LICENSE AGREEMENT
THIS AGREEMENT, effective as of November 26, 1997 ("EFFECTIVE DATE")
between THE GENERAL HOSPITAL CORPORATION, a not-for-profit corporation doing
business as Massachusetts General Hospital, having a place of business at Xxxxx
Xxxxxx, Xxxxxx, Xxxxxxxxxxxxx 00000 ("GENERAL") and Laser Photonics, a
corporation having offices at 0000 Xxxxxxxx Xx., Xxx.X, Xxx Xxxxx XX
92121("COMPANY").
WHEREAS, under research programs funded by the GENERAL and the U.S.
Government, the GENERAL through research conducted by Rox Xxxxxxxx, M.D. has
developed an invention pertaining to Phototherapy Methods and Systems;
WHEREAS, GENERAL has filed a Provisional Patent Application covering said
invention and all Xx. Xxxxxxxx'x rights, title and interest in said application
have been assigned to GENERAL;
WHEREAS, GENERAL represents to the best of its knowledge and belief that it
is the owner of all rights, title and interest in said patent application and
has the right and ability to grant the license hereinafter described;
WHEREAS, as a center for research and education, GENERAL is interested in
licensing PATENT RIGHTS and thus benefiting the public and the GENERAL by
facilitating the dissemination of the results of its research in the form of
useful products, but is without capacity to commercially develop, manufacture,
and distribute any such product; and
WHEREAS, COMPANY having such capacity, desires to commercially develop,
manufacture, use and distribute such products throughout the world;
NOW THEREFORE, in consideration of the premises and of the faithful
performance of the covenants herein contained, the parties hereto agree as
follows:
1. DEFINITIONS
1.1 The term "ACCOUNTING PERIOD" shall mean each six month period ending
June 30 and December 31.
1.2 The term "AFFILIATE" shall mean any corporation or other legal entity
other than COMPANY in whatever country organized, controlling, controlled by or
under common control with COMPANY. The term "control" means possession, direct
or indirect, of the powers to direct or cause the direction of the management
and policies of an entity, whether through the ownership of voting securities,
by contract or otherwise. The term "AFFILIATE" with respect to GENERAL shall
mean any company controlling, controlled by, or under common control, directly
or indirectly, with GENERAL.
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1.3 The term "FIRST COMMERCIAL SALE" shall mean in each country the first
sale of any PRODUCT by COMPANY, its AFFILIATES or SUBLICENSEES.
1.4 The term "LICENSE FIELD" shall mean Dermatological Devices and Methods
for Diagnosis and Therapy of Proliferative Skin Diseases
1.5 The term "NET SALES PRICE" shall mean the GROSS SALES PRICE as defined
in (b) below received by COMPANY or any of its AFFILIATES or SUBLICENSEES
("SELLERS") for the sale or distribution of any PRODUCT, less (to the extent
appropriately documented) the following amounts actually paid out by COMPANY,
its AFFILIATE or SUBLICENSEE or credited against the amounts received by them
from the sale or distribution of PRODUCT:
(a) (i) credits and allowances for price adjustment, rejection, or
return of PRODUCTS previously sold;
(ii) rebates and cash discounts to purchasers allowed and taken;
(iii) amounts for transportation, insurance, handling or shipping charges
to purchasers;
(iv) taxes, duties and other governmental charges levied on or measured by
the sale of PRODUCTS, whether absorbed by COMPANY or paid by the purchaser so
long as COMPANY's price is reduced thereby, but not franchise or income taxes of
any kind whatsoever;
(v) for any sale in which the United States government on the basis of
its royalty-free license pursuant to 35 USC Sec. 202(c) to any PATENT RIGHT
requires that the GROSS SALES PRICE of any PRODUCT subject to such PATENT RIGHT,
be reduced by the amount of such royalty owed GENERAL pursuant to paragraph 3.1,
the amount of such royalty.
(b) For any bone fide sale to a bona fide customer by COMPANY or any of its
AFFILIATES or SUBLICENSEES, the GROSS SALES PRICE shall be the gross billing
price of the PRODUCT.
(c) If COMPANY or any of its AFFILIATES or SUBLICENSEES sell any PRODUCT in
a bona fide sale as a component of a combination of active functional elements,
the GROSS SALES PRICE of the PRODUCT shall be determined by multiplying the
GROSS SALES PRICE of the combination by the fraction A over A + B, in which "A"
is the GROSS SALES PRICE of the PRODUCT portion of the combination when sold
separately during the ACCOUNTING PERIOD in the country in which the sale was
made, and "B" is the GROSS SALES PRICE of the other active elements of the
combination sold separately during said ACCOUNTING PERIOD in said country. In
the event that no separate sale of either such PRODUCT or active elements of the
combination is made during said ACCOUNTING PERIOD in said country, the GROSS
SALES PRICE of the PRODUCT shall be determined by multiplying the GROSS SALES
PRICE of such combination by the fraction C over C + D, in
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which "C" is the standard fully-absorbed cost of the PRODUCT portion of such
combination, and "D" is the sum of the standard fully-absorbed costs of the
other active elements component(s), such costs being arrived at using the
standard accounting procedures of COMPANY which will be in accord with generally
accepted accounting practices.
(d) If a SELLER commercially uses or disposes of any PRODUCT by itself (as
opposed to a use or disposition of the PRODUCT as a component of a combination
of active functional elements) other than in a bona fide sale to a bona fide
customer, the GROSS SALES PRICE hereunder shall be the price which would be then
payable in an arm's length transaction. If a SELLER commercially uses or
disposes of any PRODUCT as a component of a combination of active functional
elements other than in a bona fide sale to a bona fide customer, the GROSS SALES
PRICE of the PRODUCT shall be determined in accordance with paragraph (c) above,
using as the GROSS SALES PRICE of the combination that price which would be then
payable in an arm's length transaction.
(e) Transfer of a PRODUCT within COMPANY or between COMPANY and an
AFFILIATE for sale by the transferee shall not be considered a sale, commercial
use or disposition for the purpose of the foregoing paragraphs; in the case of
such transfer the GROSS SALES PRICE shall be based on sale of the PRODUCT by the
transferee.
1.6 The term "PATENT RIGHT" shall mean the U.S. Provisional Patent
Application filed by Xx. Xxxxxxxx on October 8, 1997, to be assigned to GENERAL,
entitled Phototherapy Methods and Systems and any subsequent utility application
based thereon, or the equivalent of such application, including any division,
continuation or any foreign patent application or Letters Patent or the
equivalent thereof issuing thereon or reissue, reexamination or extension
thereof. PATENT RIGHTS shall also include those claims in any
continuation-in-part of the aforementioned patent application which claim an
invention described or claimed in said patent application.
1.7 The term "PRODUCT" shall mean any article, device, composition, method
or service, the manufacture, use, or sale of which
(a) absent the licenses granted herein, would infringe a VALID CLAIM of any
PATENT RIGHT, or
(b) does not infringe a VALID CLAIM of any PATENT RIGHT licensed to COMPANY
hereunder but the discovery, development, manufacture or use of which employs
TECHNOLOGICAL INFORMATION.
1.8 The term "SUBLICENSEE" shall mean any non-AFFILIATE third party
licensed by COMPANY or by an AFFILIATE to make, have made, use or sell any
PRODUCT.
1.9 The term "TECHNOLOGICAL INFORMATION" shall mean any research data,
designs, formulas, process information, clinical data and other information
pertaining to any
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invention claimed in PATENT RIGHT which is known to Xx. Xxxxxxxx on the
EFFECTIVE DATE.
1.10 The term "VALID CLAIM" shall mean any claim of any PATENT RIGHT that
has not been (i) finally rejected or (ii) declared invalid by a patent office or
court of competent jurisdiction in any unappealed and unappealable decision.
2. LICENSE
2.1 GENERAL hereby grants COMPANY, to the extent not prohibited by the
United States Government or by contractual obligations to any other sponsor of
research at GENERAL:
(a) an exclusive, worldwide, royalty-bearing license in the LICENSE FIELD
under GENERAL's rights in PATENT RIGHTS to make, have made, use and sell
PRODUCTS;
(b) to the extent an exclusive license is not available to COMPANY in a
country, a non-exclusive, royalty-bearing license in the LICENSE FIELD under
PATENT RIGHTS to make, have made, use and sell PRODUCTS;
(c) the right to sublicense PATENT RIGHTS exclusively licensed to COMPANY.
The above licenses to sell PRODUCTS include the right to grant to the
purchaser of products from COMPANY, its AFFILIATES, and SUBLICENSEES the right
to use such purchased PRODUCTS in a method coming within the scope of PATENT
RIGHT.
2.2 It is understood that the granting of any license hereunder is subject
to GENERAL's and GENERAL's AFFILIATES' right to make and to use the subject
matter described and claimed in PATENT RIGHT for research, clinical and
educational purposes but for no other purpose, and that if federal funding
supported the PATENT RIGHT, COMPANY's license will be subject to the rights,
conditions and limitations imposed by U.S. law including without limitation the
royalty-free non-exclusive license granted to the U.S. government (see 35 U.S.C.
Sections 202 ET SEQ. and regulations pertaining thereto).
2.3 Within three (3) months of EFFECTIVE DATE, upon request by COMPANY,
GENERAL shall disclose to COMPANY, TECHNOLOGICAL INFORMATION which COMPANY will
be entitled to use to the extent such use does not infringe any patent not
licensed to COMPANY hereunder.
2.4 GENERAL shall have the right to license any PATENT RIGHT to any other
party for the purpose of manufacturing, using or selling of any PRODUCT outside
of the LICENSE FIELD.
2.5 It is understood that nothing herein shall be construed to grant
COMPANY a license express or implied under any patent owned solely or jointly by
General other than the PATENT RIGHTS expressly licensed hereunder.
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3. DUE DILIGENCE OBLIGATIONS
3.1 COMPANY shall itself, or through its AFFILIATES or SUBLICENSEES, use
its best efforts to develop and make commercially available PRODUCTS for
commercial sales and distribution throughout the world in the LICENSE FIELD.
Such efforts shall consist of achieving the following objectives within the time
period designated below following the EFFECTIVE DATE:
(a) within three (3) months, provide prototype laser equipment for
pre-clinical dose-response studies.
(b) within eighteen (18) months, initiate and thereafter diligently pursue
clinical evaluations of a PRODUCT and in connection therewith take all actions
necessary under the Food, Drug and Cosmetic Act (21 USC 301-391);
(c) within thirty six (36) months, determine whether to manufacture such a
PRODUCT for commercial sale and to inform GENERAL of such determination;
(d) within four (4) years, manufacture and distribute PRODUCT for market
testing;
(e) within five (5) years, introduce PRODUCT in the United States, Europe
and Japan; and
(f) within six (6) years, announce and market for general commercial sale a
PRODUCT on a worldwide basis;
provided, however, that GENERAL shall not unreasonably withhold its consent to
any revision in such time periods whenever requested in writing by COMPANY and
supported by evidence of technical difficulties or delays in clinical studies or
regulatory processes that the parties could not have reasonably avoided. Failure
to achieve one or more of the above objectives within the above stated time
periods or within any extension granted by GENERAL shall result in GENERAL
having the right to cancel upon thirty (30) days notice any exclusive license
granted hereunder or convert any exclusive license to a non-exclusive license.
3.2 At intervals no longer than every six (6) months, COMPANY shall report
in writing to GENERAL on progress made toward the foregoing objectives.
4. FILING, PROSECUTION AND MAINTENANCE OF PATENT RIGHT
4.1 GENERAL shall be responsible for the preparation, filing, prosecution
and maintenance of all patent applications and patents included in PATENT
RIGHTS. COMPANY shall reimburse GENERAL for all reasonable costs ("Costs")
incurred by GENERAL for the preparation, filing, prosecution and maintenance of
all PATENT RIGHTS as follows:
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(a) Subject to paragraph 4.2, for all Costs incurred by GENERAL from and
after the EFFECTIVE DATE, COMPANY shall reimburse GENERAL upon receipt of
invoices from GENERAL;
(b) For all Costs incurred by GENERAL prior to the EFFECTIVE DATE, COMPANY
shall reimburse GENERAL upon execution of this Agreement. Total costs associated
with the PATENT RIGHTS as of the date of this agreement amount to approximately
$ 12,500.
4.2 With respect to any PATENT RIGHT, each document or a draft thereof
pertaining to the filing, prosecution, or maintenance of such PATENT RIGHT,
including but not limited to each patent application, office action, response to
office action, request for terminal disclaimer, and request for reissue or
reexamination of any patent issuing from such application shall be provided to
COMPANY as follows. Documents received from any patent office or counsel's
analysis thereof shall be provided promptly after receipt. For a document to be
filed in any patent office, a draft of such document shall be provided
sufficiently prior to its filing, to allow for review and comment by the other
party. If as a result of the review of any such document, COMPANY shall elect
not to pay or continue to pay the Costs for such PATENT RIGHT, COMPANY shall so
notify GENERAL within thirty (30) days of COMPANY's receipt of such document and
COMPANY shall thereafter be relieved of the obligation to pay any additional
Costs regarding such PATENT RIGHT incurred after the receipt of such notice by
GENERAL. Such U.S. or foreign patent application or patent shall thereupon cease
to be a PATENT RIGHT hereunder and GENERAL shall be free to license its rights
to that particular U.S. patent application or patent to any other party on any
terms.
5. ROYALTIES
5.1 Beginning with the FIRST COMMERCIAL SALE in any country, on all sales
of PRODUCTS anywhere in the world by COMPANY, its AFFILIATES or SUBLICENSEES,
COMPANY shall pay GENERAL royalties in accordance with the following schedule,
such undertaking and schedule having been agreed to for the purpose of
reflecting and advancing the mutual convenience of the parties. For each PRODUCT
sold by COMPANY or its AFFILIATES and SUBLICENSEES;
(a) Four percent (4.0%) of the NET SALES PRICE so long as the PRODUCT, its
manufacture, use or sale is covered by a VALID CLAIM of any PATENT RIGHT
licensed exclusively to COMPANY;
(b) Two percent (2.0%) of the NET SALES PRICE whenever the PRODUCT, its
manufacture, use or sale is covered by a VALID CLAIM of any PATENT RIGHT
licensed non-exclusively to COMPANY in the country in question; and
(c) During each of the ten (10) years next following the FIRST COMMERCIAL
SALE anywhere in the world by COMPANY, its AFFILIATES or LICENSEES, one percent
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(1 %) of the NET SALES PRICE of PRODUCT on which no royalty is payable under
paragraph 5.1(a) or 5.1(b) above.
5.2 (a) In the event that more than one royalty rate under paragraph 5.1
is applicable to a PRODUCT, the highest of the applicable royalties shall apply.
(b) Only one royalty under paragraph 5.1 shall be due and payable to
GENERAL by COMPANY for any PRODUCT regardless of the number of PATENT RIGHTS
covering such PRODUCT.
5.3 If any license granted pursuant to Article 2 shall be or become
non-exclusive and GENERAL shall license any PATENT RIGHT to another licensee for
the purpose of making, using or selling PRODUCTS in the LICENSE FIELD and accept
a royalty or royalties more favorable to such licensee than herein provided for
COMPANY, GENERAL shall give written notice thereof to COMPANY and as of the
EFFECTIVE DATE of such more favorable royalty or royalties, COMPANY's obligation
hereunder to pay royalty or royalties to GENERAL shall be revised to the more
favorable rate.
5.4 In addition to the royalties provided for above, COMPANY shall pay
GENERAL twenty-five percent (25%) of any and all non-royalty income, including
without limitation license fees and milestone payments, received from its
AFFILIATES and SUBLICENSEES in consideration for the sublicensing of any right
or license granted to COMPANY hereunder.
5.5 In addition to the payments provided for in paragraphs 5.1 and 5.4,
COMPANY shall pay GENERAL the following amounts upon the occurrence of the
following events:
25,000 upon execution of this agreement;
$ 50,000 upon issuance by the United States Patent and Trademark Office of
any PATENT RIGHT;
$ 50,000 upon approval by the FDA of the first NDA, 510(k), PMA or PMA
Supplement, or comparable application with respect to a PRODUCT.
5.6 In the event that the royalty paid to GENERAL is a significant factor
in the return realized by COMPANY so as to diminish COMPANY's capability to
respond to competitive pressures in the market, GENERAL agrees to consider a
reasonable reduction in the royalty paid to GENERAL as to each such PRODUCT for
the period during which such market condition exists. Factors determining the
size of the reduction will include profit margin on PRODUCT and on analogous
products, prices of competitive products, total prior sales by COMPANY, and
COMPANY's expenditures in PRODUCT development.
5.7 The payments due under this Agreement shall, if overdue, bear interest
until payment at a per annum rate equal to one percent (1%) above the prime rate
in effect at the Bank of Boston on the due date, not to exceed the maximum
permitted by law. The payment of such
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interest shall not preclude GENERAL from exercising any other rights it may have
as a consequence of the lateness of any payment.
6. REPORTS AND PAYMENTS
6.1 COMPANY shall keep, and shall cause each of its AFFILIATES and
SUBLICENSEES, if any, to keep full and accurate books of accounts containing all
particulars that may be necessary for the purpose of calculating all royalties
payable to GENERAL. Such books of account shall be kept at their principal place
of business and, with all necessary supporting data shall, during all reasonable
times for the three (3) years next following the end of the calendar year to
which each shall pertain be open for inspection at reasonable times by GENERAL
or its designee at GENERAL's expense for the purpose of verifying royalty
statements or compliance with this Agreement.
6.2 In each year the amount of royalty due shall be calculated
semiannually as of the end of each ACCOUNTING PERIOD and shall be paid
semiannually within the sixty (60) days next following such date, every such
payment to be supported by the accounting prescribed in paragraph 6.3 and to be
made in United States currency. Whenever conversion from any foreign currency
shall be required, such conversion shall be at the rate of exchange thereafter
published in the Wall Street Journal for the business day closest to the end of
the applicable ACCOUNTING PERIOD.
6.3 With each semiannual payment, COMPANY shall deliver to GENERAL a full
and accurate accounting to include at least the following information:
(a) Quantity of each PRODUCT sold or leased (by country) by COMPANY, and
its AFFILIATES or SUBLICENSEES;
(b) Total xxxxxxxx for each PRODUCT (by country);
(c) Quantities of each PRODUCT used by COMPANY and its AFFILIATES or
SUBLICENSEES;
(d) Names and addresses of all SUBLICENSEES of COMPANY; and
(e) Total royalties payable to GENERAL.
7. INFRINGEMENT
7.1 GENERAL will protect its PATENT RIGHTS from infringement and prosecute
infringers when, in its sole judgment, such action may be reasonably necessary,
proper and justified.
7.2 If COMPANY shall have supplied GENERAL with written evidence
demonstrating to GENERAL's reasonable satisfaction prima facie infringement of a
claim of a
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PATENT RIGHT by a third party, COMPANY may by notice request GENERAL
to take steps to protect the PATENT RIGHT. GENERAL shall notify COMPANY within
three (3) months of the receipt of such notice whether GENERAL intends to
prosecute the alleged infringement. If GENERAL notifies COMPANY that it intends
to so prosecute, GENERAL shall, within three (three) months of its notice to
COMPANY either (i) cause infringement to terminate or (ii) initiate legal
proceedings against the infringer. In the event GENERAL notifies COMPANY that
GENERAL does not intend to prosecute said infringement COMPANY may, upon notice
to GENERAL, initiate legal proceedings against the infringer at COMPANY's
expense and in GENERAL's name if so required by law. No settlement, consent
judgment or other voluntary final disposition of the suit which invalidates or
restricts the claims of such PATENT RIGHTS may be entered into without the
consent of GENERAL, which consent shall not be unreasonable withheld. COMPANY
shall indemnify GENERAL against any order for payment that may be made against
GENERAL in such proceedings.
7.3 In the event one party shall initiate or carry on legal proceedings to
enforce any PATENT RIGHT against any alleged infringer, the other party shall
fully cooperate with and supply all assistance reasonably requested by the party
initiating or carrying on such proceedings. The party which institutes any suit
to protect or enforce a PATENT RIGHT shall have sole control of that suit and
shall bear the reasonable expenses (excluding legal fees) incurred by said other
party in providing such assistance and cooperation as is requested pursuant to
this paragraph. The party initiating or carrying on such legal proceedings shall
keep the other party informed of the progress of such proceedings and said other
party shall be entitled to counsel in such proceedings but at its own expense.
Any award paid by third parties as the result of such proceedings (whether by
way of settlement or otherwise) shall first be applied to reimbursement of the
unreimbursed legal fees and expenses incurred by either party and then the
remainder shall be divided between the parties as follows:
(a) (i) If the amount is based on lost profits, COMPANY shall receive an
amount equal to the damages the court determines COMPANY has suffered as a
result of the infringement less the amount of any royalties that would have been
due GENERAL on sales of PRODUCT lost by COMPANY as a result of the infringement
had COMPANY made such sales; and
(ii) GENERAL shall receive an amount equal to the royalties it would
have received if such sales had been made by COMPANY; and
(b) As to awards other than those based on lost profits, sixty (60) percent
to the party initiating such proceedings and forty (40) percent to the other
party.
7.4 For the purpose of the proceedings referred to in this Article 7, the
GENERAL and COMPANY shall permit the use of their names and shall execute such
documents and carry out such other acts as may be necessary. The party
initiating or carrying on such legal proceedings shall keep the other party
informed of the progress of such proceedings and said other party shall be
entitled to counsel in such proceedings but at its own expense, said expenses to
be off-set against any damages received by the party bringing suit in accordance
with the foregoing paragraph 7.3.
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8. INDEMNIFICATION
8.1 (a) COMPANY shall indemnify, defend and hold harmless GENERAL and its
trustees, officers, medical and professional staff, employees, and agents and
their respective successors, heirs and assigns (the "Indemnitees"), against any
liability, damage, loss or expense (including reasonable attorney's fees and
expenses of litigation) incurred by or imposed upon the Indemnitees or any one
of them in connection with any claims, suits, actions, demands or judgments
arising out of any theory of product liability (including, but not limited to,
actions in the form of tort, warranty, or strict liability) concerning any
product, process or service made, used or sold pursuant to any right or license
granted under this Agreement.
(b) COMPANY's indemnification under (a) above shall not apply to any
liability, damage, loss or expense to the extent that it is directly
attributable to the negligent activities, reckless misconduct or intentional
misconduct of the Indemnitees.
(c) COMPANY agrees, at its own expense to provide attorneys reasonably
acceptable to the GENERAL to defend against any actions brought or filed against
any party indemnified hereunder with respect to the subject of indemnity
contained herein, whether or not such actions are rightfully brought.
(d) This paragraph 8.1 shall survive expiration or termination of this
Agreement.
8.2 (a) Beginning at such time as any such product, process or service is
being commercially distributed or sold (other than for the purpose of obtaining
regulatory approvals) by COMPANY or by a licensee, affiliate or agent of
COMPANY, COMPANY shall, at its sole cost and expense, procure and maintain
commercial general liability insurance in amounts not less than $2,000,000 per
incident and $2,000,000 annual aggregate and naming the Indemnitees as
additional insureds. Such commercial general liability insurance shall provide
(i) product liability coverage and (ii) broad form contractual liability
coverage for COMPANY's indemnification under paragraph 8.1 of this Agreement. If
COMPANY elects to self-insure all or part of the limits described above
(including deductibles or retentions which are in excess of $250,000 annual
aggregate) such self-insurance program must be acceptable to the GENERAL and the
Risk Management Foundation. The minimum amounts of insurance coverage required
under this paragraph 8.2 shall not be construed to create a limit of COMPANY's
liability with respect to its indemnification under paragraph 8.1 of this
Agreement.
(b) COMPANY shall provide GENERAL with written evidence of such insurance
upon request of GENERAL. COMPANY shall provide GENERAL with written notice at
least fifteen (15) days prior to the cancellation, non-renewal or material
change in such insurance; if COMPANY does not obtain replacement insurance
providing comparable coverage prior to the expiration of such fifteen (15) day
period, GENERAL shall have the right to terminate this Agreement effective at
the end of such fifteen (15) day period without notice or any additional waiting
periods.
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(c) COMPANY shall maintain such commercial general liability insurance
beyond the expiration or termination of this Agreement during (i) the period
that any such product, process, or service is being commercially distributed or
sold (other than for the purpose of obtaining regulatory approvals) by COMPANY
or by a licensee, affiliate or agent of COMPANY and (ii) a reasonable period
after the period referred to in (c) (i) above which in no event shall be less
than fifteen (15) years.
(d) This paragraph 8.2 shall survive expiration or termination of this
Agreement.
8.3 OTHER THAN WARRANTIES SET FORTH HEREIN, GENERAL MAKES NO WARRANTY,
EXPRESS OR IMPLIED, INCLUDING, WITHOUT LIMITATION, ANY IMPLIED WARRANTY OF
MERCHANTABILITY OR ANY IMPLIED WARRANTY OF FITNESS FOR A PARTICULAR PURPOSE WITH
RESPECT TO ANY PATENT, TRADEMARK, SOFTWARE, TRADE SECRET, TANGIBLE RESEARCH
PROPERTY, INFORMATION OR DATA LICENSED OR OTHERWISE PROVIDED TO COMPANY
HEREUNDER AND HEREBY DISCLAIMS THE SAME.
9. TERMINATION
9.1 Unless otherwise terminated as provided for in this Agreement, the
license to PATENT RIGHT granted hereunder will continue on a country by country
basis:
(i) for one (1) year after the date COMPANY, its AFFILIATES, or
SUBLICENSEES shall last sell any PRODUCT in such country, it being understood
that GENERAL shall have the right to terminate such license upon written notice
in any country in the event that after the FIRST COMMERCIAL SALE of PRODUCT in
such country there is a continuous one (1) year period in which no PRODUCT is
sold in such country, provided such sale is not prevented by force majeure,
government regulation or intervention, or institution of a law suit by any third
party, or
(ii) until the last to expire of any PATENT RIGHT, the claims of which but
for this Agreement would be infringed by the manufacture, use or sale of any
PRODUCT in the applicable country,
whichever shall first occur.
9.2 If either party shall fail to faithfully perform any of its
obligations under this Agreement except the due diligence milestones specified
in Article 3 herein, the nondefaulting party may give written notice of the
default to the defaulting party. Unless such default is corrected within thirty
(30) days after such notice, the notifying party may terminate this Agreement
and the license hereunder upon thirty (30) days prior written notice, provided
that only one such thirty (30) day grace period shall be available in any twelve
(12) month period with respect to a default of any particular provision
hereunder. Thereafter notice of default of said provision shall constitute
termination.
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9.3 In the event that any license granted to COMPANY under this Agreement
is terminated, any sublicense under such license granted prior to termination of
said license shall remain in full force and effect, provided that:
(i) the SUBLICENSEE is not then in breach of its sublicense agreement;
(ii) the SUBLICENSEE agrees to be bound to GENERAL as the licensor under
the terms and conditions of this sublicense agreement, as modified by the
provisions of this paragraph 9.3;
(iii) the SUBLICENSEE, at GENERAL's written request, assumes in a signed
writing the same obligations to GENERAL as those assumed by COMPANY under
Articles 8 and 10 hereof;
(iv) GENERAL shall have the right to receive the greater of (a) any
payments payable to COMPANY under such sublicense agreement to the extent they
are reasonably and equitably attributable to such SUBLICENSEE's right under such
sublicense to use and exploit PATENT RIGHTS and/or TECHNOLOGICAL INFORMATION or
(b) the lowest royalty which is within the "Competitive" range as hereinafter
defined, at the time GENERAL's license to COMPANY is terminated. A royalty rate
shall be regarded as "Competitive" if it is within the range of royalty rates
that GENERAL would charge in an arms length transaction with a licensee which
was not and had not been a sponsor of research at GENERAL, taking into account
the value of the licensed technology at the time GENERAL's license to COMPANY is
terminated;
(v) the SUBLICENSEE agrees to be bound by the due diligence obligations of
COMPANY pursuant to paragraph 3.1 hereof (whether set by the parties or by
arbitration) in the field and territory of the sublicense;
(vi) GENERAL has the right to terminate such sublicense upon fifteen (15)
days prior written notice to COMPANY and such SUBLICENSEE in the event of any
material breach of the obligation to make the payments described in clause (iv)
of this paragraph 9.3, unless such breach is cured prior to the expiration of
such fifteen (15) day period, and shall further have the right to terminate such
sublicense in the event of SUBLICENSEE's failure to meet its due diligence
obligations pursuant to clause (v) hereof;
(vii) GENERAL shall not assume, and shall not be responsible to such
SUBLICENSEE for, any representations, warranties or obligations of COMPANY to
such SUBLICENSEE, other than to permit such SUBLICENSEE to exercise any rights
to PATENT RIGHTS and TECHNOLOGICAL INFORMATION that are granted under such
sublicense agreement consistent with the terms of this AGREEMENT.
9.4 Upon termination of any license granted hereunder COMPANY shall pay
GENERAL all royalties due or accrued on (i) the sale of PRODUCT up to and
including the date of termination and (ii) for twelve (12) months following the
date of termination, the sale of PRODUCT manufactured prior to the termination
date.
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10. MISCELLANEOUS
10.1 This Agreement constitutes the entire understanding between the
parties with respect to the subject matter hereof.
10.2 In order to facilitate implementation of this Agreement, GENERAL and
COMPANY are designating the following individuals to act on their behalf with
respect to this Agreement for the matter indicated below:
(a) with respect to all royalty payments, any correspondence pertaining to
any PATENT RIGHT, or any notice of the use of GENERAL's name, for GENERAL, the
Director, Office of Technology Affairs, and for COMPANY the Chief Executive
Officer; provided that correspondence relating to the billing of patent costs
shall be copied to, for GENERAL, the Business Manager, Office of Technology
Affairs; and for COMPANY, the Chief Executive Officer.
(b) any amendment of or waiver under this Agreement, any written notice
including progress reports or other communication pertaining to the Agreement:
for GENERAL, the Director, Office of Technology Affairs; and for COMPANY, the
Chief Executive Officer.
(c) the above designations may be superseded from time to time by
alternative designations made by: for GENERAL, the President or the Senior Vice
President for Research and Technology Affairs; and for COMPANY, the Chief
Executive Officer.
10.3 This Agreement may be amended and any of its terms or conditions may
be waived only by a written instrument executed by the parties or, in the case
of a waiver, by the party waiving compliance. The failure of either party at any
time or times to require performance of any provision hereof shall in no manner
affect its rights at a later time to enforce the same. No waiver by either party
of any condition shall be deemed as a further or continuing waiver of such
condition or term or of any other condition or term.
10.4 This Agreement shall be binding upon and inure to the benefit of and
be enforceable by the parties hereto and their respective successors and
permitted assigns.
10.5 Any delays in or failures of performance by either party under this
Agreement shall not be considered a breach of this Agreement if and to the
extent caused by occurrences beyond the reasonable control of the party
affected, including but not limited to: Acts of God; acts, regulations or laws
of any government; strikes or their concerted acts of worker; fires; floods;
explosions; riots; wars; rebellion; and sabotage. Any time for performance
hereunder shall be extended by the actual time of delay caused by such
occurrence.
10.6 Neither party shall use the name of the other party or of any staff
member, officer, employee or student of the other party or any adaptation
thereof in any advertising, promotional or sales literature, publicity or in any
document employed to obtain funds or financing without
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the prior written approval of the party or individual whose name is to be used.
For GENERAL, such approval shall be obtained from the Director of Public
Affairs.
10.7 This Agreement shall be governed by and construed and interpreted in
accordance with the laws of the Commonwealth of Massachusetts.
10.8 This Agreement shall not be assignable by GENERAL without COMPANY's
written consent except for the right to receive royalties or other payments
payable herein. COMPANY may at its own discretion and without approval by
GENERAL transfer its interest or any part thereof under this Agreement to a
wholly-owned subsidiary or any assignee or purchaser of the portion of its
business associated with the manufacture and sale of PRODUCT. In the event of
any such transfer, the transferee shall assume and be bound by the provisions of
this Agreement. Otherwise this Agreement shall be assignable by COMPANY only
with the consent in writing of GENERAL.
10.9 For any and all claims, disputes, or controversies arising under, out
of, or in connection with this Agreement, except issues relating to the
validity, construction or effect of any PATENT RIGHT, which the parties shall be
unable to resolve within sixty (60) days, the party raising such dispute shall
promptly advise the other party of such claim, dispute, or controversy in a
writing which describes in reasonable detail the nature of such dispute. By not
later than five (5) business days after the recipient has received such notice
of dispute, each party shall have selected for itself a representative who shall
have the authority to bind such party and shall additionally have advised the
other party in writing of the name and title of such representative. By not
later than ten (10) business days after the date of such notice of dispute, such
representatives shall agree upon a third party which is in the business of
providing Alternative Dispute Resolution (ADR) services (hereinafter, "ADR
Provider") and shall schedule a date with such ADR Provider to engage in ADR.
Thereafter, the representatives of the parties shall engage in good faith in an
ADR process under the auspices of the selected ADR Provider. If within the
aforesaid thirty (30) business days after the date of the notice of dispute the
representatives of the parties have not been able to agree upon an ADR Provider
and schedule a date to engage in ADR, or if they have not been able to resolve
the dispute within thirty (30) business days after the termination of ADR, the
parties shall have the right to pursue any other remedies legally available to
resolve such dispute in either the Courts of the Commonwealth of Massachusetts
or in the United States District Court for the District of Massachusetts, to
whose jurisdiction for such purposes GENERAL and COMPANY hereby irrevocably
consents and submits. Notwithstanding the foregoing, nothing in this Paragraph
10.9 shall be construed to waive any rights or timely performance of any
obligations existing under this Agreement.
10.10 If any provision(s) of this Agreement are or become invalid, are
ruled illegal by any court of competent jurisdiction or are deemed unenforceable
under then current applicable law from time to time in effect during the term
hereof, it is the intention of the parties that the remainder of this agreement
shall not be effected thereby. It is further the intention of the parties that
in lieu of each such provision which is invalid, illegal or unenforceable, there
be substituted or added as part of this Agreement a provision which shall be as
similar as possible in economic
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and business objectives as intended by the parties to such invalid, illegal or
enforceable provision, but shall be valid, legal and enforceable.
THE PARTIES have duly executed this Agreement as of the date first shown
above written.
COMPANY THE GENERAL HOSPITAL CORPORATION
BY: /s/ Xxxxx Xxxxxxxx BY: /s/ Xxxxx X. Xxxxx
----------------------------- ----------------------------------
Xxxxx Xxxxxxxx Xxxxx X. Xxxxx Phd
TITLE: CEO/CFO TITLE: Associate Director for Patents
Laser Photonics, Inc. office of Technology Affairs
-------------------------- ------------------------------
DATE: December 16, 1997 DATE: November 26, 1997
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