EXHIBIT 10.30
EXCLUSIVE LICENSE AGREEMENT
AGREEMENT, made on this 27 day of February, 1997, by and
between ECHOCATH, INC., a New Jersey Corporation maintaining
its principal offices at 0000 Xxxxx Xxx, Xxxxxxxx Xxxxxxxx,
Xxx Xxxxxx 00000 ("EchoCath"), and EP MEDSYSTEMS INC., a New
Jersey corporation maintaining its principal offices 00
Xxxxx 00 Xxxx Xxxx Xxxx, Xxx Xxxxxx 00000 ("EP MedSystems").
W-I-T-N-E-S-S-E-T-H
WHEREAS, EchoCath has developed certain proprietary
technology related to ultrasound guidance and imaging, which
technology is the subject of the Patents (as defined below),
and
WHEREAS, EchoCath is the exclusive owner with respect to
such proprietary technology; and
WHEREAS, EP MedSystems desires to obtain from EchoCath an
exclusive license with respect to such proprietary
technology within the Field of Use as defined below to make,
have made, use and sell medical products as limited herein;
and
NOW THEREFORE, in consideration of the above promises and
the mutual covenants herein contained and other good and
sufficient consideration, the receipt and sufficiency of
which is hereby acknowledged, the parties agree as follows.
ARTICLE 1. DEFINITIONS
In this Agreement and in the License referred to herein,
unless the context otherwise requires, the following
definitions shall apply:
1.1 "Product(s)" means any product made, used or sold
coming within the scope of the Field of Use and of the
claims of one or more of the Patents (as defined below).
"Products"' expressly exclude any interface hardware or
sensors to be used with the Products. Such interface
hardware and sensors will be sold to EP MedSystems by
EchoCath pursuant to the terms of separate agreements for
the purchase of such items.
1.2 "Affiliate" means any corporation or other
business entity controlled by, controlling, or under common
control with a party hereto, with "control" meaning direct
or indirect beneficial ownership of more than fifty percent
(50%) of the voting stock of, or more than a fifty percent
(50%) interest in the income of, or the right to receive
more than fifty percent (50%) of the distributed profits of,
such corporation or other business entity, or such other
relationship as, in fact, constitutes actual control.
1.3 "EchoEye" means EchoCath's proprietary technology
for allowing clinicians to view tissues and organs in three-
dimensional real-time and provide forward looking
intravascular images and guidance for ultrasound guided
procedures, and covered by the Patents.
1.4 "EchoMark" means EchoCath's proprietary catheter
positioning system which is covered by the Patents.
1.5 "ColorMark" means EchoCath's proprietary needle
and stylete positioning system which is covered by the
Patents.
1.6 "Effective Date" means the date first above
written, which shall be the date of execution of this
Agreement.
1.7 "Exclusive" means, with respect to the grant of a
license, a license whereby the licensee's rights are sole
and entire, and operate to exclude all others, including the
licensor. An Exclusive licensee (and permitted sub-
licensees) may sell and distribute Products through agents
and distributors under exclusive or non-exclusive
arrangements in any country in the Territory. The Exclusive
licensee may exercise its licensed rights itself or through
its permitted sub-licensees or its Affiliates.
1.8 "Field of Use" shall include the application of
the EchoMark, EchoEye and ColorMark technologies as they
apply to any and all systems and products which are designed
and/or manufactured for electrophysiology applications to
include but not limited to mapping, ablation and internal
cardioversion. The Field of Use specifically excludes
permanent pacemaker leads and permanent defibrillator leads
attached to permanent implantable pulse generators.
1.9 "Improvement" means any modification, development
or invention (whether patentable or non-patentable) relating
to the subject matter of the Licensed Rights.
1.10 "Licensed Rights" means the Patents and the
Technical Information and their Improvements which is
proprietary to EchoCath and not readily available to any
third party which is disclosed to EP MedSystems under this
agreement.
11.1 "Net Sales" means the aggregate gross sales price
of Product(s) invoiced to non-Affiliated third parties in an
arms-length transaction by EP MedSystems, its Affiliates and
any sub-licensees pursuant to this Agreement less discounts
to foreign distributors and the following deductions:
(a) transportation and insurance charges or
allowances, if any,
(b) credits or allowances, if any, given or made on
account of the return or rejection of any royalty-
bearing Product sold, and
(c) any tax, duty, or other governmental
charge on the importation or exportation, sale or use of any
royalty-bearing Product (including, without limitation,
sales taxes).
1.12 "Patents" means, individually and collectively,
(i) the patents specified in Schedule A attached hereto for
the EchoMark, EchoEye and ColorMark technologies and which
correspond to the patent numbers listed on Schedule A, and,
(ii) patents, re-examinations, re-issues, renewals,
extensions, divisionals and continuations issued thereon and
all foreign counterparts to the Patents.
1.13 "Technical Information" means all know-how,
specifications and drawings, process information, flow
charts, equipment specifications, and any other documents or
information, and improvements thereof, which relate to or
are used or useful in connection with the Patents as related
to their application in the Field of Use.
1.14 "Term" means the period during which this
Agreement is in force.
1.15 "Territory" means the entire world, without
exception.
ARTICLE 2. GRANTS
2.1 Grant of License. EchoCath hereby grants EP
MedSystems and EP MedSystems' Affiliates solely within the
Field of Use the Exclusive right and license under the
Licensed Rights to use the Licensed Rights to make, have
made, use, and sell Product(s) in the Territory as limited
within the Field of Use.
2.2 Trademarks. EchoCath hereby grants EP MedSystems
a license to use the EchoEye, EchoMark, and ColorMark
trademarks solely in connection with uses consistent with
the Field of Use and shall identify EchoCath as the owners
of such marks.
ARTICLE 3. ROYALTIES
3.1 Initial License Fee. In consideration of the
License herein granted, EP MedSystems shall pay to EchoCath
an initial license fee of $700,000 payable as follows:
a) $150,000 upon the successful completion of a
limited series (5 patients) single site
feasibility IDE of EchoMark Guided Ablation.
b) $400,000 upon completion of a development
program for EchoEye that shall include these
Milestones: (i) demonstration by March 30,1998 of
a bench EchoEye system capable of visualization of
the myocardium of human-size cardiac structures,
and (ii) demonstration by September 30, 1998 of
the use of an EchoEye in at least 5 animals to
view and display endocardial tissue using a
transvascular approach.
c) $l50.000 after the sale of the first 100
EchoMark EP catheters.
3.2 The total cumulative royalties paid under this
Agreement shall be limited to and shall not exceed thirty
million dollars ($30,000,000). During the term of this
Agreement, EP MedSystems shall pay a Royalty to EchoCath
equal to two percent (2%) of Net Sales of Products by EP
MedSystems and EP MedSystems' Affiliates and any
sublicensees pursuant to this Agreement in the Territory.
If a Product is sold as a component of a procedure package
or kit containing other items which are not Products, (i)
the royalty due shall be calculated with respect to the list
price (as if sold separately) of the Product component only
and (ii) any percentage discount given or allowed to a
customer on the list price of the procedure package or kit
shall be applied to the list price (as if sold separately)
of the components Product.
3.3 Minimum Royalties. Notwithstanding the Royalties
to be calculated and paid per paragraph 3.2, beginning
January 1, 1999, EP MedSystems shall pay to EchoCath minimum
quarterly royalties in each calendar quarter, payable no
later than 30 days after the end of each quarter, according
to the following schedule:
Quarterly
YEAR Minimum Payments
1999 $ 30,000
2000 $ 40,000
2001 $ 50,000
2002 $ 60,000
2003 $ 70,000
2004 $ 80,000
2005 and each year
thereafter $100,000
Failure to make any payment of minimum Royalties in a timely
manner shall result in EchoCath's option to at any time
either terminate in writing this Agreement or to render it
as a non-exclusive license agreement. EP MedSystems shall
have a 10 day cure period after the written notice prior to
the effective date of termination under this section for non-
payment. In the event EchoCath terminates this Agreement,
then it shall refund to EP MedSystems such amounts as have
been actually paid to it pursuant to paragraph 3.1 above.
In the event any of the Patents are ruled invalid, the
parties agree to engage in good faith discussions for
renegotiation of the minimum Royalties, to the extent
impacted by such invalidity.
3.4 Notwithstanding anything to the contrary contained
herein, (i) any amounts payable to EchoCath by EP MedSystems
pursuant to Section 3.2 and 3.3 above on any royalty payment
date shall be reduced, but not to an amount below zero, by
an amount equal to the amount of any dividends under
EchoCath's Series B Cumulative convertible Preferred Stock
("Preferred Stock") which are accrued but not paid as of
such date, (ii) the amount by which such royalties are
reduced shall be deemed to be payment of such accrued but
unpaid dividends in an amount
equal to such reduction, and (iii) amounts payable as
royalties pursuant to Sections 3.2 and 3.3 above will not be
paid to EchoCath unless all dividends payable under the
Preferred Stock have been paid as of such royalty payment
date. In the event any shares of Preferred Stock are
transferred from EP MedSystems to a third party unaffiliated
with EP MedSystems ("Holder"), and this Agreement is not
also assigned by EP MedSystems to such Holder, such
Holder shall not be entitled to the offset rights set forth
in this Section 3.4 with respect to such shares.
3.5 One Royalty Only. Any royalty due hereunder
shall be payable only on the first arms length sale of each
Product and all subsequent sales or uses of that Product by
such buyer shall be royalty free. Only one (1) royalty per
Product sale will be due regardless of the number of Patents
involved in a Product.
ARTICLE 4. ROYALTY RECORDS, PAYMENTS AND STATEMENTS
4.1 Records. EP MedSystems agrees during the term of
this Agreement to keep full and accurate records for
EchoCath, showing the quantity and nature of Products sold
by EP MedSystems, its Affiliates and any sublicensee, the
Net Sales price thereof, and the basis for the calculation
of royalties. These records shall be open to inspection,
only once each calendar year, by EchoCath's representative
or certified public accountant, not reasonably objectionable
to EP MedSystems, at EchoCath's expense, during EP
MedSystems' business hours, and upon reasonable notice to EP
MedSystems.
4.2 Payments and Credit Calculations.
(a) All royalty payments provided for within this
Agreement shall be made by EP MedSystems to EchoCath at
the address of EchoCath, as indicated hereinafter, or
at any other place designated by EchoCath to EP
MedSystems in writing. Royalties, if any, shall he
payable quarterly after the end of each calendar
quarter, respectively, with respect to Net Sales made
during such quarterly period; provided, however, that
no royalty shall be payable with respect to any sale of
Product unless and until EP MedSystems receives full
payment with respect to such sale. All such payments
shall be made on or before the thirtieth (30th) day of
the month following the end of the period for which the
payment is made. A report will be made on a form
provided by EP MedSystems, which will provide
reasonably necessary information to apprise EchoCath of
sales by EP MedSystems, its Affiliates and any
sublicensees pursuant to this Agreement and the basis
for the royalties paid.
(b) All royalty payments as well as any other
payments by EP MedSystems to EchoCath, pursuant to this
Agreement, shall be payable in United States currency.
Currency exchange rates applicable to such payments
shall be calculated on the basis of the selling price
of United States currency as reported in The Wall
Street Journal, Eastern Edition, on the last business
day of the calendar month preceding the payment date.
If no such rate of exchange can be determined as of
such date because of governmental regulations, exchange
controls, absence of currency transactions, or
otherwise, there shall be substituted the most recent
preceding date as of which such a rate of exchange can
be determined.
(c) if, by law, regulations, or fiscal policy of a
particular country, conversion into or transfer to
United States dollars is restricted or forbidden,
notice thereof in writing will be given to EchoCath,
and payment of the royalty will be made through such
lawful means or methods as EchoCath reasonably
designates. Failing the designation by EchoCath of
lawful means or methods as aforesaid within sixty (60)
days after the aforementioned notice is given to
EchoCath, the payment of royalty by EP MedSystems or
its Affiliates will be made by the deposit thereof in
local currency to the credit of EchoCath in a
recognized banking institution designated by EchoCath
or, if none be designated by EchoCath within the period
of sixty (60) days as aforesaid, then in a recognized
banking institution notified to EchoCath by EP
MedSystems or its Affiliates. When in any country the
law or regulations prohibits both the transmittal and
deposit of royalties on sales in that country, royalty
payments will be suspended for as long as that
prohibition is in effect, and as soon as the
prohibition ceases to be in effect, all royalties which
EP MedSystems or its Affiliates would have been under
obligation to transmit or deposit, but for the
prohibition, will forthwith be promptly deposited or
transmitted to the extent allowable, as the case may
be.
(d) Any and all taxes levied by a proper taxing
authority and paid by EP MedSystems or its Affiliates
on account of royalties accruing to EchoCath under this
Agreement, remittable from a country in which provision
is made in the law or by regulation for withholding of
taxes, may be deducted from royalties paid by EP
MedSystems or its Affiliates, provided EchoCath can
obtain the benefit of that deduction by way of a tax
credit, and provided proof of payment is secured and
sent promptly by EP MedSystems or its Affiliates to
EchoCath as evidence of payment.
ARTICLE 5. PATENT APPLICATIONS AND EXPENSES
5.1 Patent Applications. EchoCath shall be responsible
for the preparation, filing, prosecution, maintenance and
taxes associated with the Patents and for all costs and
expenses associated therewith in countries where it has
filed for patent protection. The countries in which EchoCath
has filed for patent protection are listed on Schedule B
hereto. If EP MedSystems wishes to file patent applications
in additional countries, it will be responsible for the
costs thereof in each country, which will be reimbursed by
the royalties generated in each country and EP MedSystems
shall be permitted to deduct such costs from the royalties
due EchoCath in each such particular country. After the cost
of patent prosecution in each particular country has been
reimbursed, EchoCath will receive its regular royalty
thereafter.
ARTICLE 6. TECHNICAL INFORMATION
6.1 Delivery of Technical Information. EchoCath shall
within a reasonable time after execution of this Agreement,
deliver to EP MedSystems the Technical Information, as
reasonably requested by EP MedSystems.
6.2 FDA Submissions. EchoCath shall promptly upon
execution of this Agreement, transfer to EP MedSystems all
rights with respect to and pursuant to any and all FDA
510(k) approvals relating to the Products. EchoCath will
provide reasonable assistance and cooperation for such FDA
applications, and EP MedSystems will reimburse EchoCath for
its reasonable and customary costs and expenses and for its
out-of-pocket expenses for such assistance, subject to EP
MedSystems' authorization for these costs.
ARTICLE 7. IMPROVEMENTS
7.1 Pre-existing Intellectual Property. Any
intellectual property that exists as of the execution of
this Agreement shall remain the property of its original
owner, whether or not it is shared with or used by the other
party for purpose of this Agreement.
7.2 Improvements. Any Improvements made by a party
during the term of this Agreement exclusively using its own
resources and invented by its own personnel shall remain the
property of the inventing party.
7.3 Joint Improvements. Any Improvements made jointly
by personnel of EP MedSystems and EchoCath shall be owned
jointly with each party having joints rights to use and
license. EP MedSystems has exclusive license rights under
the EchoCath share in the Joint Inventions within the Field
of Use. The Royalties payable by EP MedSystems to EchoCath
for the right to use and license such Joint Inventions and
the terms for calculation thereof shall be in accordance
with the terms of Sections 3.2 and 3.3 above.
ARTICLE 8. DISTRIBUTION AGREEMENT
8.1 Distribution Agreement. In connection with this
Agreement, the parties have simultaneously with the
execution hereof executed a Distribution Agreement
(Interface Hardware) and a purchase Agreement (Sensors).
Notwithstanding the related nature of these agreements there
shall be no cross-default provisions among this Agreement
and the other Agreements.
ARTICLE 9. INFRINGEMENT
9.1 Infringement of Third Party Patent. With respect
to third party patents, where it is alleged by a person
(herein the "Xxxxxxx") other than EchoCath, EP MedSystems or
an Affiliate thereof that the manufacture or sale of
Product by or on behalf of EP MedSystems infringes one (1)
or more valid patents held by the Xxxxxxx or any person
through or under whom the Xxxxxxx claims the parties agree
as follows:
(a) Each party shall, immediately upon becoming aware
of any such allegation, notify the other party in
writing of the nature and substance of the allegation.
(b) EchoCath shall have the first option at its
discretion to negotiate for a license with the Xxxxxxx
or to defend or initiate any corresponding legal
action. If requested, EP MedSystems will provide
EchoCath with reasonable assistance and cooperation in
the conduct of any such action.
(c) If EchoCath is unwilling or unable to take action
under paragraph (b) of this Section 9.1. EP MedSystems
may take such action. Under such circumstances, if EP
MedSystems requests, EchoCath will provide EP
MedSystems with reasonable assistance and cooperation
in the conduct of any such action. EchoCath agrees to
reimburse all of EP MedSystems' reasonable costs in
defending such action to the extent of all royalties
paid under Article 3 by EP MedSystems to EchoCath
hereunder.
(d) Each party shall keep the other party reasonably
informed of any proceedings hereunder.
9.2 Prosecution of Infringement of Licensed Technology
by Third Party.
(a) Each of EP MedSystems and EchoCath shall
promptly notify the other if it knows or has reason to
believe that rights to the Licensed Technology are
being infringed or misappropriated by a third party
within the Field of Use or that such infringement or
misappropriation is threatened. EP MedSystems shall,
after learning of and investigating such alleged
infringement or misappropriation, send notice to
EchoCath electing to do one of the following: (i)
prosecute such alleged infringement or misappropriation
for EP MedSystems' own account; (ii) offer EchoCath the
choice of participating in such prosecution; or (iii)
decline to prosecute such alleged infringement or
misappropriation.
(b) In the event EP MedSystems elects to prosecute
such alleged infringement or misappropriation for its
own account pursuant to (a)(i) above, EP MedSystems
shall be solely responsible for payment of all of its
own costs of prosecution and of negotiating settlement,
and shall retain all proceeds from such prosecution. EP
MedSystems shall have the right to join EchoCath as a
party plaintiff to any such proceeding if EP MedSystems
believes it is necessary to successfully prosecute such
infringement or misappropriation. EchoCath shall
cooperate, at EP MedSystems' expense, in connection
with the initiation and prosecution by EP MedSystems of
such suit.
(c) In the event EP MedSystems offers EchoCath the
choice of participating in such prosecution pursuant to
(a) (ii) above. upon receipt of EP MedSystems' notice,
EchoCath shall have thirty (30) days in which to notify
EP MedSystems in writing of EchoCath's election to
participate in the prosecution of such alleged
infringement or misappropriation. If EchoCath elects to
participate, EchoCath shall be obligated to pay fifty
percent (50%) of the costs and expenses incurred by EP
MedSystems and EchoCath in such prosecution and shall
be entitled to receive fifty percent (50%) of the net
proceeds realized from EchoCath and EP MedSystems
prosecuting of such matter and remaining after
reimbursement of EP MedSystems' and EchoCath's costs
and expenses out of the proceeds of such matter.
(d) In the event EP MedSystems elects not to
prosecute pursuant to (a) (iii) above, EchoCath may, at
its option, prosecute such alleged infringement or
misappropriation for its own account, in which event
EchoCath shall be solely responsible for all costs of
prosecution and of negotiating settlement and shall
retain all proceeds from such prosecution.
(e) Each party shall keep the other party reasonably
informed of any proceedings hereunder.
ARTICLE 10. REPRESENTATIONS, WARRANTIES AND
INDEMNIFICATION
10.1 EchoCath Representations. EchoCath hereby
represents and warrants as follows:
(a) The Licensed Rights being licensed hereunder are
subsisting and are not invalid or unenforceable, in
whole or in part.
(b) EchoCath has the full right, power, authority and
legal ability to enter into this Agreement, to grant
the license and rights set forth herein and to perform
its obligations hereunder. EchoCath is the sole and
exclusive licensor of the Licensed Rights, which are
free and clear of any liens, charges or encumbrances.
(c) EchoCath is the owner of all right title and
interest in and to the Licensed Rights and no
conflicting claims of ownership exist or are
outstanding.
(d) The Licensed Rights do not violate the patent,
trade secret or other proprietary or intellectual
property rights of any other person or entity.
(e) It has not granted any license of the Licensed
Rights for the Field of Use to any third party.
(f) There is no present intention to alter or change
the agreement regarding forfeitable shares as it is
described on page 17 of the EchoCath prospectus dated
January 17, 1996.
10.2 EP MedSystems Representations. EP MedSystems
hereby represents and warrants as follows:
(a) EP MedSystems has the full right, power authority
and ability to enter into this Agreement and to
perform its obligations hereunder.
(b) EP MedSystems is a corporation duly organized,
validly existing and in good standing under the laws of
the State of New Jersey, is not subject to any
conflicting obligations which will or might prevent it
from, or interfere with, its execution of this
Agreement and/or its performance hereunder.
(c) that the execution and delivery of this Agreement
by EP MedSystems has been duly and validly authorized
by all necessary corporate action on the part of EP
MedSystems, and that this Agreement is a valid and
binding obligation of EP MedSystems enforceable against
it.
10.3 Indemnification.
(a) EchoCath shall indemnify and hold EP MedSystems
harmless from any damages, costs and fees (including,
without limitation, reasonable attorneys fees) suffered
or otherwise incurred by EP MedSystems and its
Affiliates as a consequence of any breach by EchoCath
of the warranties set forth in Section 10.1 above.
(b) EP MedSystems shall indemnify and hold EchoCath
harmless from any damages, costs and less (including,
without limitation, reasonable attorneys fees) suffered
or otherwise incurred by EchoCath and its Affiliates as
a consequence of any breach by EP MedSystems of the
warranties set forth in Section 10.2 above.
10.4 Survival of Representations and Warranties.
Notwithstanding any provision of this Agreement to the
contrary, the provisions of Sections this Article 10 shall
survive until barred by any applicable statute of
limitations.
ARTICLE 11. LIMITATION OF LIABILITY
11.1 EP MedSystems shall not be liable to EchoCath with
respect to any and all claims of any kind or nature
whatsoever relating, directly or indirectly, to the
negotiation, execution or performance of this Agreement
(including claims based on breach of contract or tort
including fraud but excluding claims based in products
liability) in excess of $30,000,000. Under no circumstances
shall EP MedSystems be liable to EchoCath for indirect
incidental, consequential, special or punitive damages.
11.2 EchoCath shall not be liable to EP MedSystems with
respect to any and all claims of any kind or nature
whatsoever relating, directly or indirectly to the
negotiation, execution or performance of this Agreement
(including claims based on breach of contract or loss
including fraud but excluding claims based in products
liability) in excess of $30,000,000. Under no circumstances
shall EchoCath be liable to EP MedSystems for indirect,
incidental, consequential, special or punitive damages.
11.3 The parties acknowledge and agree that the
foregoing provisions are reasonable and appropriate
ARTICLE 12. TERM AND TERMINATION
12.1 Term. The term of this Agreement shall be from
the Effective Date until the last to expire Patent
right licensed hereunder including the last to expire Patent
for any Improvements, unless this Agreement is terminated
earlier as provided in Section 12.3 below
12.2 Rights Upon Termination.
(a) Upon expiration or termination of this Agreement
pursuant to Section l2.1 above (but not pursuant to
Section 12.3 below), and payment by EP MedSystems of
any unpaid royalty then due EchoCath under this
Agreement, all duties obligations and responsibilities
of EP MedSystems under this Agreement shall be deemed
fulfilled and satisfied, and EP MedSystems shall have
no future duty. obligation or responsibility to
EchoCath whatsoever. Without limiting the foregoing,
upon expiration of this Agreement, EP MedSystems may
retain and continue to use the Technical Information
for any purpose and shall have a paid-up non-terminable
license in the Territory under the Licensed Rights to
make, have made, use and sell Product(s) without any
further duty, obligation or responsibility to EchoCath
whatsoever.
(b) In the event that this Agreement is terminated
by EP MedSystems, as the Aggrieved Party, as provided
for in Section 12.3 hereunder, EP MedSystems will have,
at its option, the right to purchase the Licensed
Rights for a once and for all payment to EchoCath. Such
payment will be in an amount equal to the royalties
payable hereunder for the calendar year immediately
preceding that calendar year in which EchoCath became
the Defaulting Party under Section 12.3 hereunder.
(c) In the event that this Agreement is terminated,
as provided for in clause 12.3 hereunder, and EchoCath
is the Aggrieved Party, then EP MedSystems undertakes
to return to EchoCath all the Technical Information
provided to EP MedSystems by EchoCath.
12.3 Termination. Notwithstanding Section l2.1 above,
either party to this Agreement (the "Aggrieved Party") may,
at its sole option and upon giving written notice to the
other Party, immediately terminate this Agreement upon any
one or more of the following events occurring in relation to
the other party (the "Defaulting Party"):
(a) insolvency of the Defaulting Party;
(b) judicial or private receivership of the Defaulting
Party;
(c) the Defaulting Party making an assignment for the
general benefit of its creditors or committing an act
of bankruptcy or being declared bankrupt;
(d) the Defaulting Party's taking or becoming subject
to proceedings for its dissolution or the winding up or
liquidation of its business, or in any way ceasing to
carry on business, except as effected by corporate
reorganization of either party hereto not involving
change in the ultimate control or ownership of such
party; or
(e) if the Defaulting Party shall commit any material
or substantial breach of any of its obligations or
representations or warranties herein, or of any of the
provisions of this Agreement, and such Defaulting Party
shall fail within thirty (30) days of being notified
thereof in writing by the Aggrieved Party to remedy
such breach or default.
12.4 Claims. In the event this Agreement is terminated
by an Aggrieved Party in accordance with the foregoing
provisions of either Sections l2.1, 12.3(a) to 12.3(d),
neither party shall have any claim against the other for
compensation or indemnity of any kind as a consequence of
such termination, provided, however, that such termination
shall not affect any of the obligations hereunder having
arisen prior to the effective date of termination.
ARTICLE 13. MISCELLANEOUS
13.1 Governing Law; Consent to Jurisdiction. This
Agreement and its effects are subject to and shall be
construed and enforced in accordance with the law of the
State of New Jersey, except as to any issue which by the law
of New Jersey depends upon the validity, scope or
enforceability of any Patent within the Licensed Rights
which issue shall be determined in accordance with the
applicable patent laws of the jurisdiction which issued the
Patent. The parties agree that the exclusive jurisdiction
and venue for any dispute or controversy arising from this
Agreement shall be in an appropriate State Court in the
State of New Jersey or the United States District Court for
the District of New Jersey.
13.2 Governmental Consent to Exportation. This
Agreement is made subject to any restrictions concerning the
export of products or technical information from the United
States which may be imposed upon or related to EP MedSystems
or EchoCath from time-to-time by the government of the
United States.
13.3 Force Majeure. Any delays in or failure of
performance by either Party under this Agreement shall not
be considered a breach thereof if such delay or failure is
occasioned by force majeure and is therefore beyond the
reasonable control of the Party affected. Force majeure in
this context shall mean and include but not be limited to
acts of government or failure of government to act where
such action is required, acts of God, strikes or other
concerted acts of workmen including workmen of the Parties,
fires, floods, explosions, riots, civil disturbances,
insurrections, earthquakes, wars, rebellions, epidemics and
sabotage.
13.4 Severability. Should any provision of this
Agreement be held by a court to be illegal or in conflict
with any law, ride of law, statute or regulation, the
validity of the remaining provisions will not be affected
thereby. Any waiver by one party of any rights arising
from any breach by the other party will not be construed as
a waiver of other breaches of the same or other terms of
this Agreement
13.5 Notices. Any notice to be given pursuant to this
Agreement shall be delivered (i) personally to the place of
business of the Party to whom it is addressed, (ii) by
prepaid, registered mail, return receipt requested, or (iii)
via Federal Express or other internationally known and
reputable overnight delivery service, and addressed as
follows:
(a) in the case of EchoCath to: EchoCath, Inc.,
0000 X.X Xxxxx Xxx
Xxxxxxxx Xxxxxxxx, Xxx Xxxxxx X0000
Attn.: President
With a copy to: EchoCath, Inc.
PO. Xxx 0000
Xxxxxxxxx, Xxx Xxxxxx 00000-0000
Attn.: President
(b) in the case of EPMedSystems to:
EP MedSystems, Inc.
00 Xxxxx 00 Xxxx
Xxxx Xxxx, Xxx Xxxxxx 00000
Attn.: Xxxxx Xxxxxxx, President
13.6 Successors. This Agreement shall be binding upon
and shall endure to the benefit of both EchoCath and EP
MedSystems together with each of their respective
affiliates, subsidiaries, successors and assigns, together
with all other persons who are controlled by such person(s)
13.7 Entire Agreement. This Agreement constitutes the
entire agreement between the Parties concerning the Patents
and the rights granted thereunder and supersedes all prior
understandings oral or written. Any representations,
warranties, terms, conditions or covenants to amend, modify
or otherwise alter this Agreement shall be of no force or
effect unless made in writing and signed by both parties.
13.8 Assignment. This Agreement and the
performance of substantially all of its obligations
hereunder, may not be assigned by a party hereto without the
prior written consent of the other party which consent shall
not be unreasonably withheld but shall be binding upon and
inure to the benefit of and be enforceable by the parties
hereto, their successors, and permitted assignees; provided,
however, that either party shall be entitled to assign its
obligations under this Agreement without the consent of the
other party, in the event of a merger, sale of
substantially all of its assets or other acquisition of such
party, or to any affiliate of that party provided that such
assignee assumes the assigning party's obligations
hereunder, EP MedSystems shall be permitted to exercise its
license rights hereunder through sublicensees or affiliates
so long as EP MedSystems remains primarily liable hereunder.
13.9 This Agreement may be executed in one or more
counterparts, all of which shall be considered one and the
same agreement, and shall become effective when one or more
counterparts have been signed by each of the parties and
delivered to the parties.
IN WITNESS WHEREOF, the parties hereto have affixed their
names and seals by their duly authorized executive officers
on the day and year first above written.
ATTEST ECHOCATH, INC.
/s/ Xxxxx X. Xxxxxx By:/s/ Xxxxx XxXxxxxxxxx
Title: President
ATTEST EP MEDSYSTEMS, INC.
/s/ Xxxxx X. Xxxxxx By: /s/ Xxxxx Xxxxxxx
Title: President
SCHEDULE A
For the purposes of this Agreement the "Patents" and their
corresponding patent numbers are:
U.S. Issued Expire
Patents
ECHOMARK 5,076,2 12/31/9 12/31/2 (Design of
78 1 011 Sensor)
5,161,5 11/10/9 11/10/2 (Electronics
36 2 012 for Detection)
ECHOEYE 5.373,8 12/20/9 12/20/2
45 4 014
COLORMARK 5,329,9 07/19/9 07/19/2 (Equipment)
27 4 014
5,343.8 09/16/9 09/16/2 (Method)
65 4 014
5,425.3 06/20/9 06/20/2 ("GreyMark")
70 5 015
5,421,3 06/06/9 06/06/2 (Needle
36 6 016 Engager)
Echo - 10 Awaitin
g
Serial File ("Color
# 12/03/9 Needle")
6
SCHEDULE B
Patent applications have been filed in the following
countries in connection with the Patents:
Foreign Filings:
ECHOMARK PCT US 9l/07207 Filed: Oct.
8,1991
SENSOR EPO* Appl. No.
91919875-4
Japanese Appl. No.
5180601/91
Canadian Appl. No.
2093645
Electroni PCT USP 2/01671 Filed: March 5,
cs 1992
EPO* Appl. No.
9290811.7
Japanese Appl. No.
507568/92
ECHOEYE PCT US 93/04040
EPO* Application Filed 10/19/94
COLORMARK Device and Method
PCT US 94/01752 Filed: Feb. 22,
1994
EPO* Appl. No.
94910127.3
Japanese Appl. No
519154/94
Canadian Appl. No
2156831
"GreyMark PCT US 95/03173 Filed: Xxxxx
" 00, 0000
XXX* Filed, but no
Appl. No. as yet
* European Countries Designated: Belgium, France, Germany,
Italy, Netherlands, United Kingdom.
