EXHIBIT 10.9
Certain portions of this exhibit have been omitted based upon a request for
confidential treatment. The omitted portions of this exhibit have been
separately filed with the Securities and Exchange Commission.
LICENSE AGREEMENT
This agreement is made by and between Xx. Xxxxxx Xxxxxxx, address Xxxxxxxxxxxxxx
0 X 0, 00000 Xxxxxxx, Xxxxxxx, Mr. Markku Tamminmaki, address Xxxxxxxxxxxx 00,
00000 Xxxxxxx, Xxxxxxx (hereinafter jointly referred to as "the Finnish Team",
and
Menifix I/S (Xxxxx Xxxxxxxx Xxxxx and Xxxx Xxxxxxxxxx), address Xxxxxxxx 000,
XX-0000 Xxxx, Xxxxxxx (hereinafter jointly referred to as "the Danish Team") and
Biocon Oy, whose registered office is at Xxxxxxxxxxxxxx 0 X 0 00000 Xxxxxxx,
Xxxxxxx (hereinafter jointly referred to as "Biocon") on the other part.
1. BACKGROUND
The Finnish and Danish team are developing in cooperation a [CONFIDENTIAL
PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION].
The invention is based on the [[CONFIDENTIAL PORTION OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION]. Biocon Oy is the owner
of patents and know-how relating to said products.
The cooperation has proceeded on such a level that the patent shall be applied
for the device in Finland during the next months.
The parties to this agreement desire to launch industrial production of this
device as soon as possible.
2. DEFINITIONS
In this agreement:
a) [CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION] invented and developed by the team and any development
hereof made by the parties.
b) "Exclusive Territory" shall mean the world.
c) "Confidential information" shall mean all scientific, commercial or technical
data and information including but not limited to information relating to market
reports and surveys, customer lists, trade secrets, documents, correspondence,
methods, skills, practices, training, procedures, research, machinery,
equipment, instruments, expertices, discoveries, inventions, improvements, data
drawings, designs, calculations, specifications, techniques and processes
regarding the DEVICE.
3. OBJECT OF THE AGREEMENT
The team hereby grants to Biocon the exclusive right to make or to have made,
use and sell the DEVICE in the Exclusive Territory.
The team undertakes to conduct research work and to use its best efforts in
order to develop further and improve the characteristics of the DEVICE.
The team shall provide Biocon with such information, specifications and data
with respect to the DEVICE as shall be necessary to improve Biocon's potentially
to carry out the targets in this agreement.
The team agrees to keep Biocon continuously informed of all research and
development results in regard to the DEVICE during the development process.
The rights granted to Biocon include any additional modifications and
improvements of the DEVICE.
Biocon shall inform the team about any changes and improvements of the DEVICE.
After the agreement of Biocon the tram can participate in international
congresses and present research results [CONFIDENTIAL PORTION OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION]
4. SUBLICENSES
Biocon is entitled to grant sublicenses within the Exclusive Territory at its
sole discretion. Such sublicensing shall not relieve Biocon of any obligation
under this Agreement. Biocon must include in possible license agreements the
paragraph that the team is entitled to the royalties of all marketed Products
according to this Agreement regardless which company manufactures or markets the
products. Biocon is obliged to inform the team of sublicenses.
5. PATENTS
Biocon is entitled at its own expense and at its sole discretion to take any and
all necessary measures in order to apply for patents for the DEVICE in the
Exclusive Territory. In the patent applications the team shall be reported as
the inventor and Biocon as the applicant.
Biocon is also entitled to register this agreement with the proper patent and
other authorities as such time as the registration is possible in accordance
with the legislation of the country in question. The team undertakes to provide
Biocon with all necessary authorization and documents for these purposes. The
team is entitled to receive a copy of all patent applications filed by Biocon.
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6. COMMISSION
In consideration of the license granted by the team to Biocon in accordance with
the terms and conditions in this agreement, Biocon agrees to pay the team a
royalty net of any withholding company taxes as follows:
(a)
an initial sum of [CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION]. This down payment shall be divided within
the teams as follows:
[CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION]
[CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION]
This payment shall be effected upon after initial presentation of any research
group of results in congress or paper which results show that this method is
recommendable for surgical use. This payment shall be non-refundable to the Team
and shall not be credited against the royalty payments referred to hereinafter.
(b)
The amount of the royalty shall be [CONFIDENTIAL PORTION OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] of the DEVICE sold by
Biocon whilst the patent applications are still pending and not a single patent
has been granted. This royalty shall be divided within the teams as follows:
[CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION]
[CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION]
Provided that the patent in accordance with the above terms shall be granted
Biocon agrees retroactively to pay the team an additional royalty of
[CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION] of the DEVICE sold by Biocon for the period from signing
this agreement until the granting of the said patent. This royalty shall be
divided within the team on such a manner that the Danish Team shall receive of
the total royalty of [CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION] and the Finnish Team [CONFIDENTIAL PORTION
OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION].
The term "net selling price" means the gross amount billed for Products less
trade or quantity discounts, transportation charges or allowances, credits or
allowances, any tax, excise, or other governmental charge upon the production,
sale, transportation, delivery or use of said Products.
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(c)
Irrespective of sales actually made by Biocon, the minimum royalties payable to
the team shall not be less than [CONFIDENTIAL INFORMATION OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION]
- [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION] in the first 12 month after initial presentation of any
research group of results in a congress or paper which results show that this
method is recommendable for surgical use.
- [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION] in the next 12 month
- [CONFIDENTIAL INFORMATION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION] in the next 12 month and [CONFIDENTIAL INFORMATION
OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] in
each succeeding 12 months that this agreement subsists.
The right to such a part of a minimum royalty which has not accrued as aforesaid
shall accrue at the end of each 12 months.
(d)
The royalty shall be paid quarterly no later than 30 days after the end of such
period as evidenced by statements provided by Biocon for the previous period.
Delay in payment results in payment of interest of [CONFIDENTIAL INFORMATION
OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] delay.
7. ACCOUNTS AND RECORDS
Biocon will keep at its principal place of business full and accurate accounts
and records of all relevant invoices and other documents connected with the
manufacture and sale of the DEVICE including all such particulars as will enable
the royalty to be determined and will, at reasonable times permit a chartered
accountant nominated by the Danish Team to inspect such documents in the
possession or control of Biocon which relate in a relevant information relating
to such documents and such other information as may be necessary or appropriate
to enable the amount of royalties to be calculated.
8. TRADEMARK
Biocon is entitled to use any trademark of its choice for the DEVICE upon
informing the team.
9. UNFAIR COMPETITION AND INFRINGEMENT OF RIGHTS
The parties shall inform one another of all acts of unfair competition and all
infringements of patents or similar rights which have come to their notice.
Biocon agrees to bear all expenses of any possible defensive action against such
acts and infringements. The team agrees to give Biocon all information,
assistance and authority to enable Biocon to ensure the necessary legal
protection.
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All damage collected or any profits from any action referred to above shall be
for the sole benefit of Biocon.
10. SECRECY AND COMPETITION CLAUSE
The parties shall undertake to treat as strictly confidential and not to divulge
to any third party any of the Confidential Information disclosed by the other
party and not to make use of any such Confidential Information than in co-
operation with the other party.
Once this agreement has been signed the team shall refrain from any competitive
action against Biocon whether direct or indirect as regards the DEVICE or
competetive products within the Exclusive Territory.
Biocon agrees during the term of this agreement to refrain from manufacturing or
selling or distributing directly or indirectly any products competing with the
DEVICE.
11. CHANGES IN THE MARKET SITUATION
In case the DEVICE despite of the patent granted would face competition and
provided further, that this competition would have essential effects on the
market situation the parties shall conduct negotiations to agree on a reduced
minimum royalty, which, however shall not be reduced below [CONFIDENTIAL PORTION
OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] of the
DEVICE.
On the other hand, if the sale of the DEVICE becomes a great success the parties
shall conduct negotiations to agree on an increased royalty.
12. TERMS AND TERMINATION
This agreement comes into force once it has been duly signed by the parties.
Provided that a patent protecting the exploitation of the DEVICE shall be
granted this agreement shall be valid in different countries until the
corresponding patent rights have been expired.
Provided that the patent applications for the DEVICE shall be rejected, or if
only such patents are granted which do not actually protect the industrial
exploitation of the DEVICE, this agreement shall be valid for an initial period
of twelve (12) years from the date hereof.
This agreement may be terminated forthwith for cause by either party if the
other party fails to fulfill any of its obligations under this agreement and
such default is not
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remedied within 30 days of the date on which a written
notice hereof has been dispatched, the right to ask for damages being reserved.
Notice of termination shall be given by registered letter.
The team shall have the option to terminate this agreement if Biocon is adjudged
bankrupt or placed in the hand of receiver or otherwise enters into any scheme
for composition with creditors or makes any assignment of all or substantially
all its assets for the benefit of creditors.
In case of termination of this agreement all patent rights and know-how belongs
to the Team.
13. GOVERNING LAW AND ARBITRATION
This agreement shall be governed by the laws of Sweden.
Any dispute arising out of or in connection with this agreement shall finally be
settled in Stockholm without recourse to any court, in accordance with the rules
of conciliation and arbitration of Central Chamber of Commerce of Sweden by one
or more arbitrators designated in conformity with the rules of the above
Chamber.
14. NOVELTY
The Team does not warrant the novelty of DEVICE.
15. QUALITY OF DEVICE
Biocon shall manufacture products of high quality.
The Team shall be entitled to inspect whether products manufactured under the
license are of the required quality.
16. MAINTENANCE IN FORCE OF ANY PATENTS UNDER THIS AGREEMENT
Biocon shall keep in force any patents granted for the DEVICE. However, if the
team and Biocon find in agreement that the patents have lost their significance
e.g. because of several competitive products with equal quality, Biocon can if
it desires expire the patents.
17. WIDENING OF RESEARCH
Biocon can start to deliver devices, like clamps to surgical research groups for
research purposes to other countries than Denmark three (3) months after the
first thirty (30) sterile clamps have been delivered to the Danish Team for
research purposes.
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This agreement on 6 numbered pages (1-6), has been executed in three original
counterparts, one for Biocon, one for the Danish Team and one for the Finnish
Team.
Copenhagen 14. 12. 1988
/s/ Xxxxxx Xxxxxxx /s/ Xxxxx Xxxxxxxx Xxxxx
----------------------- -----------------------------
(Xxxxxx Xxxxxxx) (Xxxxx Xxxxxxxx Xxxxx)
(Menifix I/S)
/s/ Markku Tamminmaki /s/ Xxxx Xxxxxxxxxx
--------------------------- ------------------------
(Markku Tamminmaki) (Xxxx Xxxxxxxxxx)
BIOCON OY
/s/ Xxxxxx Xxxxxxx
-----------------------
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