LICENSE AGREEMENT
EXHIBIT 10.2
This License Agreement (“Agreement”) is entered into effective as of August 24, 2012 (the “Effective Date”) by and between Xxxx Research, Inc., a California corporation, and TMD Courses, Inc., a California corporation (collectively, “Licensor”) and Therapeutic Solutions International, Inc., a Nevada corporation (“XXXX”) (each a “Party” and collectively, the “Parties”).
The purpose of identifying two Parties as a single “Licensor” is that in the case of grants of licenses of intellectual property rights, each of the two Parties so grants (and makes all corresponding agreements) to the extent of its right, title and interest (if any) in and to such rights; it is understood that the entire right, title and interest in and to a particular intellectual property right may well belong to only one of such two Parties. Unless Xxxx Research, Inc. otherwise designates, all payments to be made by XXXX hereunder (e.g., Royalties) to “Licensor” shall be made to Xxxx Research, Inc.
In connection with a related Master Dispute Resolution Agreement of even date herewith (“Master Agreement”), and further in connection with the termination (effectuated in Section 2.1 below) of the Exclusive License Agreement dated April 1, 2011, as amended on November 1, 2011, between Licensor and XXXX and of the Exclusive License Agreement dated October 22, 2010, as amended on July 8, 2011, between Licensor and XXXX’x predecessor Splint Decisions, Inc., and for other valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows:
1.1
“Affiliate” means with respect to a Party, any other party directly or indirectly controlling, controlled by or under direct, indirect or common control with, such Party. For the purposes of this definition, “control” means the possession, directly or indirectly, of the power to direct or cause the direction of the management or policies of such Party, whether through the ownership of voting securities, by agreement with respect to the voting of securities, by other agreement conferring control over management or policy decisions, by virtue of the power to control the composition of the board of directors or managers, or otherwise. The terms “controlling” and “controlled” shall have correlative meanings.
1.2
“Core Patents” means (i) U.S. Patent Number 5,513,656, titled “Intraoral semi-custom discluder device” and the inventions and specifications described and claimed therein; (ii) U.S. Patent Number 5,795,150, titled “Intraoral semi-custom discluder device and method” and the inventions and specifications described and claimed therein; (iii) U.S. Patent Number 6,666,212, titled “Intraoral discluder device and method for preventing migraine and tension headaches and temporomandibular disorders” and the inventions and specifications described and claimed therein; (iv) U.S. Patent Number Re 43,459, titled “Intraoral discluder device and method for preventing migraine and tension headaches and temporomandibular disorders” and the inventions and specifications described and claimed therein; and (v) all parents, continuations, continuations-in-part, divisions, extensions, re-examinations and reissues of all of the foregoing.
1.3
“Core Counterparts” means all foreign counterparts of the Core Patents, and all parents, continuations, continuations-in-part, divisions, extensions, re-examinations and reissues of such foreign counterparts.
1.4
“Cover” (including variations thereof such as “Covered,” “Coverage,” or “Covering”) means that the manufacture, use, importation or sale of the product to which such term is being applied would infringe a Valid Claim of an applicable patent in the absence of a grant of rights under such patent. The determination of whether an item is Covered by a Valid Claim shall be made on a country-by-country basis.
1.5
“Escrow Agreement” shall have the meaning set forth in Section 4.2(c).
1.6
“Estimated Minimum Royalties” shall have the meaning set forth in the Escrow Agreement.
1
1.7
“Existing Products” means the intraoral device products marketed by XXXX as of the Effective Date of this Agreement, specifically: (i) standard NTI tension suppression system devices, (ii) standard NTI tension suppression system wide devices, (iii) NTI tension suppression system lower devices, (iv) NTI tension suppression system lower wide devices, (v) NTI tension suppression system upper devices and (vi) NTI tension suppression system auxiliary slider (aka opposing slider) devices. “Existing Products” also includes, but only when the context is in reference to activities in the Foreign Channel of Trade, laboratory-produced products identified as NTI tss Plus or Clench Sleep Inhibitor devices. Provided, that a product that would be within such definition of an Existing Product but only for the fact that it is made from a material other than Lexan 144R-112 or Clear 450® thermoplastic material shall also be considered to be an Existing Product, and a product that would be within such definition of an Existing Product but only for the fact that it is produced from a new mold which seeks, as near as may be, to replicate an Existing Product’s form shall also be considered to be an Existing Product.
1.8
“Field of Use” means commercialization of diagnostic and therapeutic intraoral devices and/or components thereof; provided that, within the United States, the Field of Use specifically excludes the sale of Xxxxxx Products and the sale of Licensed Products in the Xxxxxx Channel of Trade.
1.9
“Foreign Channel of Trade” means sale, directly or through distributors and or laboratories licensed or otherwise authorized by XXXX and which in any event are located outside the United States, of Existing Products to and toward licensed dental professionals and licensed medical professionals who are outside the United States; this excludes, for example, direct-to-consumer sales. (However, for avoidance of doubt, the parties confirm that marketing to non-US consumers is allowed.)
1.10
“Foreign Laboratory Products” means products which would (but for the fact that they are neither manufactured within nor sold to customers within the United States) be within the definition of Xxxxxx Products.
1.11
“Xxxxxx Channel of Trade” means the manufacture and sale by dental laboratories of Xxxxxx Products to dentists, all in the United States.
1.12
“Xxxxxx Field of Use” means, within the dental field in the United States, commercialization of Xxxxxx Products to or toward licensed United States dental professionals.
1.13
“Xxxxxx Products” means those products within the definition set forth in Section 2.5 of the Restatement of Master License Agreement for NTI Plus Network effective April 1, 2008 between Xxxxxx Laboratories, Inc. and NTI-TSS, Inc., which in general consist of certain semi-custom intraoral discluder devices that are manufactured and sold by dental laboratories, in each case, on order pursuant to diagnosis, measurement and prescriptions issued by licensed dentists, and expressly limited to such products manufactured within and sold for use within the United States.
1.14
“Know-How” means (if any) all United States and worldwide know-how, trade secrets, inventions, data, processes, techniques, procedures, devices, methods, formulas, protocols and information, copyrights, works and rights of authorship, mask works and mask work rights, moral rights, database rights, and all other intellectual and industrial property rights related thereto, all to the extent each of the following is true of them: (a) owned by or under the control of the Licensor as of the Effective Date and (b) actually provided to XXXX before the Effective Date of this Agreement, and (c) which are not covered by the Licensed US Patent Rights or the Licensed Foreign Counterparts, but (d) which are necessary or useful for the manufacture, assembly, sale, installation, testing or repair of any Existing Product, and (e) which have not fallen, by virtue of deliberately being delivered by Licensor to third parties in the ordinary course of business without obligation of confidentiality, into the public domain. For the avoidance of doubt, Know-How specifically excludes all patents or patent applications (other than the Licensed US Patent Rights or the Licensed Foreign Counterparts) owned or controlled by Licensor and any patentable subject matter therein.
1.15
“Licensed Foreign Counterparts” means the Core Counterparts and the ‘303 Counterparts.
1.16
“Licensed Marks” means only the word “NTI TSS” and the logo therefor pursuant to Licensor’s United States Trademark Registrations No. 2,761,739 and 2,761,740 respectively, and Licensor’s common law rights solely to the word “NTI TSS” for neuromuscular suppression device for the prevention of migraine pain and associated chronic tension-type headaches, bruxism, and temporomandibular joint syndrome.
1.17
“Licensed Products” means (a) for products sold in the US Channel of Trade, any products which are Existing Products or are made, used, sold or otherwise commercialized using any Know-How (but expressly excluding for avoidance of doubt, Xxxxxx Products) (b) for products sold in the Foreign Channel of Trade, any products which are Existing Products or are made, used, sold or otherwise commercialized using any Know-How, and (c) for products sold in the Foreign Channel of Trade, any products which are Foreign Laboratory Products or are made, used, sold or otherwise commercialized using any Know-How.
2
1.18
“Licensed US Patent Rights” means, collectively, the Core Patents and the ‘303 Patent.
1.19
“Net Sales” means the gross amount invoiced by XXXX and its Affiliates to direct (non-Affiliate) purchasers of Licensed Products or XXXX Merchandise, less:
(a)
Reasonable and customary trade, quantity and cash discounts allowed;
(b)
Rebates, chargebacks, retroactive price adjustments, and any other reasonable allowances which effectively reduce the net selling price (other than such which have already diminished the gross amount invoiced) (not to exceed, in the aggregate with the discounts in clause (a) above, five percent (5%) of the total gross amounts invoiced to all direct purchasers in any calendar year);
(c)
Licensed Product and XXXX Merchandise returns and allowances;
(d)
Shipping, handling, freight, postage, insurance and transportation charges, but all only to the extent included as a separate line item in the gross amount invoiced; and
(e)
Any tax imposed on the sale, delivery or use of the Licensed Product or XXXX Merchandise, including, without limitation, sales, use, excise or value added taxes and customs and duties, but all only to the extent included as a separate line item (e.g., “taxes”) in the gross amount invoiced.
Notwithstanding the foregoing, amounts invoiced by XXXX and its Affiliates for sales of Licensed Products and XXXX Merchandise among XXXX and its Affiliates for resale shall not be included in the computation of Net Sales.
1.20
“Royalties” or “Royalty” means those royalty payments due to Licensor by XXXX pursuant to Section 4.1 below.
1.21
“Sublicensable” means that sublicenses may be granted to the following persons and no others and to the following limited extent only and subject to the terms and limitations set forth in this Agreement: (a) for the Foreign Channel of Trade, to laboratories to make, have made, use, import, offer for sale, sell and have sold Foreign Laboratory Products, under an agreement directly with XXXX, and (b) for the Foreign Channel of Trade, to distributors to use, import, offer for sale, sell and have sold Existing Products, under an agreement directly with XXXX, and (c) for the Foreign Channel of Trade, to entities which are Affiliates of XXXX and under agreement directly with XXXX, provided that such sublicense under this item (c) shall terminate no later than the date such entity ceases to be an Affiliate of XXXX.
1.22
“’303 Patent” means (i) U.S. Patent Application Number 13/029,303, titled “Method and apparatus for diagnosing temporomandibular disorders” and the inventions and specifications described and claimed therein; (ii) any issued U.S. letters patent arising therefrom; and (iii) any parents, continuations, continuations-in-part, divisions, extensions, re-examinations and reissues of all of the foregoing.
1.23
“’303 Counterparts” means all foreign counterparts of the ‘303 Patent, and all parents, continuations, continuations-in-part, divisions, extensions, re-examinations and reissues of such foreign counterparts
1.24
“TSOI Marks” means any proprietary marks used by XXXX to designate an Existing Product, other than a Licensed Xxxx.
1.25
“XXXX Merchandise” means collectively all units of products sold to customers in a bundle or in conjunction with any of the Licensed Products or units of products which are sold to customers specifically for use with the Licensed Products and/or which bear the Licensed Marks, as contemplated herein. Without limitation, “XXXX Merchandise” includes glow boxes.
1.26
“United States” means the 50 states and the District of Columbia.
1.27
“US Channel of Trade” means sale of Existing Products directly to licensed United States dental professionals and licensed United States medical professionals; this excludes, for example, direct-to-consumer sales. Notwithstanding anything herein to the contrary, commercialization of Xxxxxx Products in the Xxxxxx Channel of Trade is expressly excluded from the US Channel of Trade.
3
1.28
“Valid Claim” means a claim in any unexpired, issued patent which has not been irrevocably abandoned or held to be invalid or unenforceable by a non-appealed or unappealable decision of a court or other authority of competent jurisdiction, which is not admitted to be invalid through disclaimer or dedication to the public, and which Covers the Licensed Product.
2.1
Termination of Prior Agreements. All prior license agreements between Licensor (or Xxxxx X. Xxxx), on the one hand, and XXXX or any of XXXX’x predecessors in interest, on the other hand, including, but not limited to, the Exclusive License Agreement dated April 1, 2011, as amended on November 1, 2011, between Licensor and XXXX, the Exclusive License Agreement between Licensor and Splint Decisions, Inc., dated October 22, 2010, as amended, and the Exclusive License (if any) between Licensor and Splint Decisions, Inc. which provided sublicenses to certain pending and provisional patent applications owned by Xxxxx X. Xxxx, specifically, patent applications titled: “A multi-diagnostic, multi-therapeutic one-step mouthpiece system;” “An OTC anti-clenching migraine diagnosing device;” “An external ear canal neural stimulator;” “Adaptable dental-retained flat plane mouthpiece and method of retention;” and “Polycaprolacetone modification of a pre-existing bruxism device,” are hereby terminated.
2.2
3.1
(a)
Licenses through December 31, 2012
(i)
Licensor hereby grants to XXXX an exclusive (except as provided in Section 3.1(a)(iii) below), Royalty-bearing, non-assignable, Sublicensable license (1) in the United States under the Core Patents and the Know-How to make, have made, use, import, offer for sale, sell and have sold Existing Products within the Field of Use in and for the US Channel of Trade; and (2) outside the United States under the Core Counterparts and the Know-How to make, have made, use, import, offer for sale, sell and have sold Existing Products and Foreign Laboratory Products within the Field of Use in and within the Foreign Channel of Trade; and
(ii)
Licensor hereby grants to XXXX a nonexclusive, Royalty-bearing, non-assignable, Sublicensable license (1) in the United States under the ‘303 Patent and the Know-How to make, have made, use, import, offer for sale, sell and have sold Existing Products within the Field of Use in and for the US Channel of Trade; and (2) outside the United States under the ‘303 Counterparts and the Know-How to make, have made, use, import, offer for sale, sell and have sold Existing Products within the Field of Use in and within the Foreign Channel of Trade.
(iii)
Notwithstanding the licenses granted under this Section 3.1(a), Licensor shall during the period from the execution of this Agreement through 11:59 p.m. PST December 31, 2012, have the right to make and have made (but not to use, import, offer for sale, sell and have sold) Existing Products under the Licensed US Patent Rights and Know-How.
(iv)
All licenses under this Section 3.1(a) shall, unless this Agreement has previously been terminated as permitted herein, automatically expire and terminate at 11:59 p.m. PST December 31, 2012, without notice or any other action required.
(b)
Licenses effective on January 1, 2013
(i)
Licensor hereby grants to XXXX, which grant is only effective beginning at 12:01 a.m. PST on January 1, 2013 and thereafter, a non-exclusive, royalty-free, fully-paid-up license (1) in the United States to make and have made Existing Products in the United States under the Licensed US Patent Rights and Know-How only as required to use, import, offer for sale, sell and have sold Existing Products within the Field of Use in and for the Foreign Channel of Trade; and (2) in the United States to sell and offer to sell Existing Products and Foreign Laboratory Products under the Licensed US Patent Rights and Know-How only within the Field of Use in and within the Foreign Channel of Trade; and
4
(ii)
Licensor hereby grants to XXXX, which grant is only effective beginning at 12:01 a.m. PST on January 1, 2013 and thereafter, a non-exclusive, royalty-free, fully-paid-up, Sublicensable license outside the United States under the Licensed Foreign Counterparts and the Know-How to make, have made, use, import, offer for sale, sell and have sold Existing Products and Foreign Laboratory Products within the Field of Use in and within the Foreign Channel of Trade.
(iii)
All licenses under this Section 3.1(b) shall, unless this Agreement is terminated earlier as permitted herein, automatically come into effect at 12:01 a.m. PST on January 1, 2013, without notice or any other action required, and shall continue until and if this Agreement is terminated later as permitted herein.
(iv)
The parties confirm that no license under the Licensed US Patent Rights and Know-How is granted under this Agreement with regard to the US Channel of Trade for any period after 11:59 p.m. PST December 31, 2012 and that XXXX shall have no license to sell, and shall be prohibited from selling, Existing Products to customers located in the United States after 11:59 p.m. PST December 31, 2012.
(v)
The license under Section 3.1(b)(i)(1) is sublicensable only to no more than two US contract manufacturers at any one time (e.g., K Mold and one backup contract manufacturer) for the sole purpose of making Existing Products in the United States under the Licensed US Patent Rights and Know-How only for offer and sale of Existing Products within the Field of Use in and for the Foreign Channel of Trade. The license under Section 3.1(b)(i)(2) is sublicensable only if and to the extent that a license or sublicense of Licensed US Patent Rights and/or Know-How would be necessary for XXXX to engage no more than two US-headquartered entities whose activities for XXXX are limited to acting as a finder or broker for the identification/recruitment of foreign distributors for the Field of Use in and within the Foreign Channel of Trade.
(c)
XXXX acknowledges and agrees that (i) the Licensed US Patent Rights, Licensed Foreign Counterparts and Know-How are and shall remain the sole property of Licensor; and (ii) nothing in this Agreement shall convey to XXXX any right of ownership in the Licensed US Patent Rights, Licensed Foreign Counterparts and Know-How.
(d)
The Parties confirm that pursuant to Section 8.3, the licenses granted in this Section shall terminate upon any termination of this Agreement effected in compliance with Section 8.2.
(e)
The Parties further confirm that the licenses granted in this Section 3.1 may only be assigned if, and to the extent, permitted pursuant to Section 9.10.
3.2
Use of Marks through December 31, 2012.
(a)
Licensor hereby grants to XXXX an exclusive, royalty-free, fully-paid-up, non-assignable, Sublicensable license to use the Licensed Marks to market, sell and have sold Existing Products and XXXX Merchandise within the Field of Use in and for the US Channel of Trade. Licensor hereby grants to XXXX an exclusive, royalty-free, fully-paid-up, non-assignable, Sublicensable license to use the Licensed Marks to market, sell and have sold Existing Products, Foreign Laboratory Products and XXXX Merchandise within the Field of Use in and for the Foreign Channel of Trade. These licenses shall, unless this Agreement has previously been terminated as permitted herein, automatically expire and terminate at 11:59 p.m. PST December 31, 2012, without notice or any other action required
(b)
The Parties further confirm that pursuant to Section 8.3, the licenses granted in this Section shall terminate upon any earlier termination of this Agreement effected in compliance with Section 8.2.
(c)
XXXX covenants not to market, sell or have sold any Existing Products in the Field of Use in the US Channel of Trade under any TSOI Marks or any other marks (other than the Licensed Marks) before 12:00 a.m. PST January 1, 2013. It is a condition of the rights granted under this Agreement that XXXX shall cause all Licensed Products marketed or sold in the US Channel of Trade before 12:00 a.m. PST January 1, 2013 to contain the Licensed Marks.
3.3
Use of Marks on and after January 1, 2013.
(a)
Licensor hereby grants to XXXX a non-exclusive, royalty-free, fully-paid-up, Sublicensable license to use the Licensed Marks to market, sell and have sold Existing Products, Foreign Laboratory Products and XXXX Merchandise within the Field of Use in the Foreign Channel of Trade. All licenses under this Section 3.3 shall, unless this Agreement has previously been terminated as permitted herein, automatically expire and terminate at 11:58 p.m. PST December 31, 2013, without notice or any other action required.
5
(b)
The Parties further confirm that pursuant to Section 8.3, the licenses granted in this Section shall terminate upon any earlier termination of this Agreement effected in compliance with Section 8.2.
(c)
The Parties further confirm that the licenses granted in this Section 3.3 may only be assigned if, and to the extent, permitted pursuant to Section 9.10.
3.4
.
(a)
If any Licensed Products and XXXX Merchandise do contain Licensed Marks, XXXX shall determine the placement of such Licensed Marks within such Licensed Products and XXXX Merchandise subject to the input and approval of Licensor, which shall not be unreasonably withheld or delayed.
(b)
XXXX acknowledges and agrees that (i) the Licensed Marks are and shall remain the sole property of Licensor; (b) nothing in this Agreement shall convey to XXXX any right of ownership in the Licensed Marks; (c) XXXX shall not in any manner take any action that would impair the value of, or goodwill associated with, the Licensed Marks.
(c)
XXXX shall obtain prior approval of Licensor before XXXX’x use of the Licensed Marks with any Licensed Products and XXXX Merchandise, which shall not be unreasonably withheld or delayed; provided however, Licensor hereby consents to the use of the Licensed Marks with the Existing Licensed Products and XXXX Merchandise in a form substantially similar as currently used by XXXX.
3.5
Restrictions Regarding Licensed Marks.
(a)
XXXX agrees that it will never use the Licensed Marks or any confusingly similar name or xxxx in connection with the marketing, sale or distribution of (i) any products outside of the Field of Use, and/or (ii) any other products or services except for the Existing Products and XXXX Merchandise as permitted herein.
(b)
XXXX shall not use the Licensed Marks, Licensor’s name or any confusingly similar name as its corporate name or the name of its business entity, or as a formal “dba” or fictitious business name.
3.6
Protection of Licensor’s Rights regarding Licensed Marks and Licensed US Patent Rights and Licensed Foreign Counterparts. XXXX shall not challenge or otherwise contest (a) the validity, ownership or enforceability of the Licensed US Patent Rights, the Licensed Foreign Counterparts or the Licensed Marks; (b) any of Licensor’s current or subsequent registrations or applications for registration of the Licensed US Patent Rights, the Licensed Foreign Counterparts or the Licensed Marks; or (c) Licensor’s exclusive right to own and register the Licensed US Patent Rights, the Licensed Foreign Counterparts or the Licensed Marks. XXXX shall not directly or indirectly apply for or attempt to register for itself or others the Licensed Marks or any similar logos
.
3.7
.
3.8
3.9
6
4.1
(a)
Subject to Section 4.1(b) below, XXXX shall pay to Licensor, as Royalties, 30% of Net Sales which are attributable to the period ending at 11:59 p.m. PST on December 31, 2012, according to generally accepted accounting principles as applied in the United States.
(b)
Should no Licensed Foreign Counterparts exist with respect to a particular country, the Royalties with respect to the affected country shall be reduced by 30% of the amount otherwise due under Section 4.1(a). The Parties agree that the above reduction reflects the value in such country of lack of patent rights relative to the other Know-How and Licensed Marks being licensed hereunder.
4.2
(a)
Royalties shall be paid to Licensor (i) on or before the 30th day after the end of each calendar month, and (ii) and, if later, on or before the 30th day following the effective date of any termination of this Agreement, covering the last month during which termination of this Agreement took place.
(b)
Whenever any payment hereunder shall be stated to be due on a day which is not a business day, such payment shall be made on the immediately succeeding business day.
(c)
Subject to subsections (d), (e) and (f) of this Section 4.2, the Parties agree that payments of Estimated Minimum Royalties to Chicago Title Company, as escrow agent, pursuant to an Escrow Agreement of even date herewith among Xxxxx X. Xxxx, XXXX and Chicago Title Company (the “Escrow Agreement”), shall be deemed to be payments of Royalties when and as so delivered to escrow, just as if XXXX had on the same day delivered the same amount to Licensor directly.
(d)
Notwithstanding Section 4.2(c), in the event Royalties due for a month exceed the Estimated Minimum Royalties amount for such month, XXXX shall timely pay the entire amount of the Royalties due hereunder by timely paying the Estimated Minimum Royalties amount to the escrow agent and also timely paying the excess directly to Licensor.
(e)
The Parties acknowledge that due to the Estimated Minimum Royalties regime or for any other reason, the aggregate amount actually paid by XXXX for Royalties for Net Sales attributable to the months of July through December 2012, inclusive, may be less than the actual Royalties calculated pursuant to Section 4.1. In such event, XXXX shall “true up” any underpayment by paying the underpaid amount to Licensor on or before the 30th day of the month immediately following the month in which such Royalties were earned (without deduction or setoff of any kind). The Parties further acknowledge that the Estimated Minimum Royalties are the minimum Royalties payable under this Section 4.2 and in no event shall Licensor be required to “true up” any excess payment of Estimated Minimum Royalties over the actual Royalties calculated pursuant to Section 4.1.
(f)
This Section shall not be construed to deprive Licensor of any rights or remedies Licensor may have under this Agreement in respect of any failure by XXXX to pay timely all Royalties as and when due under this Agreement.
4.3
4.4
4.5
Currency. All payments to Licensor shall be in United States Dollars.
7
4.6
5.1
(a)
Licensor shall be solely responsible for, at its own expense and in its sole discretion, prosecuting and maintaining the Licensed US Patent Rights. Licensor has no obligation to XXXX to prosecute or maintain such patents and patent applications, except that Licensor shall use reasonable commercial efforts to maintain the Licensed US Patents through December 31, 2012.
(b)
Licensor shall have the initial right (but not the obligation) to prosecute and maintain any and all Licensed Foreign Counterparts. XXXX shall reimburse Licensor, within 30 days of the date of Licensor’s invoice setting forth such costs and expenses, for 50% of the documented out-of-pocket costs and expenses of prosecuting and maintaining (after the Effective Date) Licensed Foreign Counterparts under this subsection (b). Licensor has no obligation to XXXX to prosecute or maintain the Licensed Foreign Counterparts, but shall, in a timely manner, keep XXXX apprised of what Licensor is doing (and not doing) in regard to prosecuting and maintaining the Licensed Foreign Counterparts.
(c)
If Licensor has not, by the 60th day before the deadline date for taking a relevant Licensed Foreign Counterpart prosecution or maintenance action, taken such relevant Licensed Foreign Counterpart prosecution or maintenance action, then within such 60 days XXXX shall have the right (but not the obligation) to give written notice to Licensor that XXXX is taking over the prosecution and maintenance of such Licensed Foreign Counterpart and thereupon and thereafter XXXX shall have the sole right (but not the obligation) to prosecute and maintain such Licensed Foreign Counterpart. BR shall reimburse XXXX, within 30 days of the date of XXXX’x invoice setting forth such costs and expenses, for 50% of the documented out-of-pocket costs and expenses of prosecuting and maintaining Licensed Foreign Counterparts under this subsection (c). If XXXX takes over the prosecution and maintenance of a Licensed Foreign Counterpart under this subsection (c), Licensor shall have no further right to prosecute and maintain such Licensed Foreign Counterpart.
(d)
Licensor shall within 30 days of the date of XXXX’x invoice setting forth such costs and expenses reimburse XXXX for 50% of the documented out-of-pocket costs and expenses incurred after July 1, 2012 but before the Effective Date for filing national stage applications (as directed by Licensor) with respect to PCT Patent Application Number US2011/025290. If XXXX has accrued but not paid such out-of-pocket costs and expenses incurred after July 1, 2012 but before the Effective Date, then Licensor shall pay them, subject to later reimbursement (within 30 days of the date of Licensor’s invoice setting forth such costs and expenses) from XXXX for 50% of such out-of-pocket costs and expenses as contemplated by subsection (b).
(e)
Licensor shall within 30 days of the date of XXXX’x invoice setting forth such costs and expenses reimburse XXXX for 100% of the documented out-of-pocket costs and expenses incurred after July 1, 2012 but before the Effective Date for filing national stage applications (as directed by Licensor) with respect to PCT Patent Application Number US2011/024231. If XXXX has accrued but not paid such out-of-pocket costs and expenses incurred after July 1, 2012 but before the Effective Date, then Licensor shall pay them.
5.2
8
6.1
Infringement by Third Parties.
(a)
Each Party shall promptly notify the other Parties in writing of any actual or threatened infringement, misappropriation or other violation by a Third Party of (i) during the period ending at 11:59 p.m. PST on December 31, 2012, any Licensed US Patent Rights, and (ii) during the term of this Agreement, any Licensed Foreign Counterparts (collectively, “Third Party Infringement”) of which it becomes aware.
(b)
If the Third Party Infringement is in the United States, BR shall have the sole right (but not the obligation), at its own expense, to initiate and control any action to enforce the Licensed US Patent Rights against such Third Party Infringement and may name XXXX as a party plaintiff solely to the extent required to maintain standing, provided, however, BR shall reimburse XXXX for any costs or court damages incurred by XXXX as a direct result of such naming. Any recoveries resulting from an action under this subsection (b) (including any recoveries resulting from settlement) shall be for the sole benefit of Licensor.
(c)
If the Third Party Infringement is outside the United States, BR shall have the initial right (but not the obligation) to initiate and control any action to enforce the Licensed Foreign Counterparts against such Third Party Infringement and may name XXXX as a party plaintiff solely to the extent required to maintain standing, provided, however, BR shall reimburse XXXX for any such costs or court damages incurred by XXXX as a direct result of such naming. Before commencing an action, BR and XXXX shall consult with each other and give consideration to the other Party’s recommendations regarding the proposed action. XXXX shall reimburse BR for 50% of the documented out-of-pocket costs and expenses of an action under this subsection (c). Any recoveries resulting from an action under this subsection (c) (including any recoveries resulting from settlement) shall, after reimbursing BR and XXXX for the documented out-of-pocket costs and expenses of the action under this subsection (c), be 50% for the benefit of Licensor and 50% for the benefit of XXXX.
(d)
If the Third Party Infringement is outside the United States and BR does not obtain agreement from the alleged infringer to desist or fails to initiate an infringement action within: (i) 60 days following receipt of notice of the alleged infringement (120 days if BR is in active negotiations with such infringer), or (ii) 30 days before the expiration date for filing such actions, whichever comes first, XXXX shall have the right (but not the obligation) to initiate and control an action to enforce the Licensed Foreign Counterparts against such Third Party Infringement at its sole expense and may name BR as a party plaintiff solely to the extent required to maintain standing; provided, however, XXXX shall reimburse BR for any costs or court damages incurred by BR as a direct result of such naming. Before commencing an action, BR and XXXX shall consult with each other and give consideration to the other Party’s recommendations regarding the proposed action. If XXXX initiates an action under this subsection (d), Licensor shall have no further right to initiate an action under Section 6.1(c) with respect to such Third Party Infringement and, during the period in which XXXX maintains such action under this subsection (d), Licensor shall not enter into a license of the Licensed Foreign Counterparts to such alleged infringer. XXXX shall keep BR reasonably informed of all material developments in any action instituted under this subsection (d). XXXX shall give BR timely notice of any proposed settlement of any such action instituted by XXXX under this subsection (d) and shall not, without the prior written consent of BR, enter into any settlement that would: (i) adversely affect the validity, enforceability or scope of any of the Licensed Foreign Counterparts, (ii) give rise to liability of BR or its Affiliates, (iii) admit non-infringement of any Licensed Foreign Counterparts, or (iv) otherwise impair BR’s rights in any Licensed Foreign Counterparts or under this Agreement. Any recoveries resulting from an action under this subsection (d) (including any recoveries resulting from settlement) shall be for the sole benefit of XXXX.
6.2
ARTICLE 7. LIMITATION OF RIGHTS AND ALLOCATION OF RISKS
7.1
Field Limitations. XXXX shall not knowingly sell Licensed Products to any prospective purchaser outside the Field of Use, or (through December 31, 2012) within neither US Channel of Trade nor the Foreign Channel of Trade, or (from and after January 1, 2013) outside the Foreign Channel of Trade. XXXX shall not knowingly sell any Licensed Products or parts thereof in the Xxxxxx Channel of Trade.
9
7.2
7.3
7.4
7.5
Disclaimer of Warranties. LICENSOR HEREBY DISCLAIMS ALL GUARANTEES AND WARRANTIES, EXPRESS OR IMPLIED WITH RESPECT TO THE LICENSED U.S. PATENT RIGHTS, LICENSED FOREIGN COUNTERPARTS AND LICENSED MARKS
ARTICLE 8. TERM AND TERMINATION
8.1
8.2
(a)
XXXX shall be deemed to be in default under this Agreement in the event (i) XXXX fails to timely pay to Licensor any Royalties hereunder (or fails to pay any amounts required by Section 3 of the Escrow Agreement by the respective deadlines set forth in such Section 3); (ii) XXXX materially breaches any other material provision of this Agreement; (iii) XXXX materially breaches any material provision of the Master Agreement; (iv) XXXX files a petition in bankruptcy, has a petition filed against it regarding bankruptcy which is not dismissed within 60 days, is adjudicated bankrupt, or makes any assignment for the benefit of creditors that has a material adverse affect on XXXX’x ability to perform under this Agreement; and/or (v) XXXX ceases to operate or continuously engage in business. In the event of a default as defined in this Section 8.2(a), Licensor shall notify XXXX in writing of such default and require XXXX to cure such default, within 15 days of the date of such notice for any defaults under (i) above; or within 30 days of the date of such notice for defaults under (ii) or (iii) above. If XXXX fails to cure such default within the applicable cure period, Licensor shall have the right to immediately terminate this Agreement. Any default under (iv) or (v) above shall be deemed non-curable and termination shall be immediate upon Licensor’s notice.
(b)
Licensor shall be permitted to terminate this Agreement, upon written notice to XXXX, in the event that XXXX fails to cure, within 30 days after written demand to cure, any violation of its obligations hereunder which violation (together with any previous violations) materially endangers the general enforceability of the Licensed US Patent Rights in the United States.
8.3
8.4
10
9.1
9.2
9.3
9.4
9.5
Governing Law. This Agreement shall be governed by, and interpreted and enforced under, the laws of the State of California, without application of its conflicts or choice of law rules. Subject to Section 9.21, all Parties irrevocably submit to the exclusive jurisdiction of the state and federal courts located in San Diego County, California for any action or proceeding regarding this Agreement, and all Parties waive any right to object to the exclusive jurisdiction or venue of the courts located in San Diego County, California or to assert that such courts are an inconvenient forum.
9.6
9.7
9.8
11
9.9
If to any person constituting Licensor:
7060 Via del Charro [to be used only for notices sent by hand courier or overnight air courier service]
X.X. Xxx 0000 [to be used only for notices sent by first class, registered or certified mail]
Xxxxxx Xxxxx Xx, Xxxxxxxxxx 00000-0000
Email: xxxxxxxxxx@xxxxx.xxx
If to XXXX:
0000 Xxxxxxxxx Xxxx., Xxxxx X
Xxxxxxxxx, Xxxxxxxxxx 00000
Attn: President
Email: xxxxxxxx@xxxxxxxxxxxxxxxxxxxxxxx.xxx
9.10
9.11
9.12
9.13
9.14
12
9.15
9.16
Time. Time is of the essence as to each provision of this Agreement.
9.17
9.18
9.19
9.20
9.21
Section 36.20 of the Master Agreement is incorporated herein by reference.
9.22
[Remainder of page intentionally left blank; signature page to follow.]
13
IN WITNESS WHEREOF, the Parties have executed this License Agreement on and as of the Effective Date.
XXXX RESEARCH, INC.
By: /s/ Xxxxx X. Xxxx
Name: Xxxxx X. Xxxx
Title: CEO | THERAPEUTIC SOLUTIONS INTERNATIONAL, INC.
By: /s/ Xxx X. Xxxxx
Name: Xxx X. Xxxxx
Title: President |
TMD COURSES, INC.
By: /s/ Xxxxx X. Xxxx
Name: Xxxxx X. Xxxx
Title: CEO |
|
14