will govern.
13. This Agreement shall be governed by the laws of the State of Utah,
United States of America.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement in
the date first above written.
BSD Medical Corporation Xx. Xxxxxxxxx
Medizin Technik Gmbh
/s/ Xxxxxx Xxxxxxx /s/ Xx. Xxxxxxxxx
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Xxxxxx Xxxxxxx Xx. Xxxxxxxxx
President
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