LICENSE AGREEMENT
Exhibit 10.19
This License Agreement (this "Agreement"), entered into on November 27, 2016 (the "Effective Date"), is entered into by and between Xxxxxx Cosmetics Ltd., a company organized under the laws of the State of Israel ("Xxxxxx"), OWC Pharmaceutical Research Corp., a company organized under the laws of the State of Delaware of USA ("OWCP"), One World Cannabis Ltd., a company organized under the laws of the State of Israel ("OWC Ltd."; OWC Ltd. and OWCP shall be referred to hereunder together as "OWC").
R E C I T A L S
WHEREAS, Xxxxxx is a world leading company in the field of development,
production, manufacturing and packaging of health and beauty products including
for treatment of human skin disease, with extensive resources, knowledge and
experience in this field; and
WHEREAS, OWC Ltd. is a wholly owned subsidiary of OWC Corp.; and
WHEREAS, OWC is in the business of developing novel therapeutic methods for the
treatment of medical conditions with pharmaceutical-grade cannabis derived
compounds; and
WHEREAS, on August 6, 2015, the Parties entered into a non-binding MOU in
connection with the development, manufacturing and distribution of products
comprised of Emilia's proprietary skin formulation with OWC's proprietary
cannabis extract for treatment of Psoriasis (the "MOU"); and
WHEREAS, the Parties conducted a Development and Evaluation Program (as defined
below) for the development of a specific product comprising Emilia's formulation
with certain cannabis extract provided by OWC for topical treatment of Psoriasis
as contemplated hereunder; and
WHEREAS, Xxxxxx is willing to grant a limited license to OWC, against royalties,
with respect to the Licensed Intellectual Property (as defined below), to be
developed and commercialized worldwide in the Field of Use (as defined below) in
connection with the Licensed Product (as defined below) only, all in accordance
with the terms and conditions set forth hereto and for the Term; and
WHEREAS, OWC desires to obtain an non-exclusive license for the worldwide use
and practice of the Licensed Intellectual Property in the Field of Use in
connection with the Licensed Product only, upon the terms and conditions
hereinafter set forth hereto and for the Term; and
WHEREAS, this Agreement has been entered into in consideration of the mutual
undertakings and agreements set forth herein.
NOW THEREFORE, in consideration of the foregoing and the covenants and promises
contained in this Agreement, the Parties, intending to be legally bound, hereby
agree as follows:
1. DEFINITIONS
Capitalized terms defined in this Agreement shall have the meanings herein
provided, unless the context requires otherwise:
1.1. "Affiliate" means, with respect to a particular Party, a person,
corporation, partnership, or other entity that controls, is controlled by or is
under common control with such Party. For the purposes of this definition, the
word "control" (including, with correlative meaning, the terms "controlled by"
or "under the common control with") means the actual power, either directly or
indirectly through one or more intermediaries, to direct or cause the direction
of the management and policies of such entity, whether by the ownership of fifty
percent (50%) or more of the voting stock of such entity, or by contract or
otherwise.
1.2. "Commercialization" with a correlative meaning for "Commercialize" and
"Commercializing" means all activities undertaken (before and after obtaining
Regulatory Approvals) relating specifically to the pre-launch, launch,
promotion, medical education and medical liaison activities, marketing, sale,
and distribution of the Licensed Product, including: (a) strategic marketing,
sales force detailing, advertising, medical education and liaison, and market
and product support; (b) any post-marketing clinical studies for use in
generating data; and (c) all customer support, Licensed Products distribution,
invoicing and sales activities.
1.3. "Development and Evaluation Program" shall mean the development and
evaluation program jointly conducted by OWC and Xxxxxx, to develop and evaluate
the potential use for treatment of Psoriasis of OWC's pharmaceutical-grade
cannabis-derived compounds with Emilia's proprietary skin formulation.
1.4. "Field of Use" shall mean topical treatment of Psoriasis in Humans with
Cannabis.
1.5. "First Commercial Sale" means the first sale of the Licensed Product by or
on behalf OWC or its sublicensees to a third party after Regulatory Approval for
such sale of Licensed Product has been obtained by OWC in such jurisdiction.
1.6. "Intellectual Property" shall mean and include all patents, trademarks,
copyrights, service marks, trade names, trade secrets, inventions, computer
programs, concepts, techniques, confidential information, licenses, inventions,
research records, laboratory logs, processes, procedures, drawings, technical
data, formulas, product formulations, works of authorship, know-how and other
intellectual property rights, whether or not registered and all reissues and
renewals of such intellectual property rights.
1.7. "OWC Intellectual Property" shall mean and include: (a) all Intellectual
Property owned by or licensed to OWC on the date hereof; and (b) all
Intellectual Property developed thereafter solely by or on behalf of OWC,
whether or not in connection with its performance of its undertakings pursuant
to this Agreement; and (c) all right, title and interest to all know-how,
technology, inventions and other innovations or improvements, whether or not
patentable, developed by or on behalf of either OWC or Xxxxxx or any of its
Affiliates in connection with this Agreement (but specifically excluding the
Xxxxxx Intellectual Property and any derivatives thereof).
1.8. "Licensed Intellectual Property" means any and all right, title and
interest, in and to Xxxxxx Intellectual Property relating to the specific
formulations provided by Xxxxxx to OWC which is incorporated in the Licensed
Product only, including any drawings, plans, diagrams, specifications and other
documents in any way embodying now or in the future materials, methods,
processes, techniques, know-how, data, information or other results relating to
such Intellectual Property incorporated in the Licensed Product.
1.9. "Licensed Product" shall mean the specific product subject matter of the
Development and Evaluation Program, meaning a Psoriasis human skin cream, to be
manufactured by OWC or a third party for OWC (including Xxxxxx, to the extent
the parties shall reach an agreement for manufacturing by Xxxxxx as detailed in
Section 2.3 below) in the Field of Use only, which, in the course of
manufacture, use or sale, would, in the absence of this Agreement, infringe
Xxxxxx Intellectual Property (other than claims of patent that have been held
invalid or unenforceable by an unappealed or unappealable judgment of a court of
competent jurisdiction).
1.10. "Xxxxxx Intellectual Property" shall mean and include (a) all Intellectual
Property owned by or licensed to Xxxxxx or its Affiliates on the date hereof,
and (b) all Intellectual Property thereafter developed or obtained by or
licensed to Xxxxxx or its Affiliates, but (c) with the exclusion of Intellectual
Property specifically developed by Xxxxxx in the course of and in connection
with its performance of its undertakings pursuant to this Agreement. It is
clarified for the avoidance of doubt that sub-section (c) above does not include
any know-how, technology, inventions and other innovations, improvements or
modifications, whether or not patentable, in any of the Xxxxxx Intellectual
Property defined under sub-sections (a) and (b) above or any derivatives of
them, developed or enhanced or improved by or on behalf of Xxxxxx or any of its
Affiliates, in the course of and in connection with this Agreement and all the
foregoing shall be deemed part of the Xxxxxx Intellectual Property.
1.11. "Net Sales" means, with respect to a particular time period, the total
amounts invoiced by OWC and its Affiliates for sales or other Commercialization
of the Licensed Product made during such time period to third parties, less the
following deductions to the extent actually allowed or incurred with respect to
such sales: (a) credits or allowances additionally and actually granted for
damaged, outdated, spoiled, returned or rejected Licensed Product, including in
connection with recalls; and (b) freight, shipping and insurance charges, to the
extent included in the invoiced amount (which must be stated separately on the
invoice).
Notwithstanding the foregoing, amounts invoiced by OWC and its Affiliates or
sublicensees for the sale of Licensed Product between OWC and its Affiliates or
sublicensees for resale shall not be included in the computation of Net Sales
hereunder, however any amount invoiced by OWC and its Affiliates to sublicensees,
resellers, distributors, etc. shall be included in the computation of Net Sales
hereunder. For purposes of determining Net Sales, a "sale" shall not include
reasonable transfers or dispositions, at no cost, as samples or for charitable
purposes, or transfers or dispositions at no cost for preclinical, clinical or
regulatory purposes.
Each of the deductions set forth above shall be reasonable and customary, and in
accordance with United States Generally Accepted Accounting Principles.
1.12. "Parties" shall mean Xxxxxx and OWC.
1.13. "Regulatory Approval" means, with respect to the Licensed Product in any
country or jurisdiction, all approvals, registrations, licenses or
authorizations from the relevant Regulatory Authority in such country or
jurisdiction that is specific to the Licensed Product and necessary to
manufacture or market and sell the Licensed Product in such country or
jurisdiction.
1.14. "Regulatory Authority" means, in a particular country or regulatory
jurisdiction, any applicable governmental authority responsible for granting
Regulatory Approval.
1.15. "Reporting Period" shall begin on the first day of each calendar quarter
and end on the last day of such calendar quarter, from and after the initial
Commercialization of the Licensed Product.
1.16. "Term" means the term of this Agreement which commences on the Effective
Date and expires on the last Royalty Term (as defined below), unless earlier
terminated according to the terms herein.
1.17. "Trial" shall mean an IRB (Helsinki Committee) approved clinical trial
conducted by OWC, at Sheba Medical Center, Tel Hashomer, with respect to the use
of the product developed in the framework of the Development and Evaluation
Program.
2. MANUFACTURE AND DISTRIBUTION OF THE LICENSED PRODUCT
2.1. Xxxxxx shall manufacture and provide OWC, for no cost, with the quantity
Licensed Product as required for the conduct of the Trial, in accordance with
the specifications and quantities detailed in Exhibit A.
2.2. To the extent required in order to allow Xxxxxx to manufacture the Licensed
Product pursuant to Section 2.1 above, OWC hereby provides Xxxxxx with a
non-exclusive, non-transferable right to use OWC Intellectual Property solely
for the purpose of such manufacturing of the Licensed Product.
2.3. It is hereby clarified that subject to the License (as defined below), OWC
may manufacture the Licensed Product by itself, by Xxxxxx and/or by any third
party; In case the parties wish for Xxxxxx to manufacture the Licensed Product
(other than for the purpose of the Trial as set forth in Section 2.1 above), the
parties may in their sole discretion negotiate the terms of such manufacture in
the frame of a separate agreement.
2.4. OWC shall be responsible for the marketing and the distribution of the
Licensed Products (directly and through distribution channels), in its sole
discretion.
3. GRANT OF RIGHTS; ACKNOWLEDGEMENTS
3.1. Upon the successful achievement of the Trial, in accordance with the
Trial's protocol and in OWC's discretion ("Successful Conclusion"), Xxxxxx
hereby grants OWC an exclusive, worldwide, transferable, royalty-bearing
license, with the right to grant sublicenses, to use the Xxxxxx Intellectual
Property, solely in the Field of Use, and solely as incorporated or required for
the creation of the Licensed Product in order to make, have made, use (including
for the purpose of the Trial), lease, sell, offer for sale, have sold, market,
and distribute (directly and through distribution channels), further develop the
Licensed Product, import, exploit and otherwise Commercialize Licensed Product
(the "License").
3.2. In order to enable OWC to fully exploit the License, Xxxxxx xxxxx agrees to
provide OWC with all available know how, technology, trade secrets, or other
Licensed Intellectual Property and documentation in its possession required in
order to enable OWC to exploit the License, including (without limitation)
copies of relevant manufacturing files. Xxxxxx shall thereafter continue to
provide reasonable support and copies of documentation to OWC.
3.3. The License granted hereunder is a limited license only. All rights not
expressly granted by Xxxxxx hereunder are reserved by Xxxxxx. Without limiting
the generality of the foregoing, OWC expressly acknowledges that nothing
contained herein shall be construed or interpreted as a grant, by implication or
otherwise, of any licenses, covenants, or other rights other than the License
expressly set forth in this Section 3. OWC shall not have any ownership interest
in Xxxxxx Intellectual Property or any right or authority to use Xxxxxx
Intellectual Property other than for the specific purposes detailed in Section 0
above, or other than subject to the specific limitations, provided herein and
shall specifically be prohibited from making derivative works of the Xxxxxx
Intellectual Property. Nothing in this Agreement shall be construed to confer
any rights or licenses upon OWC by implication, estoppel, or otherwise as to any
Xxxxxx Intellectual Property other than as specifically indicated under Section
0 above.
3.4. Notwithstanding anything to the contrary, but subject to Section 15.5
below, OWC shall not be entitled to transfer the License to any third party
and/or transfer any Confidential Information of Xxxxxx but shall be entitled to
grant sublicenses and/or employ or contract with third parties, and transfer
Confidential Information of Xxxxxx to such third parties, to the extent required
in order to exploit the License (including third parties engaged by OWC in
connection with the manufacturing and marketing of the Licensed Product),
provided that such third parties sign a written agreement (naming Xxxxxx as
third party beneficiary) protecting Emilia's rights hereunder and incorporating
the relevant terms of this Agreement, including the termination of any such
right awarded to a third party in the event of termination or expiration of this
Agreement; and provided further that OWC shall remain fully responsible for any
act or omission of such third parties and their strict adherence with the
relevant provisions of this Agreement.
3.5. The License term shall be limited to the Royalty Term and shall expire
automatically, in relation to each country, upon expiration or other termination
of the Royalty Term for that country, subject to early termination according to
the provisions of this Agreement.
3.6. Without derogating from Emilia's representations and warranties under
Section 9 below and its indemnification obligations under Section 8.1 below, OWC,
on behalf of itself and its Affiliates, hereby assumes all risk and liability in
connection with OWC's use of the Xxxxxx Intellectual Property subject to the
License and in relation with the development, manufacturing, sale, distribution,
resale, import, exploitation and Commercialization of the Licensed Products.
4. NO LIMITATION ON XXXXXX
It is clarified for the avoidance of doubt, that notwithstanding anything to the
contrary herein, Xxxxxx, its successors and its Affiliates shall not be
prohibited, directly or indirectly, from using and Commercializing Emilia's
Intellectual Property, at Emilia's discretion, in any field whatsoever including
the Field of Use, and Xxxxxx, its successors and its Affiliates will be entitled
to manufacture or participate in any manufacturing process and distribute and
sell any products that incorporate or otherwise use cannabis-derived compounds,
provided however that, during the Royalty Term for each country, such products
do not incorporate the OWC Intellectual Property, and provided further that,
during the Royalty Term for each country, the specific formulations subject
matter of the License which may not be used by Xxxxxx in the Field of Use.
5. REPORTS AND RECORD KEEPING
5.1. OWC shall provide Xxxxxx with a written report, signed by its CFO, on a
quarterly basis, detailing the status of the Trial, the date of the Successful
Conclusion of the Trial, the manufacturing of the Licensed Product by OWC or any
third party on its behalf (and its identity) and of the Commercialization of the
Licensed Product including the date of the First Commercial Sale (but excluding,
for the avoidance of doubt, the identity of OWC's customers which shall be
referred to in the report by an assigned internal code or identification
number).
5.2. Commencing on the First Commercial Sale, OWC shall provide Xxxxxx with a
written report not later than 30 days after the end of each Reporting Period,
containing the following details regarding the sale of Licensed Product by or on
behalf of OWC, directly or indirectly, during such Reporting Period: the
aggregate number of Licensed Products sold during such Reporting Period and the
Net Sales resulting to OWC of the sale of all Licensed Product during such
Reporting Period. The report will be signed by the Chief Financial Officer of
OWC.
5.3. OWC shall provide Xxxxxx with any information and documents reasonably
requested by Xxxxxx, from time to time, in order to verify Emilia's rights under
this Agreement, including the proper and timely payment of Royalties.
5.4. OWC shall maintain complete and accurate records and original documents
relating to the rights and obligations under this Agreement, which records shall
contain sufficient information to permit Xxxxxx to confirm the accuracy of any
reports delivered to Xxxxxx and compliance in other respects with this Agreement
and OWC's payment obligations. A full copy of all records and documents will be
kept at OWC Ltd.'s offices in Israel in order to enable the audit to be
conducted in Israel. All such records and documents shall be in the Hebrew or
English language only. OWC shall retain such records for at least seven (7)
years following the end of the calendar year to which they pertain, during which
time Xxxxxx, or Emilia's appointed agents, shall have the right, at Emilia's
expense, to inspect such records on reasonable notice and during normal business
hours to verify any reports and payments made or compliance in other respects
under this Agreement. Such inspections shall be conducted during normal business
hours, shall not unreasonably interfere with OWC's conduct of its business, and
shall be conducted not more frequently than once in any 12-month period. Each
such inspection shall be at Emilia's expense, unless a particular inspection
reveals an underpayment of five percent (5%) or more of the amount that should
have been paid to Xxxxxx for the period examined, in which case OWC shall bear
the expense of such inspection. In the event of any underpayment of Royalties,
OWC shall remit any amounts due to Xxxxxx within thirty (30) days of receiving
notice thereof from Xxxxxx, without derogating from any other rights awarded to
Xxxxxx by law or agreement.
6. ROYALTY PAYMENT BY OWC
6.1. Royalties. From and after the First Commercial Sale of the Licensed
Product, OWC shall pay to Xxxxxx a running royalty at the rate of ten (10%)
percent ("Royalties"), on Net Sales during the Royalty Term (as defined below).
6.2. Royalty Term. The royalty payment obligation under Section 6.1 shall apply,
on a country-by-country basis, during the period of time beginning upon the
First Commercial Sale of the Licensed Product in such country, and ending ten
(10) years thereafter (the "Royalty Term"). In the event the sale of the
Licensed Product during the Royalty Term reaches the minimum sales targets
mutually agreed by the parties, the Royalty Term will extend to an additional
five (5) year term.
6.3. Payment Method; Late Payments; Foreign Exchange. All payments due hereunder
shall be made against a valid invoice, within thirty (30) days following the end
of the relevant calendar month, by wire transfer of immediately available funds
into an account designated by a Xxxxxx. If Xxxxxx does not receive payment of
any sum due to it on or before the due date, in addition to all other remedies
and rights available to Xxxxxx under applicable law and the Agreement, interest
shall thereafter accrue on the sum due to Xxxxxx until the date of payment at
the per annum rate of five (5%) percent over Prime or the maximum rate allowable
by applicable law, whichever is higher. Late payment of Royalties exceeding
seven (7) days from the due payment date shall be deemed a fundamental breach of
this Agreement. Net Sales made in currencies other than dollars will be
converted into dollars using the closing exchange rates reported in The Wall
Street Journal (U.S., Western Edition) on the last business day of the
applicable calendar quarter.
6.4. Taxes. All payments to Xxxxxx will be made by OWC Ltd. VAT or other sales
taxes will be added to any payment hereunder. If any of the payments required to
be made by OWC to Xxxxxx under Section 6.1 is subject to a deduction or
withholding tax applicable in Israel, then, subject to the below paragraph and
provided an exemption from withholding tax is not provided by Xxxxxx, the sum
payable by OWC shall be made to Xxxxxx after deduction of the amount required to
be so deducted or withheld, which deducted or withheld amount shall be remitted
in accordance with applicable laws. The Parties shall use all reasonable and
legal efforts to reduce or eliminate tax withholding or similar obligations in
respect of Royalties and other payments made by OWC to Xxxxxx under this
Agreement. To the extent OWC is required to deduct and withhold taxes on any
payment to Xxxxxx, OWC shall pay the amounts of such taxes to the proper
governmental authority in a timely manner and promptly transmit to Xxxxxx an
official tax certificate or other documentation of the payment of any such
withholding taxes, including copies of receipts or other evidence reasonably
required and sufficient to enable Xxxxxx to document such tax withholdings
adequately for purposes of claiming foreign tax credits and similar benefits.
Each Party shall provide the other with reasonable assistance to enable the
recovery, as permitted by applicable law, of withholding taxes, value added
taxes, or similar obligations resulting from payments made under this Agreement,
such recovery to be for the benefit of the Party bearing such tax.
7. INFRINGEMENT
7.1. Each Party agrees to provide written notice to the other Party promptly
after becoming aware of any infringement of the Licensed Intellectual Property.
7.2. During the Term of this Agreement, Xxxxxx shall be employ reasonably
commercial efforts, at its discretion, to protect the Licensed Intellectual
Property from misappropriation or violation.
7.3. During the Term of this Agreement, OWC shall be employ reasonably
commercial efforts, at its discretion, to protect the OWC Intellectual Property
incorporated in the Licensed Product from misappropriation or violation.
8. INDEMNIFICATION
8.1. Xxxxxx shall indemnify OWC and its shareholders, directors, officers, and
employees and their respective successors, heirs and assigns (the "OWC
Indemnitees"), and pay and protect, defend, save and hold harmless each OWC
Indemnitee from and against, on an after-tax basis, any and all claims, actions,
suits, losses, liabilities, damages, deficiencies, judgments, settlements, costs
of investigation or other reasonable expenses (including, but not limited to,
interest, penalties and reasonable attorneys' fees and disbursements incurred in
connection with enforcing this indemnification or otherwise in connection with
any of the foregoing, provided that the indemnifying party shall be responsible
for the fees and disbursements of only one counsel for all indemnitees in any
proceeding or related proceedings), but - other than in the event of breach of
confidentiality, misappropriation of Intellectual Property Rights of others, or
personal injury - excluding indirect and consequential damages including lost
profits or income, opportunity cost or punitive damages (collectively,
"Losses"), of whatever kind or nature, incurred by or asserted against any OWC
Indemnitee, arising out of, occurring as a result of, or otherwise in respect
of:
8.1.1. any breach of applicable law by Xxxxxx or anyone on its behalf in
performance of this Agreement;
8.1.2. misappropriation by Xxxxxx of any trade secrets or Intellectual Property
Rights of any party as the result of information conveyed by Xxxxxx to OWC
hereunder.
Such OWC Indemnitee shall promptly notify Xxxxxx in writing of any claim with
respect to which such OWC Indemnitee is seeking indemnification hereunder, upon
becoming aware thereof, and permit Xxxxxx at Emilia's cost to control the
defense against such Loss and shall cooperate in the defense thereof. Neither
Xxxxxx nor such OWC Indemnitee shall enter into, or permit, any settlement of
any such claim without the express written consent of the other Party which
consent shall not be unreasonably withheld, conditioned or delayed. Such OWC
Indemnitee may, at its option and expense, have its own counsel participate in
any proceeding which is under the direction and control of Xxxxxx and will
cooperate with Xxxxxx or its insurer in the disposition of any such matter;
provided, however, that if Xxxxxx shall fail to defend such Loss, such OWC
Indemnitee shall have the right to defend such Loss itself and to recover from
Xxxxxx all reasonable attorney fees and expenses incurred by it during the
course of such defense and Xxxxxx not thereafter question its liability
hereunder to such OWC Indemnitee for any Loss.
8.2. OWC shall indemnify Xxxxxx and its shareholders, directors, officers,
employees, and their respective successors, heirs and assigns (the "Xxxxxx Indemnitees"), and pay and protect, defend, save and hold harmless each Xxxxxx Indemnitee from and against, on an after-tax basis, any and all Losses, of
whatever kind or nature, incurred by or asserted against any Xxxxxx Indemnitee,
arising out of, occurring as a result of, or otherwise in respect of:
8.2.1. any breach of applicable law by OWC or anyone on its behalf in
performance of this Agreement;
8.2.2. OWC's use of the Xxxxxx Intellectual Property subject to the License and
in relation with the development, manufacturing, sale, distribution, resale,
import, exploitation and Commercialization of the Licensed Products (except as
under Emilia's indemnification obligations in Section 8.1 above); and/or
8.2.3. misappropriation by OWC of any trade secrets or Intellectual Property
Rights of any party as the result of information conveyed by OWC to Xxxxxx
hereunder.
Such Xxxxxx Indemnitee shall promptly notify OWC in writing of any claim with
respect to which such Xxxxxx Indemnitee is seeking indemnification hereunder,
upon becoming aware thereof, and permit OWC at OWC's cost to control the defense
against such Loss and shall cooperate in the defense thereof. Neither OWC nor
such Xxxxxx Indemnitee shall enter into, or permit, any settlement of any such
claim without the express written consent of the other Party, which consent
shall not be unreasonably withheld, conditioned or delayed. Such Xxxxxx
Indemnitee may, at its option and expense, have its own counsel participate in
any proceeding which is under the direction and control of OWC and will
cooperate with OWC or its insurer in the disposition of any such matter;
provided, however, that if OWC shall fail to defend such Loss, such Xxxxxx
Indemnitee shall have the right to defend such Loss itself and to recover from
OWC all reasonable attorney fees and expenses incurred by it during the course
of such defense and OWC shall not thereafter question its liability hereunder to
such Xxxxxx Indemnitee for any Loss.
9. REPRESENTATIONS AND WARRANTIES
9.1. Xxxxxx represents and warrants that, to the best of its knowledge, (i) it
has full title and ownership of, or is duly licensed under or otherwise
authorized to use, the Licensed Intellectual Property, free and clear of all
third party rights or other claims or encumbrances; (ii) the Licensed
Intellectual Property is not subject to any law, outstanding order, stipulation
or agreement restricting the use or license thereof; (iii) the Licensed
Intellectual Property has not violated or infringed and does not now violate or
infringe, and the use of the Licensed Intellectual Property in connection with
the License in strict compliance with the terms of this Agreement will not
violate or infringe, any intellectual property right of any other person or
entity.
9.2. OWC represents and warrants that, to the best of its knowledge, (i) it has
full title and ownership of, or is duly licensed under or otherwise authorized
to use, the OWC Intellectual Property, free and clear of all third party rights
or other claims or encumbrances; (ii) the OWC Intellectual Property is not
subject to any law, outstanding order, stipulation or agreement restricting the
use or license thereof; (iii) the OWC Intellectual Property has not violated or
infringed and does not now violate or infringe, and the use of the OWC
Intellectual Property in connection with this Agreement in strict compliance
with the terms of this Agreement will not violate or infringe, any intellectual
property right of any other person or entity.
9.3. Warranty and Disclaimer.
9.3.1. Notwithstanding anything to the contrary herein but subject to, and
without derogating from indemnification obligations under Section 8 below, the
Xxxxxx Intellectual Property and OWC Intellectual Property are furnished under
this Agreement "AS IS", with all faults and without warranty of any kind,
express, implied, statutory or otherwise, including any warranty of
merchantability, fitness for any particular purpose, title, non-infringement,
quality, usefulness, commercial utility, adequacy, compliance with any law,
domestic or foreign, and implied warranties arising from course of dealing or
course of performance.
9.3.2. Except as expressly set forth in this Agreement, to the maximum extent
permitted by law, each party expressly disclaims all representations and
warranties under this Agreement, whether written, oral, express, implied
statutory or otherwise, including, all implied warranties of merchantability,
quality, fitness for a particular purpose, and non-infringement of third party
rights with respect to the Intellectual Property of each Party and the Licensed
Product.
10. INTELLECTUAL PROPERTY
10.1. The entire right, title and interest in Xxxxxx Intellectual Property are
and shall remain with Xxxxxx and the entire right, title and interest in the OWC
Intellectual Property are and shall remain with OWC.
10.2. Xxxxxx shall disclose promptly to OWC the making, conception or reduction
to practice by or on behalf of Xxxxxx of any Intellectual Property to be owned
by OWC pursuant to the terms of this Agreement, and Xxxxxx shall execute (or
cause to be executed) and deliver to OWC, at its request, all descriptions,
applications, assignments and other documents and instruments as are necessary
or proper to carry out the provisions of this Section 10, at OWC's expense, and
Xxxxxx shall cooperate with and assist OWC or its nominees in all reasonable
ways and at all reasonable times, at OWC's expense, to aid OWC in obtaining,
maintaining, defending and enforcing all lawful patent, copyright, trade secret,
know-how and the like of OWC under this Agreement.
10.3. Without derogating from any other provision of this Agreement, subject to
OWC's strict compliance with the terms of this Agreement, Xxxxxx hereby
irrevocably transfers and assigns to OWC all worldwide patents, patent
applications, copyrights, mask works, trade secrets and other Intellectual
Property rights in any OWC Intellectual Property, and waives any and all moral
rights that Xxxxxx may have in or with respect to any OWC Intellectual Property,
subject to payment of the Royalties herein.
11. DATA AND PUBLICATIONS
11.1. Nothing herein shall prevent either Party from making publications
relating solely to their own Intellectual Property. Notwithstanding the above, a
Party wishing to make a publication which in any way relates to or references
the other Party's Intellectual Property shall not be permitted to make such
publication unless it has transmitted to the other Party a copy of the proposed
publication and received the other Party's advance written approval to publicize
such publication, which shall not be unreasonably withheld. The other Party may:
(i) approve conditionally or unconditionally such publication, or (ii) withhold
approval for such publication. It is agreed the prevention of publication of a
Party's Confidential Information shall be considered as reasonable reason for
denial of publication.
11.2. Without derogating from the above, the Parties shall cooperate in good
faith in order to agree on the form of an initial publication of their
engagement under this Agreement (including the Development and Evaluation
Program).
11.3. Notwithstanding the above: (i) OWC shall be entitled to freely publicize
the results of the Trial in any scientific publication or symposium without
obtaining Emilia's prior written consent; and (ii) nothing herein shall be
construed as prohibiting a Party from making any disclosure required under
applicable law (including any securities laws) or valid court order.
12. TERM AND TERMINATION
12.1. The term of this Agreement (the "Term") shall commence on the Effective
Date and continue until the earlier of: (a) failure of the Trial, if such Trial
was not Successfully Concluded, or (b) upon expiration of the last Royalty Term
with respect to all Licensed Product (as may be extended under the terms of this
Agreement).
12.2. In the event a Party has materially breached or defaulted in the
performance of any of its material obligations hereunder, and such default has
continued for thirty (30) days after written notice thereof was provided to the
breaching Party by the non breaching Party, the non breaching Party shall be
entitled to terminate the Agreement and such termination shall become effective
at the end of such thirty (30) day period unless the breaching Party has cured
any such breach or default prior to the expiration of the thirty (30) day
period.
12.3. Notwithstanding any of the above, either Party to this Agreement may
terminate this Agreement immediately, by providing the other Party with a
written notice of such termination, in any event of filing by the other Party of
a petition for bankruptcy, or the adjudication that the other Party is bankrupt,
or the filing against the other Party of a petition for bankruptcy, or the
insolvency of the other Party, or the inability of the other Party to pay its
debts as they come due, or the making by the other Party of an assignment for
the benefit of creditors or an arrangement pursuant to any bankruptcy law, or
the discontinuance by the other Party of its business for a consecutive period
of 30 days, or the appointment of a receiver for the other Party, in each case
provided the same was not cancelled within ninety (90) days.
12.4. The provisions this Agreement that by their nature survive termination,
including without limitation the provisions of Sections 4, 5, 6 (to the extent
relating to Net Sales incurred prior to termination), 8, 10, 11, 13, 14, 15.1
and 15.8 hereto shall survive the termination of this Agreement, for any reason
whatsoever.
12.5. Upon termination of this Agreement, for any reason whatsoever, each Party
shall return to the other Party all documents delivered or made available by
such Party to the other Party, its employees, agents, or representatives
including, without limitation, any document containing Confidential Information
of the other Party, all documents and other tangible means containing the
Intellectual Property of the other Party and any and all copies thereof,
provided that each Party may retain one copy of such documents for archival
purposes.
12.6. Upon termination of this Agreement, for any reason whatsoever, the License
shall immediately terminate and OWC may not manufacture additional Licensed
Products but Xxxxxx shall be entitled to Royalties for Licensed Products which
were previously manufactured if and when sold.
13. CONFIDENTIALITY
13.1. The term "Confidential Information" shall mean any information disclosed
by one Party (the "disclosing party") to the other Party (the "receiving
party"), either directly or indirectly, in writing, orally, or by inspection of
tangible objects (including, without limitation, documents, samples, specimens,
microscopic sections, plant and equipment, Intellectual Property of either
Party, trade secrets), which by is confidential by nature, whether or not
designated as "Confidential," "Proprietary" or some similar designation.
Confidential Information shall not, however, include any information which:
(i) was in the public domain prior to the time of disclosure by the disclosing
party;
(ii) becomes in the public domain through no action or inaction of the receiving
party in breach of law or this Agreement;
(iii) the receiving party can establish was known to it prior to disclosure
thereof by the disclosing party;
(iv) is obtained by the receiving party from a third party not known by the
receiving party to be under duty of confidentiality to the disclosing party;
(v) the receiving party can establish in written records was independently
developed by employees, agents or consultants of the receiving party who had no
access to the Confidential Information of the disclosing party, and without any
use or reference of any Confidential Information of the disclosing party; or
(vi) is related to ideas, concepts, methodologies, know-how, techniques and/or
work procedures which are generic and/or not unique to the disclosing party; or
(vii) is required by law or court order to be disclosed by the receiving party,
provided that the receiving party gives the disclosing party prompt written
notice of such requirement prior to such disclosure (to the extent possible) and
reasonable assistance in obtaining a protective order or otherwise preventing or
limiting disclosure of such information.
13.2. Neither Party shall use any Confidential Information of the other Party
for any purpose other than to exercise its rights and perform its obligations
under this Agreement. Neither Party shall disclose any Confidential Information
of the other Party to third parties or to such Party's employees, except to
those employees and contractors of the receiving party and its Affiliates with a
need to know, and provided they are subject to written confidentiality
undertakings. The receiving party shall be legally responsible to the disclosing
party for any breach of this Section by any of its employees. Notwithstanding
the above, a receiving party may disclose information on a "need-to-know" basis
to potential business associates with the prior written approval of the
disclosing party, which approval shall not be unreasonably withheld or delayed.
13.3. Each Party shall take reasonable measures to protect the secrecy of and
avoid disclosure and unauthorized use of the Confidential Information of the
other Party in its possession. Without limiting the foregoing, each Party shall
take at least those measures that it takes to protect its own most highly
confidential information and shall ensure that its employees who have access to
Confidential Information of the other Party have signed a non-use and
non-disclosure agreement in content similar to the provisions hereof prior to
any disclosure of Confidential Information to such employees.
14. NOTICES
Any offer, notice, response or other communication required or authorized to be
given by any Party under this Agreement to the other Party shall be in writing
in the Hebrew or English language only, and shall be personally delivered, sent
by facsimile transmission (with a copy by ordinary mail in either case) or
dispatched by overnight courier addressed to the other Party at the address
stated below or such other address as shall be specified by such Party by notice
in accordance with the provisions of this Section. Any notice shall operate and
be deemed to have been served, if personally delivered or sent by fax on the
next following business day at the recipient's address, and if by courier, on
the fifth following business day at the recipient's address. Any notice to OWCP
may be sent to the address of OWC Ltd. and shall be deemed sufficiently
delivered. Addresses for the purposes of this Section are as follows:
To Xxxxxx: Xxxxxx Cosmetics Ltd.
__________________
__________________
Fax: __________________
Attention: _________________
To OWC: OWC Pharmaceutical Research Corp.
One World Cannabis Ltd.
00, Xxxxxxx Xxxxxx
PO BOX 8324
4918103 Petach Tikva
Israel
Fax: 00-0000000
Attention: Xx. Xxx Xxxxxx, CEO, One World Cannabis Ltd.
15. MISCELLANEOUS
15.1. This Agreement shall be governed by and interpreted in accordance with the
laws of the State of Israel (excluding its conflict of laws principles). Any
legal action or proceeding against either Party with respect to any controversy
or claim arising out of or relating to this Agreement may be brought solely and
exclusively in the courts of the State of Israel located in Tel Aviv, and, by
execution and delivery of this Agreement, each Party hereby irrevocably accepts
for itself and in respect of its property, generally and unconditionally, the
jurisdiction of the aforesaid courts. Each Party hereby irrevocably waives any
objection which it may now or hereafter have to the laying of venue of any of
the aforesaid actions or proceedings arising out of or in connection with this
Agreement brought in such courts and hereby further irrevocably waives and
agrees not to plead or claim in any such court that any such action or
proceeding brought in any such court has been brought in an inconvenient forum.
OWCP hereby irrevocably designates, appoints and empowers OWC Ltd., as its
designee, appointee and agent to receive for OWCP and on its behalf, service of
any and all legal process, service of any and all legal process, pleadings,
summons, notices and documents which may be served in any action or
proceeding. Any pleadings in any legal proceedings in connection with this
Agreement shall be in the Hebrew language only.
15.2. This Agreement may be executed in two or more counterparts each of which
shall be deemed an original but all of which constitute one and the same
instrument. This Agreement, together with the Exhibits hereto and documents
incorporated herein by reference, constitutes the entire agreement between the
parties with regard to the subject matter hereof and supersedes any previous
agreement, understanding, course of dealing, or negotiation among the Parties,
including the MOU, with respect to such subject matter.
15.3. Save as expressly provided herein, this Agreement may be amended or
terminated, and any of the terms hereof waived, only by a document in writing
specifically referring to this Agreement and executed by the Parties.
15.4. If any provision of this Agreement is held by a court of competent
jurisdiction to be unenforceable under applicable law, then such provision shall
be excluded from this Agreement and the remainder of this Agreement shall be
interpreted as if such provision were so excluded and shall be enforceable in
accordance with its terms; provided, however, that in such event this Agreement
shall be interpreted so as to give effect, to the greatest extent consistent
with and permitted by applicable law, to the meaning and intention of the
excluded provision as determined by such court of competent jurisdiction.
15.5. Neither Party shall assign its rights under this Agreement without the
prior written consent of the other Party, such consent not to be unreasonably
withheld. Notwithstanding anything herein to the contrary, (i) either Party may
assign any of its obligations hereunder to an Affiliate provided the assigning
party shall remain liable towards the other Party, and (ii) either Party may
assign this Agreement in connection with a bona fide purchase of all or
substantially all of the assets or shares of a Party by a third party, or a
merger, reorganization, joint venture or other business combination. A permitted
assignee or successor of any Party authorized hereunder shall be bound by the
terms of this Agreement and shall have all of the rights and obligations of the
assigning party set forth in this Agreement.
15.6. Neither Party will be responsible for delays resulting from causes beyond
the reasonable control of such Party, including, without limitation, fire,
explosion, flood, war, terror, governmental actions, strike, or riot, provided
that the nonperforming Party uses commercially reasonable efforts to avoid or
remove such causes of nonperformance and continues performance under this
Agreement with reasonable dispatch whenever such causes are removed.
15.7. All headings are for convenience only and shall not affect the meaning of
any provision of this Agreement.
15.8. OWC Ltd.'s and OWCP's under this Agreement are joint and several.
IN WITNESS WHEREOF, the Parties have caused this Agreement to be executed by
their duly authorized representatives.
OWC Pharmaceutical Research Corp.
By: _____________________________
Name: _____________________________ One World Cannabis Ltd.
By: _____________________________
Name: _____________________________ Companhia Suzano de Papel e Celulose
By: _____________________________
Name:
Xxxxxx Cosmetics Ltd.
By: _____________________________
Name: _____________________________
[Signature Page of the License Agreement]
