EXHIBIT 10.25
LICENSE AGREEMENT
This License Agreement, (hereinafter referred to as the "AGREEMENT")
effective as of the 7th day of November, 2001 (hereinafter referred to as
"EFFECTIVE DATE"), is by and between Becton Xxxxxxxxx and Company and its
affiliates, having an address at 0 Xxxxxx Xxxxx, Xxxxxxxx Xxxxx, Xxx Xxxxxx
00000-0000 (hereinafter referred to as "BD"), and Cell Robotics International,
Inc., and its entity affiliates, having a place of business at 0000 Xxxxxxxxx
Xxxxxxx, Xxxxxxxxxxx, Xxx Xxxxxx 00000 (hereinafter referred to as "CR").
WITNESSETH
WHEREAS, BD represents and warrants that it is the sole and exclusive
licensee of U.S. Patent No. 5,165,418 pursuant to a primary license agreement
between Xxxxxxxxx and Becton Xxxxxxxxx and Company dated March 23, 1994.
WHEREAS, CR desires to obtain from BD an exclusive sublicense to U.S.
Patent No. 5,165,418 and BD is willing to grant such a license to CR.
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 AGREEMENT" as used herein shall mean those certain
Agreements and related documents between CR and BD entered into on even date
with this AGREEMENT.
2. "BD" as used herein shall mean 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 Xxxxxxxxx and Company, is controlled
by Becton Xxxxxxxxx and Company, or is under common control of Becton Xxxxxxxxx
and Company, (including subsidiaries of Becton Xxxxxxxxx and Company) and
another entity, or is controlled by an entity that controls Becton Xxxxxxxxx and
Company.
3. "CR" as used herein shall mean Cell Robotics International, Inc.
and any entity which at any time during the life of this AGREEMENT directly or
indirectly, through one or more intermediaries, controls Cell Robotics
International, Inc., is controlled by Cell Robotics International, Inc., or is
under common control of Cell Robotics International, Inc., (including
subsidiaries of Cell Robotics International, Inc.) and another entity, or is
controlled by an entity that controls Cell Robotics International, Inc.
4. "LICENSED PATENT" as used herein shall mean U.S. Patent No.
5,165,418.
5. "VALID CLAIM" as used herein shall mean a claim of the LICENSED
PATENT so long as such claim shall not have been disclaimed by BD or shall not
have been held invalid or not infringed by CR in an unappealed or unappealable
decision rendered by a tribunal of competent jurisdiction.
6. "LICENSED FIELD" as used herein and is limited to the practice of
the LICENSED PATENT for laser devices for human capillary sampling and all
related accessory products.
7. "PRODUCT(S)" as used herein shall mean any product, device,
instrument, kit or component thereof which fall within the LICENSED FIELD, the
making, using, imparting, offering for sale or selling of which would, in the
absence of the license granted hereunder, infringe, contribute to the
infringement of, or induce the infringement of any VALID CLAIM of the LICENSED
PATENT.
8. "NET SALES" as used herein shall mean, unless otherwise provided,
the invoice price at which the PRODUCT is sold by CR, to a purchaser other than
CR, either individually or as part of a kit, 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 CR.
ARTICLE II - GRANT
1. Subject to the terms and conditions of this AGREEMENT, BD hereby
grants to CR an exclusive, sublicense to import, make, have made for its own use
and sale, use, offer to sell, offered to sell, sold and sell PRODUCT covered by
a VALID CLAIM of the LICENSED PATENT in the United States of America, without
the right to grant sublicenses.
ARTICLE III - PAYMENTS
1. In consideration of the right and license herein granted to it, CR
shall provide BD with Two Hundred and Twenty Five Thousand (225,000) shares of
Cell Robotics International, Inc. stock in the form of warrants or shares at
BD's discretion, as further described in the separate STOCK AGREEMENT, which
shares shall be refundable to CR in the form of warrants or shares as originally
provided by CR to BD or as a cash equivalent of the warrants or shares as of the
EFFECTIVE DATE of this AGREEMENT, in the event all of the claims of the LICENSED
PATENT are held invalid or unenforceable by a court of proper jurisdiction in an
unappealed or unappealable decision prior to the expiration of the LICENSED
PATENT.
2. In further consideration of the right and license herein granted
to it, CR agrees to pay BD while this Agreement is in effect and as of the
EFFECTIVE DATE of this AGREEMENT, for the term herein defined, a royalty of two
and one-half percent (2.5%) of NET SALES of
PRODUCT. In the event CR assigns, transfers or sells this AGREEMENT and the
license granted under it in accordance with ARTICLE VII, then the royalty shall
be two and three-quarters percent (2.75%) of NET SALES of PRODUCT as of the date
of such assignment, transfer or sale.
3. Royalties under Paragraph 2 of this ARTICLE shall accrue during
the first two (2) years of this AGREEMENT and be payable in full on third
anniversary of this AGREEMENT. All remaining royalties under Paragraph 2 of this
ARTICLE, after the first two (2) years of this AGREEMENT shall be payable in
accordance with ARTICLE V, Paragraph 2 of this AGREEMENT.
4. Royalties are payable by CR based solely on PRODUCT(S) sold by CR,
on a country-by-country basis, until the last to expire of the LICENSED PATENT.
5. At the expiration of the period set forth in Paragraph 4 of this
ARTICLE, CR shall have a completely paid-up, royalty-free right and license to
subsequently make, have made, use and sell the PRODUCT(S) and shall have no
further obligations to BD.
6. CR agrees to pay a minimum annual royalty to maintain its
exclusive sublicense status hereunder only so long as there exists an unexpired
LICENSED PATENT covering one of the PRODUCT(S). If the foregoing conditions are
met, for each year, commencing on the third anniversary of the EFFECTIVE DATE of
this AGREEMENT, CR agrees to pay BD a minimum annual royalty, less any earned
royalties which shall have been accrued and paid or paid to BD during the
previous twelve (12) months, according to the following schedule:
a. Ten Thousand Dollars ($10,000) on the third anniversary of
this AGREEMENT; and
b. Five Thousand Dollars ($5,000) on the fourth anniversary of
this AGREEMENT and on each anniversary thereafter during the
remaining term of this AGREEMENT.
7. (A) Payment by CR of the royalties referred to in Paragraph 2, 3
and 4 of this ARTICLE or the minimum annual royalty referred to in Paragraph 6
of this ARTICLE is considered to be complete satisfaction of any duty imposed
upon CR to commercially exploit the PRODUCT(S) and is accepted by BD in lieu of
any best efforts obligation on the part of CR.
(B) Nothing in this Agreement shall impose upon CR the obligation
to create, continue or maximize sales of the PRODUCT(S) or prevent CR 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 PRODUCT(S). Nothing herein
contained shall in any way limit CR's free and exclusive right to determine in
its discretion the timing or manner of marketing, manufacturing or advertising
the PRODUCT(S).
8. If CR does not pay the minimum annual royalty at the time such
minimum is payable, BD, at its option, may convert this AGREEMENT to a
non-exclusive license, upon written notice to CR. CR 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.
ARTICLE IV - REPRESENTATIONS AND WARRANTIES
1. BD represents and warrants that it has the right to grant the
sublicense as set forth in this Agreement and is able to enter into this
Agreement and become bound by the terms hereof.
2. BD represents and warrants that, to the best of its knowledge, no
third party has any rights in conflict.
3. BD represents and warrants that it is under no obligation to any
third party that would interfere with their representations or obligations under
this AGREEMENT.
ARTICLE V - BOOKS OF ACCOUNT AND REPORTS
1. CR agrees to keep complete and accurate records of its sales of
the PRODUCT(S) sold and all data necessary for the computation of payments to be
made to BD hereunder. However, CR shall have no duty of trust or other fiduciary
relationship with BD 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 May, August, November and February of each year for the
sales of the PRODUCT(S) sold by CR during the preceding quarterly periods ending
on the last day of March, June, September and December, respectively. Such
payments to BD shall be accompanied by a statement showing the total NET SALES
of the PRODUCT(S) sold by CR, the amount of any credit taken 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 CR in a country other than the United States, such royalty payments
shall be made by CR in United States dollars on the basis of conversion, from
the currency of such other country by converting the royalty in the currency of
the country in which the sales were made at the exchange rate for United States
Dollars prevailing at the close of the last business day of the calendar quarter
for which sales occurred and royalties are being calculated as published the
following day in the Wall Street Journal and with respect to those countries for
which rates are not published, the exchange rate fixed for such date by the
appropriate United States governmental agency.
(B) The foregoing is subject to the right of CR to make
payment of royalties in any
country where the currency is blocked and where legal conversion of the currency
billed cannot be made into United States dollars by depositing such royalty
payments in BD's name in a bank designated by BD within such country.
4. BD, at its own expense, shall have the right for a period of three
(3) years after receiving any report from CR to nominate an independent
Certified Public Accountant, acceptable to CR which acceptance shall not be
unreasonably withheld, who shall have access to CR'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 BD information limited only to the
accuracy of the payment report and the payments made in accordance with this
AGREEMENT.
ARTICLE VI - PATENT LITIGATION
1. (A) In the event either party hereto receives notice of alleged
infringement of any of the LICENSED PATENT, it shall promptly notify the other
party in writing of such infringement. BD shall have the right, but not the
obligation, to bring suit and to control the conduct thereof against the alleged
infringer, and to join CR as a party to such suit, in which event BD shall hold
CR free, clear and harmless from any and all costs and expenses of such
litigation, including attorneys' fees. In the event BD exercises the right to
bring suit herein conferred, it shall have the right to retain all damages
recovered.
(B) If BD does not bring suit against said infringer, as
herein provided, within one hundred twenty (120) days after receipt of such
notice, CR shall have the right, but shall not be obligated, to bring suit for
such alleged infringement, and to join BD as a party to such suit only if a
court of competent jurisdiction determines BD is a necessary party to such suit,
in which event CR shall hold BD free, clear and harmless from any and all costs
and expenses of such litigation, including attorneys' fees. In the event CR
exercises the right to bring suit for such alleged infringement, it shall have
the right to retain all damages recovered.
(C) 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 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.
ARTICLE VII - TRANSFERABILITY OF RIGHTS AND OBLIGATIONS
1. This AGREEMENT and the license granted under it may not be
assigned, transferred or sold by CR, without the express prior written consent
of BD, which shall not be unreasonably withheld. If CR assigns this AGREEMENT,
the assignee shall agree in writing, which shall be provided to BD, to assume
all obligations of CR created by this AGREEMENT.
2. BD may freely assign this AGREEMENT in whole or in any part.
3. This AGREEMENT shall be binding upon and inure to the benefit of
the successor and assigns or the parties hereto to which this AGREEMENT relates.
ARTICLE VIII - OPTION
1. BD hereby grants to CR an exclusive right and option as relating
to BD's current laser lancet patent portfolio and future laser technology
acquired by BD for use in human capillary sampling for a period commencing with
the EFFECTIVE DATE of this AGREEMENT and continuing for a term of five (5) years
from the EFFECTIVE DATE of this AGREEMENT, to enter into one or more license
agreements with BD, at terms and conditions to be negotiated but with a six
percent (6%) cap in the royalty for net sales of products sold under the
agreement.
2. If CR receives written notification of a bona fide offer from a
third party regarding the distribution of CR's PRODUCTS as relating to exclusive
marketing and sales rights of CR's PRODUCTS, then CR hereby grants to BD an
exclusive right of first refusal and option as relating to future exclusive
marketing and sales rights for CR's PRODUCTS for a period commencing with the
EFFECTIVE DATE of this AGREEMENT and continuing for a term of five (5) years
from the EFFECTIVE DATE of this AGREEMENT, to enter into one or more agreements
with CR, at terms
and conditions to be negotiated. CR shall notify BD by written notice within
fifteen (15) days of when CR has received a bona fide offer from a third party
regarding the distribution of CR's PRODUCTS as relating to exclusive marketing
and sales rights of CR's PRODUCTS. Within thirty (30) days after receipt of such
written notice, BD shall notify CR in writing of its interest to exercise its
option hereunder.
ARTICLE IX - 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
LICENSED PATENT.
2. BD shall have the right to terminate this AGREEMENT if CR commits
a material breach of an obligation under this AGREEMENT, including the failure
to make timely payments hereunder, and continues in default for more than sixty
(60) days after receiving written notice from BD of such default, such
termination to be effective immediately upon further written notice to CR after
such sixty (60) day period. If such material breach by CR occurs, all payments
of any kind under this AGREEMENT shall be accelerated and shall become
immediately due and payable by CR, and CR consents to the entry of judgment in
the amount of such payments becoming immediately due.
3. In the event that CR shall be adjudicated bankrupt, go into
liquidation, receivership or trusteeship, make a composition with its creditors
or enter into any similar proceeding of the same nature, then BD shall have the
right without liability therefore to terminate this AGREEMENT forthwith by
notice in writing to CR. Nothing herein shall limit any other remedies to which
BD may be entitled under law or equity.
ARTICLE X - DISCLAIMER, AND HOLD HARMLESS
1. It is understood and agreed by and between the parties hereto that
nothing contained
in this AGREEMENT shall constitute or be construed to constitute any
undertaking, representation, suggestion, inducement, warranty, assurance or
guarantee whatsoever by either party in connection with PRODUCT(S) or any
component, product, material, service, process or apparatus with respect to
safety, quality, yield, production, cost, profit, saleability, licensability,
demand, utility, performance, availability of raw materials, accident or injury
to person or property.
2. CR expressly indemnifies and holds BD, its affiliates, successors
and assigns and its officers, directors and employees harmless from and against
any and all claims, liabilities, damages, costs, expenses, and/or actions of any
kind whatsoever relating to product liability claims which arise from or are
connected with the manufacture, use, lease, importation, offer for sale, sale,
or other disposition of PRODUCT(S) under the LICENSED PATENT.
ARTICLE XI - MISCELLANEOUS
1. Any notice or other communication required or permitted by this
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 BD: Becton, Xxxxxxxxx and Company
Preanalytical Solutions
0 Xxxxxx Xxxxx
Xxxxxxxx Xxxxx, XX 00000-0000
Attention: President
Tel. No.: (000) 000-0000
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
To CR: Cell Robotics, Inc.
0000 Xxxxxxxxx Xxxxxxx
Xxxxxxxxxxxx, Xxx Xxxxxx
Attention: Xxxxxx X. Xxxxxxxx, Ph.D.
Tel. No.: 000-000-0000 Ext. 106
Fax No.: 000-000-0000
2. All royalty payments shall be addressed as follows:
To BD: Becton, Xxxxxxxxx and Company
0 Xxxxxx Xxxxx
Xxxxxxxx Xxxxx, XX 00000-0000
Att: Controller, BD Preanalytical Solutions
3. 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.
4. CR shall not use the name of BD or any adaptation thereof in any
advertising, promotion, sales literature or packaging in a manner which would
constitute an expressed or implied endorsement for any commercial product
without the prior written consent of BD.
5. Nothing herein contained shall be construed to grant to CR any
license or rights in any other of BD's intellectual property.
6. Neither CR nor BD shall be responsible for and the terms of this
AGREEMENT shall be inapplicable to any default or delays which are due to cause
beyond CR's or BD'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 CR or BD, acting in good faith with due diligence, to perform its
obligations under this AGREEMENT.
7. 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.
8. 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.
9. Neither party shall originate any publicity, news release or
public announcement, written or oral, whether to the public, press or otherwise,
relating to this AGREEMENT, to any amendment hereto or performance hereunder,
without approval of the other party which approval shall not be unreasonably
held, save only such announcement as in the advice of counsel to the party
making such announcement is required by law to be made. In the event CR is
required by law to disclose this AGREEMENT, CR shall notify BD in writing within
ten (10) days before making such disclosure and CR shall make every reasonable
effort to only disclose the redacted version of the AGREEMENT attached hereto in
Appendix A.
10. This AGREEMENT shall be binding upon and inure to the benefit of
the successor and assigns of BD and CR to which this AGREEMENT relates.
11. 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.
12. BD hereby releases CR from any alleged infringement of the
LICENSED PATENT prior to and including the EFFECTIVE DATE of this AGREEMENT, and
more particularly, BD releases CR and its customers from any and all liability
resulting from the manufacture, importation, use, offer for sale, leasing,
transferring, exporting, importing, sale or otherwise disposing of any PRODUCT
which may have infringed the LICENSED PATENT prior to and including the
EFFECTIVE DATE of this AGREEMENT and whose continued use would infringe the
LICENSED PATENT subsequent to the EFFECTIVE DATE of this AGREEMENT.
13. 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.
IN WITNESS WHEREOF, BD and CR have caused this AGREEMENT to be duly
executed in duplicate originals as of the date first hereinabove written.
Cell Robotics International, Inc. Becton, Xxxxxxxxx and Company
By: /s/ Xxxxxx X. Xxxxxxxx By: /s/ Xxxxxxx X. Xxxxxx
--------------------------- -----------------------------------
Xxxxxx X. Xxxxxxxx Xxxxxxx X. Xxxxxx
PRESIDENT AND CEO PRESIDENT
BD Clinical Laboratory Solutions
Date: December 17, 2001 Date: January 3, 2002
--------------------------- --------------------------
