Exhibit 10.11
This
Agreement entered into this 22nd day of
October,2003
between Emergency Medicine Innovations, LLC, a limited liability corporation of
the State of Delaware (hereinafter "Licensor" or "EMI") and Bovie Medical
Corporation, a corporation of the State of Florida (hereinafter
"Licensee- or
"Bovie").
1.
Background
| 1.1 |
Licensor
is desirous that the Licensed Patents and its related know how be
developed and utilized to the fullest extent, and is willing to grant an
exclusive license thereunder. |
| 1.2 |
To
induce Licensor to enter into this Agreement, Licensee has represented to
Licensor that Licensee is experienced in the development, production,
manufacture, marketing and sale of products similar to the "Licensed
Product(s)" (as later defined herein), and that it will commit itself to
utilizing Licensor*s Licensed Patents and Licensed Technology commercially
so that public benefit and royalty income to Licensor shall result
therefrom. |
| 1.3 |
To
induce Licensee to enter into this Agreement. Licensor has represented
that it has pending U.S. and foreign patent applications and know-how
relating to a proprietary suture removal technology "Licensed Technology"
(as later defined herein) that is the subject of this
Agreement. |
| 1.4 |
Licensee
desires to obtain a license upon the terms and conditions hereinafter set
forth. |
THEREFORE,
the Parties agree as follows:
2.
Definitions
| 2.1 |
"Affiliate(s)"
of a party means any entity which, directly or indirectly, controls such
party, is controlled by such party, or is under common Control with such
party; "control" for these purposes being defined as the actual, present
capacity to elect a majority of the directors of such Affiliate, or if
not, the capacity to elect at least half of the members that control at
least fifty percent (50%) of the outstanding stock or other voting rights
entitled to elect directors. Each reference to Licensee herein shall be
meant to include its Affiliate(s). |
| 2.2 |
"Licensed
Patent(s)" means the pending United States and foreign patent applications
enumerated in
Exhibit A, attached to this Agreement. Licensed Patents shall include
improvement parents obtained by Licensor or Licensee,
continuations-in-part applications, patents and certificates of addition
and utility models and patents which may issue thereupon related to said
satire removal technology. |
| 2.3 |
"Licensed
Technology” means the technology presently embodied in prototypes
and/or described
orally or in writing produced by Licensor and delivered to Licensee
relating to suture removal technology including all improvements disclosed
to Licensee. |
| 2.4 |
"Licensed
Product(s)" shall mean any and all products and methods
which: |
| (a) |
are
covered in whole or in part by an issued, unexpired claim or a pending
claim contained in Licensed Patents in the
Territory, |
| (b) |
which
employ or are produced by the practice of the Licensed Technology, and/or
contain any improvements which Bovie has developed which derive from said
applications or Licensed Technology; and or, |
| (c) |
employ
or are produced by the practice of the invention claimed in Licensed
Patents whose manufacture, use or sale would constitute, but for the
license granted to Licensee pursuant to this Agreement, an infringement of
any claim in Licensed Patents, and/or, |
| (d) |
are
required to practice or use the Licensed Products including, without
limitation, EMI’s proprietary power chargers or functional equivalent for
use with the suture technology or removal kit. |
| 2.5 |
“Net
Revenue” as used in this Agreement to compute royalties shall mean
Licensee*s xxxxxxxx (including but not limited to sales. leasing.
advertising fees) related to Licensed Products produced or used hereunder,
less the sum of the following: |
| (a) |
discounts
allowed in amounts customary in the trade: |
| (b) |
sales taxes. customs and
tariff duties. and/or use taxes which are directly imposed and are with
reference to particular sales: |
| (c) |
outbound
transportation prepaid or allowed: and |
| (d) |
amounts
allowed ot credited on returns or rebates. |
No
deductions shall be made for commissions paid to individuals whether they be
with independent sales agencies or regularly employed by Licensee and on its
payroll, or for cost of collections. Licensed Products shall be considered
“sold” when Bovie receives payment for said products.
| 2.6 |
“Net
Selling Price" as used in this Agreement for the purpose of computing
royalties shall mean gross invoice price received by Licensee from the
sale. lease or other use of the Licensed Products. less the deductions
under section 2.5. above. |
| 2.7 |
"Territory":
Worldwide. |
| 2.8 |
“Improvements”
shall mean any enhancement. upgrade, modification or variation of or to
the Licensed Patents. Licensed Technology or Licensed
Products. |
3.
Development and Improvements
| 3.1 |
Bovie shall develop and design the product in
accordance with specifications provided by EMI. |
| 3.2 |
Bovie
shall develop a maximum of 200 prototypes necessary for evaluation by an
independent medical organization |
| 3.3 |
The
prototypes shall be completed within 45 days of the execution of this
contract and costs associated with the development shall be borne by
Bovie. |
| 3.4 |
Upon
the successful completion of the evaluation, and FDA clearance to market,
Bovie shall commence marketing within eight (8)
months. |
| 3.5 |
EMI
shall provide reasonable assistance in the development, design, testing
and marketing of the product. |
| 3.6 |
Bovie
shall be responsible for the 510K application of the product and all costs
associated therewith. |
| 3.7 |
Improvements
and Developments by Bovie.
Bovie is free to make improvements and to use the Licensed Technology and
the Licensed Patents in research and development of new products. Bovie
shall assume and pay all Improvement, development and manufacturing costs
incurred by Bovie throughout the term of this Agreement. Bovie shall
promptly disclose any Improvement made by or for it to EMI together with
appropriate documentation and if Bovie incorporates said Improvements into
a suture removal product, then such suture removal product shall be deemed
a Licensed Product under this Agreement subject to royalties as set forth
herein. In the event that Bovie shall not incorporate such Improvements
into a suture removal product then EMI shall have a royalty-free,
perpetual, irrevocable, exclusive license, with the right to grant
sublicenses, to use such Improvements. EMI shall, at the request of Bovie,
provide reasonable assistance and/or information in connection with any
effort by Bovie to make Improvements or further developments of said
Licensed Product. |
| 3.8 |
Improvements
by EMI.
EMI shall have no obligation to make any Improvements; however, if during
the term of this Agreement any Improvement is made by EMI or for EMI on
terms which do not prevent EMI from disclosure thereof, then EMI may, at
its sole discretion disclose the same to Bovie or its assignees together
with appropriate documentation. Any Improvements by EMI relating to the
suture removal technology shall be deemed a Licensed Product under this
Agreement. |
4.
License Grant
| 4.1 |
Subject
to the terms of this Agreement, Licensor hereby grants to the Licensee a
nontransferable, exclusive, royalty-bearing license under Licensed Patents
and Licensed Technology to make, have made, use, lease, and sell the
Licensed Products in the Territory, for the term set forth under Article
10. unless sooner terminated according to the terms
hereof. |
The
license granted hereunder shall not be construed to confer any rights upon the
Licensee by implication, estoppel, or otherwise as to any technology or know-how
not specifically set forth herein.
| 4.2 |
No rights to sublicense are granted under this
Agreement. |
5. Royalties
and Payments
| 5.1 |
The
royalty rate for the license that is the subject of this Agreement shall
be in accordance with this Article 5. |
| 5.2 |
Royalties
and fees due hereunder shall accrue and be paid to Licensor according to
this Article 5 and the attached Exhibit B, which is incorporated
herein. |
| 5.3 |
Except
where Licensed Products are given to a prospective customer as an
inducement to subsequently purchase and use Licensed Products, where
Licensed Products are not sold, but are otherwise disposed of or used, the
Net Revenue of such products and/or processes for the purposes of
computing-royalties shall be the selling price at which products of
similar kind and quality are sold in similar quantities or are currently
being offered for sale by the Licensee and in no event shall Net Revenue
be less than $1.50 per unit. Where power charges are given to customers in
conjunction with a sale of a suture removal kit, no royalties shall be due
on said power chargers. Where, however, the power charger is sold or
otherwise disposed of in any fashion other than as an inducement to a
customer to purchase the suture removal kit, then royalties as set forth
herein shall be payable on such sale or disposition or use of the power
chargers and Net Revenue for the power charger shall in no event be less
than $1.50 per unit. In no event shall Bovie bundle Licensed Products with
non-EMI products if to do so would cause the Net Revenue of Licensed
Products to decrease. |
| 5.4 |
Under
this Agreement, Licensed Products shall be considered to be sold when
payment is received, or if not sold, when delivered for use or lease to a
third party or affiliate or used by Licensee in a manner not excluded
above. |
| 5.5 |
The
Licensee shall pay to Licensor an earned royalty, as defined in the
attached Exhibit B, on all Licensed Products made, sold leased or used by
the Licensee. |
| 5.6 |
Earned
royalties for Licensed Products sold under this Agreement in the Territory
shall accrue to Licensor for the duration of this
Agreement. |
| 5.7 |
Earned
royalties accruing to Licensor shall be paid to Licensor by February 15,
May 15, August 15, and November 15. Each payment to Licensor will be for
any and all royalties which accrued to Licensor within the most recently
completed calendar quarter. |
| 5.8 |
All
monies due Licensor shall be payable in United States funds. When Licensed
Products are sold for monies other than United States dollars, the earned
royalties will first be determined in the foreign currency of the country
in which Licensed Products were sold and then converted into equivalent
United States Funds. The exchange rate will be that established by the
Bank of America in New York, New York, on the last business day of the
reporting period. |
6. Due
Diligence
| 6.1 |
The
Licensee, upon execution of this Agreement, shall diligently proceed with
the development, manufacture and sale of Licensed Products and shall
earnestly and diligently endeavor to market the same within a reasonable
time after execution of this Agreement and in quantities sufficient to
meet the market demands, and to comply with the minimum royalties
specified in part C of Exhibit B. |
| 6.2 |
The
Licensee shall demonstrate a continuing commercially reasonable effort to
market the Licensed Products to meet market demand following the
Licensee*s first offer of Licensed Products for
sale. |
| 6.3 |
Licensor
agrees to supply sufficiently detailed information relating to Licensed
Technology upon payment of the sums specified in part A of Exhibit B,
which information will not be used by Licensee except to manufacture and
sell Licensed Product bearing royalties under this
Agreement |
7. Progress and
Royalty Reports
| 7.1 |
Prior
to the first sale, lease or other disposition of Licensed Products. the
Licensee shall submit a progress report covering the Licensee*s activities
related to the development and testing of the Licensed Products. After the
first such sale and/or commercial use, the Licensee shall submit quarterly
royalty reports within 45 days after the end of each fiscal quarter of
each calendar year for the most recently completed calendar quarter,
giving such particulars of the business conducted by the Licensee under
this Agreement as shall be pertinent to a royalty accounting hereunder.
This information shall include at least the
following: |
| (a) |
Number
of Licensed Products in each application manufactured, sold or otherwise
disposed of subject to royalty payments under Article
5; |
| (b) |
The
gross sales, Net Revenues and Net Selling Price of Licensed Products sold
by Licensee during the most recently completed calendar
quarter: |
| (c) |
The
royalties, in U.S. dollars, payable hereunder with respect to such
sales; |
| (d) |
With
each report submitted, the Licensee shall pay to Licensor the royalties
due and payable under this Agreement. If no royalties are due, the
Licensee shall still report sales. |
| 7.2 |
If
no sale or use or other disposition of Licensed Products has been made
during any reporting period, a statement to that effect will be required
in the royalty report filed for that period. |
8. Books
and Records
| 8.1 |
The
Licensee shall keep books and records accurate by showing all Licensed
Products developed manufactured, used, and/or leased and/or sold or
otherwise disposed of under the terms of this Agreement. Such books and
records shall be preserved for at least five (5) years from the date of
the royalty payment to which they pertain and shall be open to inspection
by representatives or agents of Licensor at all reasonable times, provided
that reasonable notice is given. |
| 8.2 |
The
fees and expenses incurred by Licensor*s representatives or agents to
perform an examination of the royalty reports shall be borne by Licensor.
However, if an error in royalties accounting of more than five percent
(5%)
of
the total royalties due for any year is discovered, then the fees and
expenses incurred by Licensor*s examination shall be borne by
Licensee. |
9. Applicable
Law and Jurisdiction- Dispute Resolution-
| 9.1 |
This
Agreement shall be governed by and construed in accordance with the laws
of the state of Florida (other than its rules of conflicts of
laws.) |
| 9.2 |
All
claims and disputes between the parties arising out of this Agreement
(each, a "Claim and, collectively, "Claims") shall be subject to this
Section. Prior to submission of any Claim for resolution in accordance
with this Section 9, both the Manufacturer and the Licensor will negotiate
in good faith to resolve such Claim. If the parties cannot reach agreement
within ten (10) business days of written notice by one party to the other
that a Claim exists, the Claim may be submitted for resolution upon the
filing by either party of a written demand, with notice to the other
party, to and under the Commercial Arbitration Rules of the American
Arbitration Association ("AAA") before a mutually acceptable arbitrator,
to be determined within ten (10) business days of filing the written
demand for arbitration. If the parties are unable to select a mutually
acceptable arbitrator within this time period, the AAA shall select the
arbitrator. Upon such Claim being submitted for resolution, the arbitrator
shall assume exclusive jurisdiction over the Claim, and shall utilize
consultants or experts as he shall deem appropriate to assist him, and
will be required to make a final, binding determination, not subject to
appeal, within fifteen (15) business days of the date of submission. Each
party shall submit in writing to the arbitrator a statement of its
position with supporting facts, within ten (10) business days after
receipt of written notice of the Claim being brought to the arbitrator.
The arbitrator may award the expenses of the proceeding, including
reasonable attorneys' fees to the prevailing party. In arriving at his/her
decision, the arbitrator shall consider the pertinent facts and
circumstances presented in evidence and be guided by the provisions of
this Agreement. |
10. TERM
AND TERMINATION
This
Agreement shall commence on the date of execution and, unless earlier terminated
in accordance with the provisions hereof, will remain in force and effect for
fifteen (15) years or for the life of the Licensed Patents, whichever is
greater.
| 10.1 |
It
is understood that this Agreement may be automatically renewed at the end
of the term and in each succeeding two (2) year period provided the terms
of minimum production and sales are agreed upon between the
parties. |
| 10.2 |
In
the event of a sales decrease of 10% or more for two consecutive calendar
years, the Licensor shall have the right to make the license non-exclusive
for the balance of the term. Licensee may nevertheless elect to pay
sufficient royalties to offset the aforesaid decrease in sales in order to
maintain exclusivity. Should the license become non-exclusive and Licensor
grants a license to another party within five (5) years from the
agreement's inception, through no fault of Licensee, then the Licensor
shall pay Bovie its developmental cost of up to
$250,000.00. |
| 10.3 |
Notwithstanding
the aforesaid provisions, in the event Licensee determines in its sole
judgment that the product is non-competitive and no longer commercially
viable, on ninety (90) days written notice to Licensor, Licensee may
terminate this Agreement. In such event Licensee shall re-deliver to
Licensor the information and materials acquired hereunder, without
change. |
| 10.4 |
Any
termination of this Agreement will not affect the rights and obligations
set forth in the following Articles: |
-
Article
8 Books
and Records
-
Article
14 Patent
Prosecution and Maintenance
-
Article
19 Indemnification
and Insurance
-
Article
25 Export
Control Laws
-
Article
26 Confidentiality
11.
Termination
by Licensor
| 11.1 |
The
right to terminate this Agreement, if exercised by Licensor, supersedes
the rights granted in Article 4, License
Grant.
If the Licensee should fail to perform any material term or covenant of
this Agreement Licensor may give written notice of such default ("Notice
of Default") to the Licensee. If the Licensee fails to remedy with
satisfaction and tangible evidence that the deficiency has been cured
within sixty (60) days of the effective date of such Notice of Default,
Licensor shall have the right to terminate this Agreement and the license
granted herein by a second written notice ("Notice of Termination"). If
Notice of Termination is sent to the Licensee, this Agreement will
automatically terminate on the effective date of such notice. The
Licensee*s failure to use due diligence in marketing the product or pay
any earned royalty or other fee by the date required under Exhibit B shall
be considered to be a material breach subject to termination of the
license. |
| 11.2 |
Termination
of this Agreement will not relieve the Licensee of any obligation or
liability accrued hereunder prior to such termination, or rescind any
payments due or paid to Licensor hereunder prior to the time such
termination becomes effective. Such termination shall not affect, in any
manner, any rights of Licensor arising under this Agreement prior to such
termination |
12. Termination
for Insolvency
| 12.1 |
This
agreement shall terminate, without notice. (i) upon the institution by or
against Licensee of insolvency, receivership or bankruptcy proceedings or
any other proceedings for the settlement of Licensee*s debts; (ii) upon
Licensee*s making an assignment for the benefit of creditors; or (iii)
upon Licensee*s dissolution or ceasing to do
business. |
13. Disposition
of Licensed Products on Hand Upon Termination
| 13.1 |
Upon
termination of this Agreement for any reason other than expiration of
Licensed Patents, Licensee will provide Licensor, within forty-five (45)
days following the effective date of termination, with a written inventory
of all Licensed Products in process of manufacture or in stock, and shall
dispose of such Licensed Products within one hundred and twenty (120) days
of the effective date of termination, provided, however, that the sales of
all such Licensed Products shall be subject to the terms of this
Agreement. |
14. Patent
Prosecution and Maintenance
| 14.1 |
Licensor
shall at its sole discretion pursue and maintain the Licensed Patents
using counsel of its choice, and such Licensed Patents will be held in the
name of Licensor. Licensor shall have the exclusive rights to control the
prosecution of the Licensed Patents. |
| 14.2 |
Licensor
may, at its sole discretion, amend any patent application(s) to include
claims requested by the Licensee to reasonably protect the products
contemplated to be sold or methods used under this
Agreement |
| 14.3 |
Subsequent
to the issuance of Licensed Patents, Licensee shall be responsible for the
payment of all maintenance fees while this Agreement is in
force. |
| 14.4 |
Licensee
shall be solely responsible for filing for and prosecuting foreign
counterpart patents in each and every country where the Licensed Product
will be marketed. At a minimum, Licensee agrees to file and prosecute
counterpart patent applications in the European Patent Office ("EPO"),
Japan and Australia. All such patents shall be prosecuted in the name of
EMI, and EMI shall provide all reasonable non-financial assistance in
connection with obtaining the issuance of said counterpart
patents. |
15. No
Warranty
| 15.1 |
THIS
LICENSE AND THE ASSOCIATED INTELLECTUAL PROPERTY RIGHTS ARE PROVIDED
WITHOUT WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE OR
ANY OTHER WARRANTY. EXPRESS OR IMPLIED. |
| 15.2 |
IN
NO EVENT WILL LICENSOR BE LIABLE FOR ANY INCIDENTAL, SPECIAL, OR
CONSEQUENTIAL DAMAGES RESULTING FROM EXERCISE OF THIS LICENSE OR THE USE
OF INTELLECTUAL PROPERTY RIGHTS, LICENSED PATENTS OR LICENSED
PRODUCTS. |
15.3 Nothing
in this Agreement shall be construed as:
| (a) |
A
warranty or representation by Licensor as to the validity or scope of any
Licensed Patents; |
| (b) |
A
warranty or representation that anything made, used, sold or otherwise
disposed of under any license granted in this Agreement is, or will be,
free from infringement of patents of third
parties; |
| (c) |
Any
obligation to bring or prosecute actions or suits against third parties
for patent infringement except as otherwise expressly set
forth; |
| (d) |
Conferring
by implication, estoppel, or otherwise any license or rights under any
patents to Licensor other than Licensed Patents as defined herein,
regardless of whether such patents are dominant or subordinate to Licensed
Patents: |
16. Notification
of Infringement and Enforcement of Licensed Patent Rights
| 16.1 |
Notification
Each party shall notify the other party in writing of any suspected
infringements of or by the
Licensed Patents in the Territory and shall inform the other party of any
evidence of such infringements. |
| 16.2 |
Infringement
during exclusivity.
So long as this Agreement remains exclusive the LICENSEE shall defend the
Licensed Patents against infringement or interference by other parties in
whole or in part in any country in which a Licensed Patent is in effect
hereunder, including, without limitation, bringing legal action for
infringement or defending any counterclaim of invalidity
or action of a third part for declaratory judgment of non-infringement
or interference. LICENSOR agrees to join as a party plaintiff in any such
lawsuit initiated by LICENSEE and to cooperate with LICENSEE in LICENSEE's
prosecution, if requested by LICENSEE, with all reasonable costs,
attorneys fees, and expenses to be paid by LICENSEE. Any recovery of
damages by LICENSEE for each such suit shall be applied first in
satisfaction of any unreimbnrsed expenses and legal fees of LICENSEE
relating to such suit. The balance remaining from any such recovery shall
be shared equally by LICENSEE and LICENSOR. |
| 16.3 |
Infringement
during non-exclusivity.
If this Agreement is nonexclusive at the time of infringements, the sole
right to institute suit for infringement and to recover damages shall rest
with LICENSOR. |
| 16.4 |
Settlement.
So long as this Agreement remains exclusive, neither party may settle with
any infringer without the prior approval of the other party if such
settlement would affect the rights of the other party under the Licensed
Patents. |
| 16.5 |
Infringement
by licensed patent.
Each party shall promptly notify the other in writing in the event that a
third party shall bring a claim of infringement against LICENSOR or
LICENSEE, either in the United States or in any foreign country in which
there is a Licensed Patent. So long as this Agreement is exclusive.
LICENSEE in its own name and at its sole expense shall have the first
right to defend the Licensed Patents and may compromise, settle or
otherwise pursue such defense in such a manner and on such terms as
LICENSEE and LICENSOR shall agree. In the event that LICENSEE shall
undertake such defense. LICENSEE
may
withhold twenty-five percent (25%) of the payments otherwise thereafter
due LICENSOR and apply the same toward reimbursement of LICENSEE's expenses,
including reasonable attorneys' fees, in connection therewith. Any
recovery of damages by LICENSEE for each such suit shall be applied first
in satisfaction of any unreimbursed expenses and legal fees of LICENSEE
relating to such suit, and next toward reimbursement of LICENSOR for any
payments past due or withheld and applied pursuant to this Section. The
balance remaining from any such recovery shall be shared equally by
LICENSEE and LICENSOR. In the event that LICENSEE declines to defend an
infringement suit asserted against the Licensed Products, then LICENSOR
shall
defend, at its expense, the lawsuit. In such event, LICENSOR shall keep
any recovery of damages awarded to it. |
| 16.6 |
Infringement
by Improvements Made by Bovie.
In the event that any Improvements made by Bovie to the Licensed Products
are accused of infringement, then Bovie shall be solely responsible for
the defense of any such action including, without limitation, all costs,
damages, if any, and attorneys fees associated
therewith. |
17. Waiver
| 17.1 |
It
is agreed that no waiver by either party hereto of any breach of default
of any of the covenants or agreements herein set forth shall be deemed a
waiver as to any subsequent and/or similar breach or
default. |
18. Successors
and Assigns
| 18.1 |
Subject
to the provisions herein, the benefits and obligations of this Agreement
shall be binding upon and inure to the successors and assigns of the
parties, provided that neither party shall assign this Agreement without
the prior written consent of the other party except in connection with the
sale of all or substantially all of its assets. Consent, if required,
shall not be unreasonably withheld or delayed. |
| 18.2 |
Should
Bovie be acquired or merged into another corporation the successor or
merged company shall be bound by the Agreement's
terms. |
19. Indemnification
and Insurance
| 19.1 |
The
Licensee agrees to indemnify, hold harmless and defend Licensor, its
officers, employees and agents; the inventor of the inventions disclosed
in the patents and patent applications in Licensed Patents against any and
all claims, suits, losses, damage, costs, fees and expenses resulting from
or arising out of exercise of any license granted under this Agreement.
The Licensee shall pay any and all costs, including reasonable attorney
fees, incurred by Licensor in enforcing this
indemnification. |
| 19.2 |
The
Licensee, at its sole cost and expense, shall insure its activities in
connection with this Agreement to fulfill Licensee*s indemnification
obligation under this Article 19 and obtain, keep in force and maintain
insurance with an insurance company acceptable to Licensor, which
acceptance shall conform to reasonable business standards, as follows: A
Minimum level of One Million Dollars ($1,000,000) of Comprehensive or
Commercial Form General Liability insurance (including contractual
liability and products liability). |
The
coverages referred to in this Article 19 will not in any way limit the liability
of Licensee. Licensee will furnish Licensor with certificates of insurance,
including renewals, evidencing
compliance with all requirements at least thirty (30) days prior to the first
commercial sale or distribution of Licensed Products.
| (a) |
If
such insurance is written on a claims-made form, coverage shall provide
for a retroactive date of placement prior to or coinciding with the
effective date of this License Agreement- |
| (b) |
Licensee
shall maintain the general liability insurance specified herein during (a)
the period that the Licensed Products or methods are being commercially
distributed or sold (other than for the purpose of obtaining regulatory
approvals) by the Licensee or by an affiliate, or agent of the Licensee,
and (b) a reasonable period thereafter, but in no event less than one (1)
year. Licensee*s failure to maintain this liabiltiy insurance shall be
considered a material breach of this Agreement. |
| 19.3 |
Licensee
will provide a thirty (30) day, advance written notice to Licensor of
cancellation or of any modification to insurance coverages as required
under Article 19.2: |
20. Late
Payments
| 20.1 |
In
the event any payments or fees due under this Agreement are
not
received by Licensor when due, the Licensee shall pay to Licensor interest
charges at the rate of fifteen percent (15%) per annum. Late payment of
minimum royalties. however. subjects Licensee to termination pursuant to
paragraph 11. |
21.
Notices
| 21.1 |
Any
payments. reports. notices or other communications required or permitted
to be given to either party hereto shall be in writing and shall be deemed
to have been properly given and to be effective on (a) the date of
delivery if delivered in person, or (b) the fifth (5th) day after mailing
if mailed by first-class certified mail, postage prepaid. to the
respective addresses given below. or to such other address as shall be
designated by written notice given to the other party as
follows: |
|
In
the case of Licensee: |
EMI
Corporation |
| |
000
Xxxxxxxxxx Xxxxxx Xxx. 0X |
| |
Xxxxxx.
Xxxxxxxxxxxxx 00000 |
|
In
the case of Licensor: |
|
| |
0000
00xx
Xxxxxx Xxxxx |
| |
Xx.
Xxxxxxxxxx, XX 00000 |
22. Governing
Laws
| 22.1 |
This
Agreement and the performance thereunder shall be interpreted and
construed in accordance with the laws of the State of Florida. USA without
reference to the conflict of laws provisions. |
23.
Patent
Marking
| 23.1 |
When
Licensed Products are made, used and/or sold under Licensed Patents. the
Licensee agrees to xxxx all Licensed Products and their containers in
accordance with the applicable patent marking
laws. |
24. Government
Approval or Registration
| 24.1 |
If
this Agreement or any associated transaction or equipment is required by
the law of any nation to be either approved or registered with any
government agency. Licensee will assume all legal obligations to do so.
Licensee will notify Licensor if it becomes aware that this Agreement is
subject to a United States or foreign government reporting or approval
requirement. Licensee will make all necessary flings and pay all costs
including fees. penalties and all other out-of-pocket costs associated
with such reporting or approval process. |
25. Expert
Control Laws
| 25.1 |
The
Licensee shall observe and comply with all applicable United States and
foreign laws and regulations with respect to the International Traffic in
Arms Regulations (ITAR) and the Export Administration
Regulations. |
26.
Confidentiality
| 26.1 |
Nondisclosure.
Except as otherwise provided in this Agreement, each party (the "Receiving
Party") shall hold in confidence and not disclose to any third party any
business or technical information that is disclosed to it by the other
party in a tangible form marked "Confidential" or that is so disclosed to
it orally and confirmed in writing as confidential within thirty (30) days
after its initial disclosure ("Proprietary Information"). Propriety
Information of a party shall not include: |
| (a) |
Information
which at the time of disclosure is published or otherwise generally
available to the public; |
| (b) |
Information
which, after disclosure by the other party, is published or becomes
generally available to the public through no fault of the Receiving Party,
or |
| (c) |
Information
which the Receiving Party can document was or is in its possession at the
time of disclosure and was not acquired directly or indirectly from such
party. |
26.2
Exceptions.
| (a) |
The
Receiving Party may disclose Proprietary Information of the
other: |
| (1) |
In
connection with the order of a court of law or in compliance with laws or
regulations relating to registrations or sale of securities, or as is
reasonably necessary in connection with the prosecution, maintenance or
enforcement of the Patent Rights or obtaining product approvals upon
notice to the other party: or |
| (2) |
If
such information is also rightfully acquired from a third party who, to
the best of such party's knowledge and belief, is entitled to rightfully
make such disclosure, but only to the extent such party complies with any
restrictions imposed by the third party. |
| (b) |
Bovie
and its permitted assignees may disclose Proprietary Information comprised
of EMT Technology to any party to whom Bovie or its permitted assignees
subcontracts the manufacture of Licensed Product and, to the extent such
disclosure is reasonably necessary, to any supplier of parts and
components for the Licensed Equipment, provided that such sub-contractor
or supplier shall, before the disclosure, enter into non-disclosure
agreements consistent with this paragraph 31. |
27. Force
Majeure
| 27.1 |
No
failure or omission by Licensor or the Licensee in the performance of any
obligation under this Agreement shall be deemed a breach of this Agreement
or create any liability if the same shall arise from any cause or causes
beyond the control of Licensor or Licensee including, but not limited to,
the following: Acts of God, acts or omissions of any government or agency
thereof, compliance with requirements, rules, regulations, or orders of
any governmental authority or any office,
department,
agency, of instrumentality thereof; fire, storm, flood, earthquake,
accident, acts of the public enemy, war, rebellion, insurrection, not,
sabotage, invasion, quarantine, restriction, transportation embargoes, or
failures or delays in transportation. |
28. Miscellaneous
| 28.1 |
The
headings of the several sections are inserted for convenience of reference
only and are not intended to be a part of or to affect the meaning or
interpretation of this Agreement. |
| 28.2 |
This
Agreement will be binding upon the Parties when it has been executed by
each of the Parties hereto as of the date of execution by the last signing
Party and contingent upon Licensor*s receipt of the Issue Fee described in
Exhibit B- |
| 28.3 |
No
amendment or modification hereof shall be valid or binding upon the
Parties unless made in writing and signed on behalf of each
Party. |
| 28.4 |
This
Agreement embodies the entire understanding of the Parties and shall
supersede all previous communications, representations, or understandings.
either oral or written, between the Parties relating to the subject matter
hereof |
| 28.5 |
In
case any of the provisions contained in this Agreement shall be held to be
invalid, illegal, or unenforceable in any respect, such invalidity,
illegality, or unenforceability shall not affect any other provisions
hereof, but this Agreement shall be construed as if such invalid or
illegal or unenforceable provisions had never been contained
herein. |
| 28.6 |
It
is intended that this Agreement and the exchange of technical information
between the Parties pursuant to it is to be covered by a Mutual
Nondisclosure Agreement between the parties. |
| 28.7 |
No
Agencv:
Neither party named herein shall in any way be considered an agent of the
other. |
IN
WITNESS WHEREOF, both Licensor and Licensee have executed this Agreement, in
duplicate originals, by their respective officers hereunto duly authorized, on
the day and year hereinafter written.
| |
|
|
By:
/s/ |
By:/s/ |
|
Name:
Xxxx Xxxxxx, MD |
Name:
Xxxxxx Xxxxxxxx |
|
Title:
President |
Title:
President |
|
Date:
10/27/03_______________ |
Date:
10/21/03 |
EXHIBIT
A
LICENSED
PATENT(S) AND APPLICATIONS
(Itemized
list of licensed applications/patents will be determined by technology
licensed.)
List of
licensed applications/patent(s) must be provided
EXHIBIT
B
LICENSE
FEES AND ROYALTY RATE
NOTICE
This
Exhibit B contains financial and commercial information deemed Business
Confidential and the parties hereby agree not to use or to disclose the terms
agreed to herein to any third party without the express written consent of the
other parry hereto except to those deemed necessary to enable the parties to
perform under this Agreement.
In
accordance with Article 5, Royalties and Payments:
| A. |
The
Licensee shall pay to Licensor an earned royally fee based upon the
following formula: |
|
Cumulative
Net Revenues of Licensed Products/Systems Incorporating the Licensed
Patents/Licensed Technology
|
Earned
Royalty Fee
|
|
$0
to $5,000,000
|
6%
|
|
The
sum, if any, over $5,000,000 for any fiscal year shall be subject to a
royalty of
|
7%
|
EXHIBIT
A
LICENSED
PATENT(S) AND APPLICATIONS
(Itemed
list of licensed applications/patents will be determined by technology
licensed.)
List of
licensed applications/patent(s) must be provided
| 1. |
US:
10/600, 368 filed 6/23/03; and, |
| 2. |
PCT:
PCT/US03/19782 filed 6/25/03. |
