EXHIBIT 10.94
TECHNOLOGY RIGHTS AGREEMENT
Technology Rights Agreement made as of this _______ day of
_____________, 2002 (the "Agreement"), by and among IGI, Inc., a Delaware
corporation ("IGI"), Igen, Inc., a Delaware corporation ("Igen") (IGI and
Igen being each a "Seller" and, collectively, the "Sellers") on the one
hand, and Vetoquinol U.S.A., Inc., a Delaware corporation (the
"Purchaser"), on the other hand.
W I T N E S S E T H:
WHEREAS, pursuant to and as further set forth in an Asset Purchase
Agreement, dated as of February _____, 2002 between IGI and the Purchaser
(the "Purchase Agreement"), the Purchaser agreed to purchase from the
Sellers the Purchased Assets; and
WHEREAS, the Sellers will realize good and valuable consideration as
a result of the consummation of the transactions contemplated by the
Purchase Agreement; and
WHEREAS, Section 2.02 of the Purchase Agreement provides that IGI and
the Purchaser will each execute and deliver to the other this Agreement at
the Closing; and
WHEREAS, included in the sale of the Purchased Assets is a sale and
transfer of all of the Sellers' goodwill in the Pet Business; and
WHEREAS, the Purchaser would suffer irreparable harm in the event the
Sellers, or any of them, license or permit others to use Novasome
Technology in Technology Products, except as provided herein.
NOW, THEREFORE, in consideration of the conditions and covenants set
forth herein and in the Purchase Agreement, it is agreed as follows:
1. Definitions. Capitalized terms not otherwise defined herein or
in the Purchase Agreement shall have the meanings set forth in Section 5 of
this Agreement.
2. Exclusive Rights in Field.
(a) The Purchased Assets include the exclusive right (to the
extent such right is held by the Sellers) to use Novasome Technology
in Technology Products to the extent such Technology Products are
sold or marketed in the business of animal health. Accordingly,
subject to Section 2(c), each Seller hereby sells, assigns and grants
to the Purchaser the exclusive (even as to such Seller), perpetual,
world-wide, royalty-free, transferable, assignable, irrevocable right
and license to use solely in the business of animal health (the
"Field") any rights of such Seller in the Novasome Technology solely
in connection with the business of marketing or selling products that
are Technology Products. Except as provided in the Supply Agreement,
each Seller agrees that it shall not, nor permit any of its
Subsidiaries to, (i) use the Novasome Technology, or license others
to use Novasome Technology, in products that are Technology Products
in the Field or (ii) manufacture, package, market, sell or otherwise
distribute or license others to manufacture, package, market, sell or
otherwise
distribute, IGI-Novasome Products for use in products that are
Technology Products in the Field.
(b) Nothing in this Agreement shall prohibit any Seller from
(i) using or licensing others to use Novasome Technology in any
products other than products that are Technology Products in the
Field or (ii) from manufacturing, packaging, marketing, selling or
otherwise distributing or licensing others to manufacture, package,
market, sell or otherwise distribute IGI-Novasome Products for use in
products that are not Technology Products in the Field.
(c) The exclusive right and license granted to the Purchaser
in Section 2(a) (the "Novasome Technology License") constitutes a
sublicense of Igen's rights under the License Agreement to the extent
of the rights granted to the Purchaser in Section 2(a). The Novasome
Technology License and the other rights sold, assigned, granted,
licensed or sublicensed by each Seller pursuant to this Agreement are
so sold, assigned, granted, licensed or sublicensed solely to the
extent each such Seller has the right to so sell, assign, grant,
license or sublicense such rights for such purposes. Notwithstanding
anything to the contrary in this Agreement, in no event does the
Novasome Technology License or any other right sold, assigned,
granted, licensed or sublicensed by either the Seller to the
Purchaser under this Agreement permit the Purchaser to manufacture,
formulate or otherwise produce any Novasome Technology including,
without limitation, the IGI-Novasome Products, or any product (other
than products that are Technology Products in the Field) containing
any Novasome Technology. Moreover, nothing in this Agreement shall
prevent, prohibit or inhibit in any respect any Seller or any
Subsidiary (as defined in the Purchase Agreement) of such Seller from
performing its obligations or exercising any of its rights under the
Supply Agreement. The Purchaser agrees that, during any period
during which the Supply Agreement is in effect, the Purchaser shall
only use the Novasome Technology pursuant to its rights under this
Agreement and the Purchase Agreement by purchasing IGI-Novasome
Products from one or more of the Sellers pursuant to the Supply
Agreement.
3. Trademark License. Igen hereby grants to the Purchaser a
worldwide, exclusive, royalty-free sublicense under the License Agreement
with the right to grant sublicenses and the right of its sublicensees to
grant further sublicenses to use any of the trademarks listed in Appendix B
to the License Agreement (the "XX Xxxxx") solely in connection with the
sale or marketing of any product that is a Technology Product in the Field,
subject to the restrictions set forth in Section 4.5 of the License
Agreement and only to the extent Igen has the right to use the XX Xxxxx for
such purpose (the "MP Xxxx Sublicense"). The MP Xxxx Sublicense is hereby
granted solely to the extent permitted by the License Agreement and with
specific reference to the rights of Micro-Pak, Inc. under Section 4.5 of
the License Agreement. The Purchaser acknowledges that it has read Section
4.5 of the License Agreement and understands its applicability to the
Purchaser with respect to the MP Xxxx Sublicense. The Purchaser agrees
that its use (and the use of its sublicensees and all further sublicensees
of its sublicensees) of the XX Xxxxx pursuant to the MP Xxxx Sublicense is
subject to the oversight, control and inspection of Micro-Pak, Inc., as
specified in Section 4.5 of the License Agreement. The Purchaser also
agrees that its use (and the use of its sublicensees and all further
sublicensees of its sublicensees) of the XX Xxxxx pursuant to the MP Xxxx
Sublicense is subject to the
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oversight, control and inspection of the Sellers to the same extent as it
is subject to the oversight, control and inspection of Micro-Pak, Inc.
under Section 4.5 of the License Agreement and that such oversight, control
and inspection right of the Sellers shall continue notwithstanding any
termination of such right of Micro-Pak, Inc.
License Agreement.
4. License Agreement.
(a) Sellers agree to exercise the option in Section 2.2 of
the License Agreement to cause the term of the License Agreement to
be extended for an additional term of ten (10) years and to cause the
payment required to be made to Micro-Pak, Inc. pursuant to Section
3.1 of the License Agreement (the "Option Fee") to be made on or
prior to November 30, 2005 (the "Renewal Date"). The Sellers shall
furnish the Purchaser with written evidence of such exercise and
payment within five (5) days of the Renewal Date. At the Purchaser's
reasonable request from time to time after June 2005, the Sellers
shall discuss with the Purchaser their plans and ability to pay the
Option Fee; provided that the Purchaser shall keep all information
resulting from such discussions confidential and will, at Sellers'
request, enter into a confidentiality agreement in a form reasonably
agreeable to both parties relating to such discussions. In the event
that the Sellers do not renew the License Agreement on or prior to
the Renewal Date, Purchaser shall have the right, on behalf of the
Sellers, to exercise Sellers' option under Section 2.2 of the License
Agreement to extend the License Agreement for an additional term of
ten (10) years and to pay the Option Fee required by Section 3.2 of
the License Agreement, and Sellers hereby irrevocably designate and
appoint Purchaser as their agent and attorney-in-fact to cause
Sellers' said option to be exercised in accordance with the terms and
provisions of this sentence. The Renewal Date shall be extended on a
day-for-day basis for each day that any Seller's right to exercise
the option set forth in Section 2.2 of the License Agreement is
extended. If Purchaser exercises such right to extend the term of
the License Agreement, the Sellers shall either (i) repay to
Purchaser the Option Fee on or prior to December 31, 2005 (which date
shall be extended on a day-for-day basis for each day that the
Renewal Date is extended hereunder) together with interest thereon at
a rate equal to the lesser of (x) the prime lending rate of the Bank
of Montreal plus 3% or (y) 10%, compounded annually, from the date of
payment by Purchaser of the Option Fee to the date of repayment by
Sellers or (ii) solely at the Sellers' written election, transfer to
Purchaser all of Sellers' rights and obligations under the License
Agreement free and clear of any liens or encumbrances (other than
under this Section 4) on or prior to December 31, 2005 (which date
shall be extended on a day-for-day basis for each day that the
Renewal Date is extended hereunder); provided, that, in the case of
the foregoing clause (ii), in connection with and upon the Seller's
transfer to the Purchaser of its rights and obligations under the
License Agreement, the Purchaser shall sublicense to the Seller all
rights and obligations of the Purchaser (after the transfer
contemplated by the foregoing clause (ii)) under the License
Agreement other than Purchaser's rights in Sections 2 and 3 of this
Agreement; provided, further, that if the Seller repays the Option
Fee to the Purchaser (with interest thereon at a rate equal to the
lesser of (x) the prime lending rate of the Bank of Montreal plus 3%
or (y) 10%, compounded annually) within two years after the date the
Seller transfers its rights and obligations under the License
Agreement to the Purchaser pursuant to the foregoing clause (ii), the
Purchaser shall, upon such repayment, transfer to the Seller all of
the Purchaser's rights and obligations under the License Agreement
free and clear of
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any liens or encumbrances other than Purchaser's rights under
Sections 2 and 3 of this Agreement.
(b) Sellers shall not amend, modify or terminate any
provision of the License Agreement in any manner so as to adversely
affect the Purchaser's rights to use the Novasome Technology as
provided herein or which would interfere with Sellers' obligations
under the Supply Agreement.
(c) Sellers shall not transfer, assign or otherwise convey
the License Agreement except in connection with a Change of Control,
and then only on condition that the assignee expressly agree in
writing delivered to the Purchaser to be bound by the provisions of
this Agreement. Notwithstanding the foregoing, nothing in this
Agreement shall prevent or inhibit the Seller from sublicensing any
of its rights and obligations under the License Agreement other than
those rights granted to Purchaser in Sections 2 and 3 hereof and no
consent of or notice to the Purchasers shall be required with respect
to any such sublicense.
5. Definitions. For purposes of this Agreement,
(a) "Change of Control" means, with respect to any person
(the "Target"), the sale, transfer or other disposition of all or
substantially all of such Target's assets to one or more other
persons (the "Acquiror") in a single transaction or series of related
transactions, unless securities possessing more than 50% of the total
combined voting power of the Acquiror's outstanding securities (or
the securities of any parent thereof) are held by a person or persons
who held securities possessing more than 50% of the total combined
voting power of the Target immediately prior to that transaction.
(b) "IGI-Novasome Products" means those products by which
Novasome Technology is included in the products that are Technology
Products as of the date hereof (or in the case of Technology Products
whose distribution was discontinued prior to the date hereof, on such
date of discontinuance) including, but not limited to, those set
forth on Exhibit A hereto.
(c) "License Agreement" means that certain License Agreement,
dated December 13, 1995, by and between Micro Pak, Inc., a Delaware
corporation ("Micro-Pak") and Igen, attached hereto as Exhibit B.
(d) "Novasome Technology" means any technology, intellectual
property, trade secrets, processes and other property licensed,
provided or used or permitted to be licensed, provided or used under
the License Agreement that was used in any products of the Pet
Business on or prior to the Closing Date of the Purchase Agreement.
(e) "Technology Products" means all product lines or product
categories in the Field known as: (i) shampoos, if such products
contain any of the active ingredients contained in products of the
Pet Business that are shampoos that exist on the date hereof or
existed at any time prior hereto; (ii) creme rinses, if such
products contain any of the active ingredients contained in products
of the Pet Business that are creme rinses that exist on the date
hereof or existed at any time prior hereof; (iii) moisturizing
sprays or ear cleansers, to the
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extent such sprays or ear cleansers, as the case may be, are
formulated with 100% Novasome Technology; and (iv) hand cremes.A
product which is a Technology Product shall cease to be a Technology
Product if the Novasome Technology in its formulation is educed to a
de minimis amount compared to the amount of Novasome Technology in
its formulation in effect on the date hereof (or, if the Product has
been discontinued prior to the date hereof, its formulation on the
date that its use was discontinued).
5.2 Notices. All notices, requests, claims, demands and other
communications required or permitted to be given under this Agreement shall
be in writing and shall be delivered by hand or sent by confirmed facsimile
or email (with the original to follow by first class mail, postage prepaid)
or sent, postage prepaid, by registered or certified mail or
internationally recognized express courier service and shall be deemed
given when so delivered by hand, email or facsimile or if mailed, five (5)
days after mailing (two (2) business day in the case of overnight courier
service) at the following addresses (or at such other address for a party
as shall be specified by like notice):
(a) if to the Buyer, to
VETOQUINOL U.S.A., Inc.
0000 Xxxxxx Xxxxxxx
Xxxxxxxxx, Xxxxxx
Xxxxxx X0X 0X0
Attention: Xxxxxxx Xxxxxxxxx
Telephone: 000-000-0000
Facsimile: 000-000-0000
Email: xxxxxxxxxx@xxxxxxxxxx.xx
With a copy to:
VETOQUINOL S.A.
Laboratoire Vetoquinol
00, xxx xx Xxxxx Xxxxxx-Xxxx
00000, Xxxxx-Xxxxxxx, Xxxxxx
Attention: Directeur General
Telephone: 000-000-0000-0000
Facsimile: 011-333-8462-5509
Email: xx@xxxxxxxxxx.xxx
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(b) if to a Seller, to
IGI, Inc.
Xxxxx Xxxx & Xxxxxxx Xxxxxx
X.X. Xxx 000
Xxxxx, XX 00000-0000
Attention: Xxxx Xxxxxxx
Telephone: 000-000-0000
Facsimile: 000-000-0000
Email: xxxxxxxxxxx@xxxxxx.xxx
With a copy to:
Xxxx and Xxxx LLP
00 Xxxxx Xxxxxx
Xxxxxx, XX 00000
Attention: Xxxxxxx X. Carp, Esq.
Telephone: 000-000-0000
Facsimile: 617-526-5000
Email: xxxxxxx.xxxx@xxxxxxxx.xxx
6. No Waiver. The failure to enforce at any time any of the
provisions of this Agreement or to require at any time performance by the
other party of any of the provisions hereof shall in no way be construed to
be a waiver of such provisions or to affect the validity of this Agreement,
of any part hereof, or the right of either party thereafter to enforce each
and every such provision in accordance with the terms of this Agreement.
7. Amendment; Interpretation. This Agreement may not be amended
or extended in any respect except by a writing signed by all parties
hereto. The subject matter and language of this Agreement has been the
subject of negotiations between the parties hereto and their respective
counsel, and this Agreement has been jointly prepared by them; accordingly,
this Agreement shall not be construed against any party hereto on the basis
that it was drafted by such party or its counsel.
8. Governing Law; Jurisdiction; Specific Performance.
(a) This Agreement shall be governed by, and construed in
accordance with, the internal laws (and not the law of conflicts) of
the State of New York.
(b) Each party hereto (i) submits to the non-exclusive
jurisdiction of any state or federal court sitting in the State of
New York in any action or proceeding arising out of or relating to
this Agreement, (ii) agrees that all claims in respect of such action
or proceeding may be heard and determined in any such court,
(iii) agrees not to bring any action or proceeding arising out of or
relating to this Agreement in any other court and (iv) WAIVES ANY
RIGHT IT MAY HAVE TO A TRIAL BY JURY WITH RESPECT TO ANY ACTION OR
PROCEEDING ARISING OUT OF OR RELATING TO THIS AGREEMENT OR THE
TRANSACTION AGREEMENTS. Each party hereto hereby waives any defense
of
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inconvenient forum to the maintenance of any action or proceeding so
brought and waives any bond, surety or other security that might be
required to any other party hereto with respect thereto. Any party
hereto may make service on another party hereto by sending or
delivering a copy of the process to the party to be served at the
address and in the manner provided for the giving of notices in
Section 5.2. Nothing in this Section 8(b), however, shall affect the
right of any party hereto to serve legal process in any other manner
permitted by law.
(C) Each of the parties hereto acknowledges that the other
may be irreparably harmed and that there will be no adequate remedy
at law for a violation of any of the covenants or agreements of the
other parties set forth in this Agreement. Accordingly, it is agreed
that, in addition to any other remedies that may be available to a
party upon any such violation, such party shall have the right to
enforce such covenants and agreements by specific performance,
injunctive relief or by any other means available to such party at
law or in equity. Nothing contained in this Section 8(c) shall
release such party from any liability arising from any breach by it
of its representations, warranties, covenants or agreements in this
Agreement.
(d) Each of the Sellers and the Purchaser hereby agrees to
seek confidential treatment of all confidential matters relating to
any suit, claim, action or proceeding brought in any court.
9. Assignment. The Sellers shall not, without the Purchaser's
prior written consent, in any way transfer, assign or otherwise convey
either (i) this Agreement or any of the Sellers duties or obligations
hereunder or (ii) the License Agreement except in either case in connection
with a Change of Control and then only on condition that the assignee
expressly agree in writing delivered to the Purchaser prior to the
consummation of the Change of Control to assume all of the Seller's
obligations hereunder. This Agreement shall be binding upon the parties
and their respective successors and permitted assigns.
IN WITNESS WHEREOF, the parties have caused this Agreement to be
signed by their duly authorized representatives as of the day and year
first above written.
THE SELLERS:
IGI, INC.
By: /s/----------------------
Name:
Title:
IGEN, INC.
By: /s/----------------------
Name:
Title:
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THE PURCHASER:
VETOQUINOL U.S.A., INC.
By: /s/----------------------
Name:
Title:
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