JOINT DEVELOPMENT AND EXCLUSIVE OPTION AGREEMENT
EXHIBIT
10.1
This
Joint Development and Exclusive Option Agreement (“Agreement”),
effective as of the date signed by both parties (“Effective Date”), is
entered into by and between
XXXXX XXXXXXXX CORPORATION, a
Delaware corporation having an address and contact person at 000 Xxxxx Xxxxxx
Xxxxx Xxxxxxxxx, Xxxxxxxx, Xxxxxxxxxx (“Xxxxx”)
and
QUICK-MED TECHNOLOGIES, INC.,
a Nevada corporation having an address and contact person at 000 XX
Xxxxxx Xxxxxx, Xxxxxxxxxxx, Xxxxxxx 00000 (Attention: Xxxxxx Xxxxxxxx, Vice
President) (“Quick-Med”).
Xxxxx and
Quick-Med are sometimes referred to herein individually as a “Party” and
collectively as the “Parties.”
RECITALS
WHEREAS,
Xxxxx and Quick-Med are interested in applying NIMBUS® and
related Quick-Med antimicrobial technologies to adhesives for medical and other
applications, Quick-Med and Xxxxx desire to collaborate on such technology
developments and applications, and if the contemplated technology developments
and applications are successful, Quick-Med will enter into an exclusive license
with Xxxxx for NIMBUS® and
related Quick-Med antimicrobial technologies for use in applications and
products arising from the activities contemplated by this
Agreement;
Now,
therefore, in consideration of the mutual promises contained herein, the
Parties, intending to be legally bound, agree as follows:
1. DEFINITIONS
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1.1
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“Quick-Med
Antimicrobial Technology” shall mean technology utilizing advanced
antimicrobial polymeric materials supplied by Quick-Med as NIMBUS®
(Novel Intrinsically MicroBonded Utility Substrate), NimbuSorb™, and/or
NimbuDerm™.
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1.2
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“Xxxxx Adhesive
Technology” shall mean the technology embodied in adhesives
developed, manufactured and/or sold by Xxxxx or its affiliates or
subsidiaries.
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1.3
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“Confidential
Information” shall mean information transmitted by either Party
relating to compounds, products, formulations, specifications,
manufacturing processes, uses, technical, testing, commercial, economic or
business affairs, patent applications, know-how of Quick-Med or Xxxxx, or
other information that the disclosing party considers confidential, either
in written form including electronic form and marked ‘CONFIDENTIAL’ or if
disclosed orally or visually then reduced to writing within thirty (30)
days after oral or visual disclosure and similarly
marked.
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1.4
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Field” shall
mean the application of Quick-Med Antimicrobial Technology to Xxxxx
Adhesive Technology for the purpose of controlling bacteria in (a) medical devices and other health care
applications utilizing ***** of adhesive, and (b) any non-medical device
or non-health care application utilizing *****
adhesives.
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1.5
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“Option” shall mean the right stated in Section.
3.1.
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1.6 | “Option Period” shall mean the time that the Option may be exercised by an “Option Notice” as stated in Section. 4.1 and shall expire on the date that is ***** after the last day of the Term. |
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1.7
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“Term” shall
mean the life of this Agreement, which shall commence on the Effective
Date and remain in effect for six months, unless earlier terminated or
otherwise extended in accordance with the provisions of this
Agreement.
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1.8
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“Territory”
shall mean Worldwide.
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1.9
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With
respect to each Party, “People” shall
mean its directors, officers, employees, consultants, advisors, and
agents.
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1.10
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“MRSA” shall
mean Methicillin-resistant Staphylococcus
aureus
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1.11
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“VRE” shall mean
Vancomycin-resistant Enterococcus
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1.12
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“MVTR” shall
mean Moisture Vapor Transmission
Rate.
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1.13
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“Joint Development
Phase” shall mean the shorter of the Term, as defined in Section.
1.6 or the completion of Joint Development Program stated in Section.
2.3.
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1.14
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“Commercialization
Phase” shall mean the term of the License Agreement provided for in
Section 4.2, starting on the effective date
thereof.
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1.15
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“Milestone Satisfaction
Notice” shall mean any of the notices provided for in Section
2.2(b)(2).
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1.16
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“Joint Development
Program” shall mean the program provided for in Section
2.1.
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***** This material has been omitted pursuant
to a request for confidential treatment and filed separately with the Securities
and Exchange Commission.
-1-
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1.17
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“License Agreement Term
Sheet” shall mean Exhibit A
herein.
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1.18
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“Existing Intellectual
Property” shall have the meaning set forth in Section
6.1.
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1.19
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“Quick-Med Owned
Intellectual Property” shall have the meaning set forth in Section
6.2.
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1.20
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“Xxxxx Owned
Intellectual Property” shall have the meaning set forth in Section
6.3.
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2.
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DEVELOPMENT
AND FUNDING OF DEVELOPMENT COSTS
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2.1
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Joint Development
Activities. Subject to the terms and conditions of this
Agreement, Quick-Med and Xxxxx will use commercially reasonable efforts
during the Term to develop Quick-Med Antimicrobial Technology for use in
the Field (the “Joint Development
Program”). The Parties will reasonably cooperate on such
development. During the Term, Xxxxx will conduct one or more
evaluations of adhesives treated with Quick-Med Antimicrobial Technology,
and Quick-Med will provide basic microbiology analysis to determine the
effectiveness of antimicrobial activity imparted
thereto.
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2.2
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Milestones.
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(a)
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Milestone Objectives
to be Completed. In order to complete the Joint
Development Program, the parties have agreed to collaborate and work
together to satisfy each of the milestone objectives set forth in Section
2.2(d) below.
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(b)
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Satisfaction of
Milestone Objectives.
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(i)
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Satisfaction
of each of the milestone objectives shall be based upon successful
completion of each of the criteria related to such milestone
objective.
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(ii)
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At
the point when Quick-Med believes all of the criteria related to a
particular milestone objective have been completed, Quick-Med shall
deliver written notice of such satisfaction to Xxxxx (each, a “Milestone Satisfaction
Notice”).
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(iii)
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Upon
receiving such Milestone Satisfaction Notice, Xxxxx shall review the
milestone objective at issue along with all criteria related thereto and
shall determine whether such milestone objective and all criteria related
thereto have been adequately
satisfied.
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(iv)
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In
the event that Xxxxx is not reasonably satisfied that all criteria and/or
the milestone objective have been adequately satisfied, it shall provide
feedback to Quick-Med of issues necessary to be resolved prior to it being
satisfied.
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(v)
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Upon
satisfaction of such milestone objective and all criteria related thereto,
Xxxxx shall deliver written confirmation of its approval of the completion
of such milestone objective, which shall not be unreasonably
withheld.
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(c)
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Payment of Milestone
Satisfaction Amounts. Within seven (7) days of delivery
by Xxxxx of such written confirmation regarding the completion of a
milestone objective, Xxxxx shall pay to Quick-Med the amount set forth in
the “Payment” column in Section 2.2(d) related to such milestone
objective.
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(d)
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Milestone Objectives
and Payment Schedule.
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Milestone
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Payment
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Target
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Execution
of Joint Development Agreement by Xxxxx and Quick-Med
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$30,000
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April
15, 2009
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Review
and evaluation of intellectual property related to Quick Med Antimicrobial
Technology by Xxxxx and Xxxxx’x approval of such intellectual property to
be determined within 90 days of the Effective Date.
*****
log kill for MRSA and VRE after ***** minutes contact with Quick-Med
adhesive
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$30,000
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July
15, 2009
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*****
log kill for MRSA and VRE after ***** hours contact with Quick-Med
adhesive
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$40,000
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October
15, 2009
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***** This material has been omitted pursuant
to a request for confidential treatment and filed separately with the Securities
and Exchange Commission.
-2-
2.3 Specifications. The
Joint Development Program shall be deemed to be completed upon delivery of
written notice by Xxxxx to Quick-Med that the milestones set forth in Section
2.2(d) and the Specifications set forth below have been achieved by the
Parties
Concentration
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no
more than ***** in the adhesive
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Antimicrobial
Efficacy:
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●*****
to ***** antimicrobial active in adhesive
●
***** log kill after ***** minutes for MRSA, VRE following
ASTM 2180
●***** log
kill after ***** hours for MRSA, VRE following ASTM
2180
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Safety:
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●ISO10993 cytotoxicity
●ISO10993 sensitization
●ISO10993
irritation
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Product
Properties:
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●Product must
*****
●Adhesion on
skin after ***** hours measured at ***** must be at a minimum of ******
following Xxxxx Xxxxxxxx test method *****.
●MVTR
must be above ***** measured using
*****
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In the
event that the milestones set forth in Section 2.2(d) and the Specifications set
forth above are not achieved prior to the expiration of the Term of this
Agreement, the Term of this Agreement shall be extended until the shorter of (i)
an additional six (6) month period of time or (ii) until such Specifications
have been satisfied.
2.4
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Contribution of the
Parties.
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(a)
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Xxxxx
Participation. Xxxxx has expertise, facilities and
research and production personnel which it is prepared to use in the Joint
Development Program. Xxxxx shall bring its knowledge, ideas and concepts
concerning the Joint Development Program and its development
objectives. Xxxxx will provide adhesive expertise and base
adhesive materials as required to continue development from previous proof
of principle as reviewed in May 7, 2008, status
report.
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(b)
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Quick-Med
Participation. Quick-Med has expertise, facilities and
research personnel which it is prepared to use in the Joint
Development Program. Quick-Med shall bring its knowledge, ideas
and concepts concerning the Joint Development Program and its development
objectives. Quick-Med will provide microbiological expertise
and anti-microbial polymeric materials in the form of NIMBUS®
(Novel Intrinsically MicroBonded Utility Substrate), NimbuSorb™,
NimbuDerm™ and the like.
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(c)
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Facilities, Equipment
and Materials. Nothing in this Agreement shall be
construed to require either Party to contribute to the purchase of any
facilities, equipment or materials by the other Party in connection with
the Joint Development Program. Any such commitment shall be the
subject of a separate agreement.
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2.5
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Consulting
Work.
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(a)
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Joint Development
Phase. Whenever during the Joint Development Phase,
either Party obtains consulting work from the other Party in connection
with the development of the Quick-Med Antimicrobial Technology for use in
the Field, each Party shall bear its own costs for its
consulting time and any associated out-of-pocket expenses, unless
previously agreed in
writing.
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(b)
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Commercialization
Phase. To the extent that during the Commercialization
Phase, Xxxxx requires consulting work from Quick-Med for other work due to
requests made by Xxxxx (and accepted by Quick-Med), then the rate for such
work shall be at $2,000 per day per person or fraction thereof at $250 per
hour. In addition, the reasonable out-of-pocket expenses for
food, lodging, travel, and consumables incurred and for third party
expenses (including, without limitation, independent third party
consultants and laboratory expenses) incurred by Quick-Med will be
separately billed as incurred and paid by Xxxxx, subject to Xxxxx’x
approval of the expenses before they are incurred and the submission to
Xxxxx of evidence of such out-of-pocket expenses in form and substance
reasonably satisfactory to Xxxxx. All invoices shall be paid
within thirty (30) days of the date
thereof.
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2.6
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Project
Management.
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(a)
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Project
Leaders. Each of the parties agrees to appoint and keep
in place during the term of this Agreement a Project Leader who will
allocate such portion of his or her working time as may be reasonably
necessary to facilitate the performance, on a timely basis and in
accordance with any particular project plan, of such party's obligations
under this Agreement or any particular project plan, design or development
specification or other document contemplated hereby. In
addition, the Project Leader will: (i) be the central point of contact for
all matters arising under this Agreement; (ii) oversee project management
and the resource allocations hereunder; and (iii) have overall
responsibility for the facilitation of the performance of the obligations
of the parties contemplated hereby. The Project Leaders for
each respective party shall be the following individuals or their
respective designated successors; provided, however, that it is the intent
of the parties that the Project Leaders named below shall remain assigned
to the alliance for the entire term of this
Agreement:
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Xxxxx: Xx. Xxxx Xx Xxxx
Quick-Med: Xx. Xxxxx
Xxxxxxxx
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(b)
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Meetings. The
Project Leaders agree to meet by phone or in person at least quarterly to
review the overall progress of the projects contemplated hereunder and to
provide overall supervision and oversight. Such meetings shall
be held at locations as the parties shall
determine.
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2.6.1
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Reports. During
the Term, Quick-Med will send monthly reports to Xxxxx of its activities
hereunder and provide weekly updates by telephone
call.
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*****
This material has been omitted pursuant to a request for confidential treatment
and filed separately with the Securities and Exchange Commission.
-3-
3.
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GRANT
OF OPTION
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3.1
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Quick-Med
hereby grants to Xxxxx and its affiliates and subsidiaries an exclusive
option (the “Option”) during
the Option Period to enter into a License Agreement that includes the
essence of the terms stated in the Term Sheet set forth on Exhibit A
herein (the “License Agreement Term
Sheet”).
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3.2
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During
the Term and Option Period, Quick-Med shall not, and shall not authorize
or permit any of its affiliates or subsidiaries, or its or their
respective officers, directors, employees, advisors,
representatives
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or
agents, directly or indirectly, to solicit, initiate, seek, discuss,
encourage (including by way of furnishing information or assistance), or
enter into any discussions, negotiations or agreement with a third party
granting to such third party a license or other right in the Territory to
use the Quick-Med Antimicrobial Technology to make, sell, offer or import
products in the Field.
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4.
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EXERCISE OF
OPTION
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4.1
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Xxxxx
may exercise the Option by sending Quick-Med written notice (the “Option Notice”)
of such exercise any time between the date of execution of this Agreement
and the expiration of the Option
Period.
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4.2
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Upon
Quick-Med’s receipt of the Option Notice, the parties, acting reasonably
and in good faith, shall develop and execute a License Agreement *****
that includes the essence of the terms stated in the License Agreement Term Sheet. The License Agreement shall be
dated with the date of the Option Notice. Upon execution and delivery of
signed originals of the License Agreement to each other, the License
Agreement shall thereupon become retroactively
effective.
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4.3
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If
Xxxxx fails to exercise the Option prior to the expiration of the Option
Period, this Agreement and all rights granted hereunder (not including any
rights related to any intellectual property), including without limitation
the Option, shall immediately terminate and neither Party shall have any
further obligation to the other except to the extent such obligation was
incurred prior to the effective date of such
termination.
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5. CONFIDENTIALITY
5.1
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Each
Party acknowledges that, in furtherance of this Agreement, it may wish to
disclose to the other Party certain “Confidential Information,” namely
business, technical or other information that the disclosing Party
considers confidential.
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5.2
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Each
Party shall maintain in confidence any and all Confidential Information of
the other Party. Each Party further agrees that it shall not
use or disclose to any third party, for any purpose not authorized under
this Agreement, any Confidential Information, except that either party may
disclose Confidential Information under a similar obligation of
confidentiality and non-use on a need-to-know basis to its
People. Each Party agrees and warrants that it shall inform
each of its People having access to any Confidential Information of the
other Party of its obligations of confidentiality
hereunder.
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5.3
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Upon
termination of this Agreement (unless the Option is exercised and/or a
License Agreement becomes effective), each Party
shall:
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(a)
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return
to the other Party Confidential Information received from the other in
tangible form, and
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(b)
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certify
to the other Party that is has, to the fullest extent reasonably
practicable, expunged from any computers and other electronic storage
devices in its custody or control any Confidential Information of the
other Party.
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5.4
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Each
Party shall be relieved of its obligations under Sections 5.1 – 5.3 with
respect to any Confidential Information
which:
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(a)
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was
already known to the receiving Party as
demonstrated by the receiving Party, other than under an obligation
of confidentiality, at the time of disclosure by the other
Party;
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(b)
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was
generally available or known to the public at the time of its disclosure
to the receiving Party as demonstrated by
the receiving Party;
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(c)
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became
generally available or known to the public after its disclosure through no
fault attributable to the receiving Party as
demonstrated by the receiving Party;
or
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(d)
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was
disclosed to the receiving Party by a third party who had no obligation to
the disclosing Party or another party not to disclose such information to
others as demonstrated by the receiving
Party; or
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(e)
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was
independently discovered or developed by the receiving Party without the
use of Confidential Information belonging to the disclosing Party as demonstrated by the receiving
Party.
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5.6
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In
addition to the foregoing, nothing in this Agreement shall restrict either
Party from disclosing Confidential Information pursuant to an order issued
by a court or administrative agency of competent jurisdiction, or other
valid and binding court-ordered discovery, or if specifically obligated to
make such disclosure under any law, regulation or rule (including without
limitation under any applicable securities laws), in the reasonable
opinion of its legal counsel, but only to the extent so ordered or
required, provided, however, that the Party so ordered or required shall
notify the other Party, in writing, of such action, legal requirement or
order soon enough to permit adequate time for response by the affected
Party, if available. The receiving Party shall provide all
reasonable assistance, at the disclosing Party’s expense and direction, in
opposing such disclosure order.
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5.7
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Notwithstanding
the foregoing, this Agreement and the contents hereof may be disclosed by
either Party to its actual or potential investors and their
representatives in a private financing transaction, or to actual or
potential acquirers or targets and their representatives in an acquisition
transaction; provided that such investors, acquirers or targets and their
representatives agree to keep the Confidential Information confidential
and not use it for any purpose not authorized under this
Agreement.
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5.8
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All
disclosures hereunder shall be completed not later than the Term of the
Agreement. All obligations of confidentiality and non-use
created by this Agreement shall survive the termination or expiration of
this Agreement and shall expire five (5) years following the Effective
Date.
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5.9
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Xxxxx
and Quick-Med have entered into a joint research agreement as defined in
35 U.S.C. § 103(c)(3) and which satisfies the requirements of The
Cooperative Research and Technology Enhancement (CREATE) Act of
2004. Should a Party at any time intend to seek a benefit under
the CREATE Act with regard to any U.S. patent application in its control
and filed under this Agreement, then that Party shall so notify the other
Party and give the other Party an opportunity to negotiate in good faith
the terms of such an action. Each Party recognizes that
obtaining a benefit under the CREATE Act would involve disclosing to the
United States Patent and Trademark Office (“USPTO”) certain of the other
Party’s otherwise confidential information, which may become a matter of
public record, and that filing by one Party of a disclaimer pursuant to
the CREATE Act with respect to a patent owned by the other Party could
limit the other Party’s right to enforce its patent
independently.
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***** This material has been omitted pursuant
to a request for confidential treatment and filed separately with the Securities
and Exchange Commission.
-4-
6. INTELLECTUAL
PROPERTY
6.1
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Existing Intellectual
Property. All intellectual property (whether or not
patentable) owned by either party as of the Effective Date including,
without limitation, ideas, concepts, know-how, trade secrets,
inventions,
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discoveries,
processes, methods, compositions, formulae, information, data,
developments and improvements, patent applications, patents, copyrights
and designs (“Existing Intellectual
Property”) shall remain the property of that
party.
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6.2
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Quick-Med
Ownership. Quick-Med shall retain sole and exclusive
ownership of all Quick-Med Antimicrobial Technology, as well as any
improvements or modifications thereto related to antimicrobial
functionality developed during the Joint Development Program (“Quick-Med Owned
Intellectual Property”). For the avoidance of doubt, Quick-Med
Owned Intellectual Property shall not include any intellectual property
related to the formulation, production or use of adhesives that may be
developed during the Joint Development Program, including but not limited
to Xxxxx Adhesive Technology.
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6.3
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Xxxxx
Ownership. Xxxxx shall retain sole and exclusive
ownership of all Xxxxx Adhesive Technology, as well as any improvements or
modifications thereto related to the formulation, production or use of
adhesives developed during the Joint Development Program (“Xxxxx Owned
Intellectual Property”). For the avoidance of doubt, Xxxxx Owned
Intellectual Property shall not include any intellectual property related
to antimicrobial functionality that may be developed during the Joint
Development Program, including but not limited to Quick-Med Antimicrobial
Technology.
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6.4
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Except as specifically set forth in this
Agreement, nothing herein shall be
construed to grant one party any licenses, expressed or implied, or any
other rights in the Quick-Med Antimicrobial Technology or Xxxxx Adhesive
Technology to the other party, or any other technology or information of
either party, other than the right of Option stated in Section. 3.1 of
this Agreement
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6.5
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Patent Filing for
Xxxxx Owned Intellectual Property. The filing,
prosecution and payment for patent applications covering Xxxxx Owned
Intellectual Property developed under this Agreement shall be solely
within the discretion of Xxxxx. However, Xxxxx shall submit
each such patent application to Quick-Med for review and approval before
it is filed to ensure that Quick-Med’s Confidential Information is not
being disclosed without permission. If Quick-Med reasonably
determines that such application discloses its Confidential Information
(or other information from which its Confidential Information may be
inferred or deduced) to the prejudice of Quick-Med’s future patent filings
or trade secrets, it shall within thirty (30) days of its receipt of the
proposed patent application notify Xxxxx in writing of its objections to
such disclosure. The parties shall thereafter work together to ensure that
such patent application is rewritten so as adequately to protect the
interests of both parties.
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6.6
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Patent Filing for
Quick-Med Owned Intellectual Property. The filing,
prosecution and payment for patent applications covering Quick-Med Owned
Intellectual Property developed under this Agreement shall be solely
within the discretion of Quick-Med. However, Quick-Med shall
submit each such patent application to Xxxxx for review and approval
before it is filed to ensure that Xxxxx’x Confidential Information is not
being disclosed without permission. If Xxxxx reasonably
determines that such application discloses its Confidential Information
(or other information from which its Confidential Information may be
inferred or deduced) to the prejudice of Xxxxx’x future patent filings or
trade secrets, it shall within thirty (30) days of its receipt of the
proposed patent application notify Quick-Med in writing of its objections
to such disclosure. The parties shall thereafter work together to ensure
that such patent application is rewritten so as adequately to protect the
interests of both parties.
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6.7
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In
the event of any disagreement as to what is included in Quick-Med Owned
Intellectual Property or Xxxxx Owned Intellectual Property,
the parties shall conduct a mediation-arbitration procedure as
follows. First the parties shall appoint a mediator having
expertise in intellectual property and chemical technology and shall agree
on the timing and location of a mediation session. If the
parties fail so to agree, then they shall follow the Commercial Mediation
Procedures of the American Arbitration Association.
If the mediation fails to settle the matter, then the parties shall follow
the Expedited Procedures of the Commercial Arbitration Rules of the
American Arbitration Association, using a panel of three (3) arbitrators
(one selected by Quick-Med, one selected by Xxxxx and one selected by the
two previously selected arbitrators) having expertise in
intellectual property and chemical technology. Judgment upon the
award entered by the arbitrator panel may be entered in any court having
jurisdiction thereof.
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7. REPRESENTATIONS
AND WARRANTIES
7.1
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Xxxxx’x
Representations and Warranties. Xxxxx represents and
warrants to Quick-Med as follows:
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(a)
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Xxxxx
owns or possesses the necessary rights, title and licenses necessary to
perform its obligations hereunder. Xxxxx has the right to enter
into this Agreement and to perform its obligations
hereunder.
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(b)
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Xxxxx
has no agreements with any third party or commitments or obligations that
materially conflict with its obligations under this
Agreement. During the term of this Agreement, Xxxxx will not
enter into any agreement, commitment or obligation that materially
conflicts with its obligations under this
Agreement.
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(c)
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Xxxxx
has or will obtain from its employees, agents and consultants who perform
work in accordance with the Joint Development Program a valid and
sufficient written agreement vesting ownership of all their discoveries,
improvements and ideas in Xxxxx.
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(d)
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Xxxxx
will use reasonable efforts to satisfy its respective duties and provide
the deliverables for each effective project; provided, however, that Xxxxx
makes no representations or warranties that it will be able successfully
to complete its assigned duties or
deliverables.
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7.2
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Quick-Med’s
Representations and Warranties. Quick-Med represents and
warrants to Xxxxx as follows:
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(a)
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Quick-Med
owns or possesses the necessary rights, title and licenses necessary to
perform its obligations hereunder. Quick-Med has the right to
enter into this Agreement and to perform its obligations
hereunder.
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(b)
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Quick-Med
has no agreements with any third party or commitments or obligations that
materially conflict with its obligations under this
Agreement. During the term of this Agreement, Quick-Med will
not enter into any agreement, commitment or obligation that materially
conflicts with its obligations under this
Agreement.
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(c)
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Quick-Med
has or will obtain from its employees, agents and consultants who perform
work in accordance with the Joint Development Program a valid and
sufficient written agreement vesting ownership of all their discoveries,
improvements and ideas in
Quick-Med.
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(d)
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Quick-Med
will use reasonable efforts to satisfy its respective duties and provide
the deliverables for each effective project; provided, however, that
Quick-Med makes no representations or warranties that it will be able
successfully to complete its assigned duties or
deliverables.
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***** This material has been omitted pursuant
to a request for confidential treatment and filed separately with the Securities
and Exchange Commission.
-5-
8. TERMINATION
8.1
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This
Agreement shall terminate six (6) months from the Effective Date, unless
terminated for cause or extended pursuant to Section 2.3.
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8.2 | Either Party may terminate this Agreement for cause upon any material breach of this Agreement by the other Party that is not cured within thirty (30) days after written notice thereof by the non-breaching Party. The effective date of such termination shall be thirty (30) days after delivery of such notice. |
8.3
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All
rights and obligations applicable under this Agreement through the
effective date of termination shall continue to apply until such date
irrespective of any delivery of notice of
termination.
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8.4
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If
this Agreement is terminated and Xxxxx does not enter into a
royalty-bearing license in the Territory to use the Quick-Med
Antimicrobial Technology to make, have made,
sell, offer, or import products in
the Field, Xxxxx will discontinue its use of materials
incorporating Quick-Med Antimicrobial Technology and will, upon direction
of Quick-Med, return or destroy any remaining samples of such materials
and any thermoplastics, medical devices, and other products derived
therefrom. Quick-Med will return to Xxxxx or destroy any
samples, including without limitation, adhesive samples, received from
Xxxxx.
|
8.5
|
If
this Agreement is cancelled by Quick-Med any time after the sign-on
payment for any reason other than material breach of this Agreement by
Xxxxx, all technology developed theretofore as a result of this Joint
Development Program, including, without limitation, the Quick-Med
Antimicrobial Technology required to enable the technology developed
hereunder will immediately be licensed royalty-free to Xxxxx for use in
the Field.
|
8.6
|
Termination of this Agreement shall not relieve
either Party of any obligation accruing prior to such
termination. The provisions of Sections 3, 4, 5, 6, 9, 10, 11, this Section 8, Section 12.8 and
Section 12.9 shall survive the
termination of this
Agreement.
|
9. DISCLAIMER
OF WARRANTIES; LIMITATION OF LIABILITY
9.1
|
NEITHER
XXXXX NOR QUICK-MED SHALL UNDER ANY CIRCUMSTANCES BE LIABLE TO EACH OTHER
OR THEIR RESPECTIVE AFFILIATES FOR INDIRECT, INCIDENTAL, SPECIAL OR
CONSEQUENTIAL DAMAGES (INCLUDING, BUT NOT LIMITED TO, LOSS OF PRODUCTION
TIME, PROFITS, REVENUE, OR BUSINESS) RESULTING FROM OR IN ANY WAY RELATED
TO THIS AGREEMENT, OR THE TERMINATION OF THIS AGREEMENT, OR ARISING OUT OF
OR ALLEGED TO HAVE ARISEN OUT OF (I) BREACH OF THIS AGREEMENT OR (II) THE
FAILURE BY EITHER PARTY TO DEVELOP ANY PRODUCTS OR PROCESSES IN ACCORDANCE
WITH THE JOINT DEVELOPMENT PROGRAM. THIS LIMITATION APPLIES
REGARDLESS OF WHETHER SUCH DAMAGES ARE SOUGHT BASED ON BREACH OF CONTRACT,
NEGLIGENCE, OR ANY OTHER LEGAL
THEORY.
|
9.2
|
XXXXX
ACKNOWLEDGES THAT THE DEVELOPMENT ACTIVITIES
ARE EXPERIMENTAL IN NATURE AND THAT QUICK-MED MAKES NO
WARRANTY, EITHER EXPRESS OR IMPLIED, INCLUDING WITHOUT LIMITATION
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR PURPOSE WITH
RESPECT TO QUICK-MED ANTIMICROBIAL TECHNOLOGY, OR ANY DATA, PRODUCTS OR
OTHER RESULTS OF THE DEVELOPMENT ACTIVITIES
HEREUNDER.
|
9.3
|
QUICK-MED
ACKNOWLEDGES THAT THE DEVELOPMENT ACTIVITIES ARE EXPERIMENTAL IN NATURE
AND THAT XXXXX MAKES NO WARRANTY, EITHER EXPRESS OR IMPLIED, INCLUDING
WITHOUT LIMITATION WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE WITH RESPECT TO AVERY ADHESIVE TECHNOLOGY, OR ANY DATA,
PRODUCTS OR OTHER RESULTS OF THE DEVELOPMENT ACTIVITIES
HEREUNDER.
|
10. PUBLICITY
Except as
required by law, regulation or rule, both Parties agree not to use the name of
the other, nor of any member of the other’s personnel, in any publicity,
advertising, or news release without the prior written approval of the other
Party, which shall not be unreasonably withheld or delayed.
11. NOTICES
All
notices and other communications under or in connection with this
Agreement shall be in writing and shall be deemed given (a) if delivered
personally (including by overnight express or messenger), upon delivery,
(b) if delivered by registered or certified mail (return receipt
requested), upon the earlier of actual delivery or three (3) days after
being mailed, or (c) if given by facsimile, upon confirmation of
transmission by facsimile, in each case to the parties at the following
addresses or to such other address or telecopy number as shall be
specified in writing by the intended recipient of such
notice:
|
If
to Avery:
Xxxxx
Xxxxxxxx Corporation
c/o Xxxxx Xxxxxxxx Belgie N.V.
Specialty Tape Division - Europe
Xxxxxxxxxxxxxx 0
X-0000 Xxxxxxxx
Xxxxxxx
Attention: Xxxxx X. Xxxxx, Vice President and General Manager,
Specialty Tape Division
Facsimile:
x(00) 00 00 00 00
With
copy to:
Xxxxx
Xxxxxxxx Corporation
000 Xxxxx
Xxxxxx Xxxxx Xxxx.
Xxxxxxxx,
Xxxxxxxxxx 00000
Attention: Senior
Corporate Counsel
Facsimile: x0-
000-000-0000
If
to Quick-Med:
Quick-Med
Technologies, Inc.
Attn:
Xxxxxx Xxxxxxxx, Vice President, Research & Development
000 XX
Xxxxxx Xxxxxx
Xxxxxxxxxxx,
Xxxxxxx 00000
X.X.X.
Facsimile:
x0-000-000-0000
With a
copy to:
Xxx X.
Xxxxxx
Chief
Financial Officer
Quick-Med
Technologies, Inc.
000 X.
Xxxxxx Xxxx # 000
Xxxx
Xxxxx, XX 00000
U.S.A.
Facsimile: x0- 000-000-0000
Either
party may change its mailing address by written notice to the other party in
accordance with this Section 11.
***** This material has been omitted pursuant
to a request for confidential treatment and filed separately with the Securities
and Exchange Commission.
-6-
12. MISCELLANEOUS
12.1
|
This
Agreement embodies the entire understanding of the parties and supersedes
all prior agreements, oral or written, and all other communications
between the parties relating to the subject matter hereof; provided that
the License Agreement shall supersede this Agreement upon becoming
effective as set forth herein.
|
12.2
|
No
amendment or modification of this Agreement shall be valid or binding upon
the Parties unless made in writing and signed by each Party’s duly
authorized representative.
|
12.3
|
Neither
party may assign its rights or delegate its obligations hereunder, either
in whole or in part, whether by operation of law or otherwise, without the
prior written consent of the other party. Any attempted assignment or
delegation without consent will be void. The rights and liabilities of the
parties under this Agreement will bind and inure to the benefit of the
parties' respective successors and permitted
assigns.
|
12.4
|
If
a court of competent jurisdiction declares any provision of this Agreement
invalid or unenforceable, or if any government or other agency having
jurisdiction over either Party deems any provision to be contrary to any
law, then that provision shall be severed and the remainder of the
Agreement shall continue in full force and effect. To the
extent possible, the Parties shall revise such invalidated provision in a
manner that will render such provision valid without impairing the
Parties’ original intent.
|
12.5
|
The
failure of a Party in any one or more instances to insist upon strict
performance of any of the terms and conditions of this Agreement shall not
constitute a waiver or relinquishment, to any extent, of the right to
assert or rely upon any such terms or conditions on any future
occasion.
|
12.6
|
Neither
party shall be liable to the other for delays or failures in performance
resulting from causes beyond the reasonable control of that party,
including, but not limited to, acts of God, labor disputes or
disturbances, material shortages or rationing, riots, acts of war,
governmental regulations, communication or utility failures, or
casualties.
|
12.7
|
Unless
otherwise expressly provided, no provisions of this Agreement are intended
or shall be construed to confer upon or give to any person or entity other
than Xxxxx and Quick-Med any rights, remedies or other benefits under or
by reason of this Agreement.
|
12.8
|
The
relationship between the Parties is that of independent
contractors. The Parties are not joint venturers, partners,
principal and agent, master and servant, employer or employee, and have no
other relationship other than independent contracting
parties. Neither Party has the right or authority to assume,
create, or incur any third party liability or obligation of any kind,
express or implied, against or in the name of or on behalf of another
except as expressly set forth in this
Agreement.
|
12.9
|
This
Agreement shall be governed by and construed in accordance with the laws
of the State of Ohio without regard to the conflicts of law principles
thereof.
|
12.10
|
The Agreement may be executed in two or more counterparts, each of which shall be deemed an original, but all of which together shall constitute one and the same instrument. |
|
IN WITNESS WHEREOF the
Parties have caused this Agreement to be duly
executed:
|
XXXXX
XXXXXXXX CORPORATION
|
QUICK-MED
TECHNOLOGIES, INC.
|
|
Signature
|
/s/
Xxxxx X. Xxxxx
|
/s/
J Xxxx Xxxxxx
|
Name
|
Xxxxx
X. Xxxxx
|
J.
Xxxx Xxxxxx
|
Position
|
Vice
President / General Manager
|
C.E.O.
|
Date
|
April
17, 2009
|
April
15, 2009
|
***** This material has been omitted pursuant
to a request for confidential treatment and filed separately with the Securities
and Exchange Commission.
-7-
EXHIBIT
A
Xxxxx-Quick-Med
License Agreement
Agreed
Terms
*****
***** This material has been omitted pursuant
to a request for confidential treatment and filed separately with the Securities
and Exchange Commission.
-8-