EXHIBIT 10.30
LICENSE AGREEMENT
This License Agreement ("Agreement") is made and entered into as of the 31st day
of March, 2000, by and between Martek Biosciences Corporation, a Delaware
corporation ("Licensor"), and Xxxxxx Laboratories, an Illinois corporation,
("Licensee").
WITNESSETH:
WHEREAS, Licensor has developed certain technology relating to the use of
Omega-3 and Omega-6 long-chain polyunsaturated fatty acid-containing
triglycerides for incorporation into infant formula;
WHEREAS, Licensee and its affiliates are in the business of developing,
manufacturing and marketing infant nutritional products; and
WHEREAS, Licensee desires to obtain a non-exclusive license from Licensor to use
the Technology and Licensor is willing to grant such license subject to the
conditions and pursuant to the terms set forth in this Agreement.
NOW, THEREFORE, in consideration of the premises and of the mutual covenants of
the parties hereto, each party hereby agrees with the other as follows:
ARTICLE I
DEFINITIONS
Section 1.1. "Affiliate" shall mean any person, corporation, firm, partnership
or other entity which directly or indirectly owns Licensee, is owned by Licensee
or is owned by a party which owns Licensee to the extent that the owning entity
has in excess of 50% of the equity having the power to vote on or direct the
affairs of the owned entity.
Section 1.2. "Infant Formula Product" shall mean a breast milk substitute
formulated industrially in accordance with applicable Codex Alimentarius and
United States Food and Drug Administration standards (i) to satisfy the total
normal nutritional requirements of infants from birth up to between four and six
months of age and adapted to their physiological characteristics or fed in
addition to other foods to infants up to approximately one year of age and older
or (ii) to satisfy the normal nutritional requirements of infants born
prematurely.
Section 1.3. "Licensed Patents" shall mean the patents and patent applications
attached hereto as Exhibit 1 and all other patents and patent applications in
the Territory owned by Licensor or licensed to Licensor (with the right to
sublicense) which cover the Technology, including all patents and patent
applications covering inventions, improvements or modifications conceived or
developed and owned by or licensed to Licensor (with the right to sublicense)
during the term of this Agreement and included in the Technology, and all
divisionals, continuations, continuations-in-part, reexaminations and extensions
thereof.
Section 1.4. "Licensee Product" shall mean any product (i) which is an Infant
Formula Product, (ii) which is developed by or for Licensee or its Affiliates,
and (iii) *.
Section 1.5. "Martek Products" shall mean triglycerides containing Omega-3
and/or Omega-6 long-chain polyunsaturated fatty acids produced by or for Martek,
by microbial fermentation according to the Technology and Licensed Patents.
Section 1.6 "Supply Agreement" shall mean a definitive agreement between
Licensor and Licensee, which shall set forth the terms and conditions under
which Licensor shall sell and Licensee shall purchase Martek Products. Such
Supply Agreement may pertain only to Martek Products containing arachidonic acid
("ARA Supply Agreement"), or only to Martek Products containing docosahexaenoic
acid ("DHA Supply Agreement"), or to both types of Martek Products.
Section 1.7. "Technology" shall mean the organisms, microorganisms,
specifications, biological materials, designs, formulae, processes, standards,
data, trade secrets, know-how and technology relating to the development and
production of the Martek Product, Martek's proprietary practice of incorporating
triglycerides containing Omega-3 and/or Omega-6 long-chain polyunsaturated fatty
acids, and Licensor's proprietary process by which triglycerides containing
Omega-3 and/or Omega-6 long-chain polyunsaturated fatty acids are manufactured,
purified and incorporated, into Infant Formula Products, and any modifications,
improvements, and enhancements to any of the foregoing made by Licensor, which
are proprietary to Licensor and which, in Licensor's and Licensee's mutual
opinion expressed in writing, is or are necessary or useful in the production
and development of the Martek Product.
Section 1.8. "Territory" *.
Section 1.9. "Third Party" shall mean any party other than Licensor, Licensee
and Affiliates.
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
Section 1.10 "Trademark(s)" shall mean the Licensor trademarks FORMULAID,
NEUROMINS, DHASCO and ARASCO. Exhibit 2 attached hereto sets forth the
Trademarks as of the date of this Agreement.
Section 1.11 "Unit of Martek Product" shall mean that quantity of Martek Product
containing one (1) kilogram of docosahexaenoic acid or one kilogram of
arachidonic acid.
ARTICLE II
GRANT OF LICENSE AND OTHER RIGHTS
Section 2.1. License. Licensor hereby grants to Licensee, under the Licensed
Patents, the Technology, and Licensor's other proprietary rights, for the term
of this Agreement and subject to the conditions of this Agreement, a
non-exclusive right and license, in the Territory, (i) to use, * triglycerides
containing Omega-3 and/ or Omega-6 long-chain polyunsaturated fatty acids for
the production of the Licensee Product, (ii) to use the Martek Products for
purposes of producing the Licensee Product; and (iii) the right to use, market,
import, export, distribute, offer for sale and sell the Licensee Product.
Section 2.2 Sublicense. Licensor hereby grants to Licensee, under the Licensed
Patents, the Technology, and Licensor's other proprietary rights, for the term
of this Agreement and subject to the conditions of this Agreement, a
non-exclusive right, in the Territory, to grant non-exclusive, non-transferable
sublicenses to:
(i) Affiliates to enjoy the rights set forth in Section 2.1(i)-(iii);
(ii) *
(iii) *
provided that each such Affiliate * shall be subject to confidentiality
obligations at least as stringent as those set forth in Article XI of this
Agreement.
Section 2.3 *
(i) *
(ii) *
(iii) *
Licensee shall use due diligence in working with Licensor in good faith to
satisfy the conditions set forth in Section 2.3(i), (ii), and (iii) above. The
parties agree that nothing * in this Section 2.3 shall obligate Licensee to
enter into any DHA Supply Agreement, nor to purchase any Martek Products from
Licensor or any Third-Party licensee of Licensor, which contain docosahexaenoic
acid.
Section 2.4. Licenses to Third Parties
(i) Licenses to Third Parties Generally * Licensor further represents to
Licensee that Licensor has not, prior to the effective date of this Agreement,
granted a license to any Third Party for the incorporation of the Martek
Products into, or for the use of the Technology or the Licensed Patents for the
production of, an Infant Formula Product *
(ii) Production of the Martek Products. If the conditions set forth in Section
2.3(i), (ii), and (iii) above are satisfied, the parties shall negotiate in good
faith to enter into the ARA Supply Agreement. In addition, if Licensee elects,
at Licensee's sole discretion, to obtain Martek Products containing
docosahexaenoic acid from Licensor, the parties shall negotiate in good faith to
enter into the DHA Supply Agreement. Such Supply Agreement(s) shall govern in
case of any conflict between this Agreement and such Supply Agreement(s)
relating to the supply of the relevant Martek Product(s) to Abbott, and shall
include a provision that Licensor shall use reasonable efforts to produce the
Martek Products itself, or through a Third Party whether or not pursuant to
another licensing agreement, *.
(iii) * In the event Licensor and Licensee enter into a Supply Agreement
(whether an ARA Supply Agreement, a DHA Supply Agreement, or both) * commencing
on the first anniversary of the first delivery of Martek Product to Licensee.
(iv) Transfer of Martek Products. Nothing in this Section 2.4 or in this
Agreement shall be construed to permit Licensee or its Affiliates to sub-license
the Martek Products or the Technology, except as expressly set forth in Section
2.2 above, or otherwise unilaterally to transfer to any Third Party the Martek
Products or the Technology except as the same are incorporated into or used in
the manufacture of the Licensee Product.
Section 2.5 Sublicensing. The grants to Licensee under this Article II shall not
include the right to grant sublicenses, except as expressly set forth in Section
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
2.2 above.
Section 2.6. Trademarks. In addition to the license granted hereunder relating
to the Martek Products and the Technology, Licensor hereby grants to Licensee
the non-exclusive, right and license to use the Trademarks solely on and in
connection with the sale of any Licensee Product that contains a Martek Product,
with the further agreement that Licensee may elect to so use the Trademarks at
Licensee's sole discretion. If Licensee so uses the Trademarks, the rights
granted in this Section 2.6 shall be subject to the following terms and
conditions:
(i) Licensee shall not use the Trademarks as or part of its corporate or
business name or the name of any business entity which is controlled by it,
whether an Affiliate or otherwise.
(ii) Licensee and its Affiliates shall have no right to sublicense to Third
Parties any of the rights in the Trademarks conveyed hereunder.
(iii) Licensee and its Affiliates shall not affix or use the Trademarks on any
product other than a Licensee Product that contains a Martek Product.
(iv) Licensee recognizes and acknowledges Licensor's ownership of the Trademarks
and Licensor's intent to protect the Trademarks in the Territory. * All use by
Licensee or its Affiliates of the Trademarks in the Territory shall inure to the
benefit of Licensor, and Licensee and its Affiliates shall make no use or apply
for any registration thereof except as permitted by this Agreement. Upon
reasonable request by Licensor and at Licensor's expense, Licensee shall assist
Licensor, including execution of appropriate documents, in effectuating,
registering, and otherwise maintaining Licensor's rights in the Trademarks.
Nothing in this Agreement shall be construed so as to require Licensor to take
any actions or measures to protect or secure any rights in or obtain or apply
for registration of the Trademarks.
(v) Licensee covenants that to the extent that any Trademark is, or Licensor
notifies Licensee that any Trademark has been registered in any jurisdiction in
the Territory, Licensee will use the trademark registration symbol (R) at least
one time per label, labeling or packaging of the Licensee Product that contains
a Martek Product or on the labels, labeling or packaging thereof and on all
material originating with Licensee or its Affiliates and used to promote the
sale of any Licensee Product that contains a Martek Product in the applicable
jurisdiction, and the following legend prominently shall appear at least once in
each such Licensee Product or material in each such jurisdiction: [Trademark](R)
is a registered trademark of Martek Biosciences Corporation." Until such time as
Licensor obtains a Registration on any Trademark in a particular jurisdiction,
Licensee shall substitute the symbol "TM" in place of the symbol (R) as
specified herein in such jurisdiction.
(vi) Licensee covenants that Licensee Products that contain any Martek Product
manufactured for and by it and sold by it under the Trademarks shall be of as
high a quality as like other products sold by Licensee. *
(vii) Licensee shall advise Licensor of any infringement of any Trademark of
which it or its Affiliates becomes aware, but Licensee and its Affiliates shall
not bring any action with respect to any such infringement without Licensor's
prior written consent. *
(viii) Nothing in this Section 2.6 or in this Agreement shall be construed to
require Licensee or its Affiliates to use any of the Trademarks on the Licensee
Product or on the labels, labeling or packaging thereof or on materials used to
promote the sale of the Licensee Product.
Section 2.7. *
ARTICLE III
TERM AND CANCELLATION
Section 3.1. Term. This Agreement shall commence on the date first written above
and, unless earlier terminated pursuant to another Section of this Article III,
shall terminate as to each country in the Territory in which a Licensee Product
is sold, *
Section 3.2. Material Breach; Opportunity to Cure. Either party to this
Agreement may terminate this Agreement upon forty-five (45) days written notice
if the other party shall commit a material breach of this Agreement and shall
not cure such breach within such forty-five (45) day period, provided that if
the allegedly breaching party in good faith initiates an Alternative Dispute
Resolution ("ADR") procedure pursuant to Section 12.1 below and Exhibit 3
attached to this Agreement, relating to such alleged breach or cure, during such
forty-five (45) day period, and if the ADR procedure results in a finding that
such breach was committed and that such breach was not cured, then termination
shall be effective forty-five (45) days after the date of the ADR finding,
unless such breach is cured within such second forty-five (45) day period.
Section 3.3. Termination in Case of Infringement. Licensee shall have the right
to terminate this Agreement in a particular country within the Territory if a
court or other tribunal of competent jurisdiction determines by final order that
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
the Technology or any of the Martek Products infringes upon the patent or other
proprietary rights of any Third Party in such country; provided, however, that
if, prior to any such termination, Licensor develops a non-infringing
alternative or obtains a license from such Third Party, such that Licensee could
lawfully use the Technology and/ or Martek Products (as the case may be) in
connection with the Licensee Products at no additional cost or expense to
Licensee beyond that expressly provided in this Agreement, Licensee shall not
terminate this Agreement.
Section 3.4 Termination by Licensee. Licensee shall have the right to terminate
this Agreement of its own volition upon ninety (90) days prior written notice to
Licensor, provided that such termination shall be effective no earlier than the
first anniversary of the date upon which Licensee made the payments to Licensor
as required under Section 4.1(i) below.
Section 3.5. Sale of Inventory upon Termination. Effective upon the date of
termination of this Agreement (country-by-country or in whole, as the case may
be), Licensee and its Affiliates shall cease manufacturing the Licensee Product;
provided, however, that, Licensee and its Affiliates may continue to distribute
the Licensee Products manufactured by or for Licensee prior to such date if, to
the extent lawful, Licensee continues to pay the Royalty under Section 4.1(iii)
with respect to such Licensee Products and otherwise continues to comply with
the terms and conditions of this Agreement. Notwithstanding the preceding
sentence, upon the earlier to occur of (i) the sale by Licensee and its
Affiliates of all of their inventory of Licensee Products manufactured prior to
the date of the termination of this Agreement or (ii) the date which is six
months after the date of the termination of this Agreement, Licensee and its
Affiliates shall cease all use of the Technology, sale of the Licensee Product
and use of the Trademark. This Section 3.5 shall not apply in the event this
Agreement expires pursuant to Section 3.1 of this Agreement.
Section 3.6. Other Rights and Remedies.
(i) Unless another provision of this Agreement specifically provides to the
contrary, the rights of termination as herein provided shall be in addition to
all other rights and remedies which either party may have to enforce this
Agreement or to secure damages for the breach hereof, and the exercise of any
right of termination as herein provided by either party shall not relieve the
other of any of its obligations under this Agreement accruing prior to the
effective date of termination, including, but not limited to, the obligation to
pay fees and Royalties pursuant to Section 4.1 or to render reports with respect
thereto.
(ii) In no event shall either party be liable to the other for any indirect or
consequential damages, including but not limited to loss of profits or business
opportunity, whether in connection with the termination of this Agreement or any
Supply Agreement, the breach hereof or thereof, or any other basis upon which
one party may seek remedies against the other.
ARTICLE IV
PAYMENTS BY LICENSEE
Section 4.1. Fees and Royalties. Licensee shall compensate Licensor for the
license and other rights granted hereby and services provided hereunder, in
United States Dollars, as follows:
(i) *
(ii) *
(iii) *
(iv) *
(v) (A) *
(v) (B) *
(vi) *
Section 4.2. Manner of Royalty Payment. All Royalty payments with respect to
each Licensee Product sold shall be made quarterly, within sixty days of the
close of each of Licensee's three month and annual accounting periods, based on
Licensee's fiscal year, with respect to Licensee's and its Affiliates' sales
occurring during such quarters, at Licensor's office as set forth below.
Quarterly royalty payments shall be made in U.S. Dollars at the sales price
applicable thereto if in U.S. Dollars or, if in another currency, such quarterly
royalty payments shall be the sum of royalties due for the three (3) months of
the applicable quarter calculated for each such month using the beginning and
ending month's published exchange rate, set one business day prior to month end,
by Reuters divided by two (if a Reuters exchange rate is not available for
certain countries, an exchange rate established by a recognized third party will
be used).
Section 4.3. Reimbursement of Expenses. Licensee agrees to pay to Licensor, in
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
addition to the amounts specified in Section 4.1 above, all reasonable,
verifiable traveling, living and out-of-pocket expenses, approved in advance in
writing by Licensee, for services rendered by Licensor outside of the states of
Maryland and Kentucky and requested by Licensee pursuant to Section 2.7 of this
Agreement.
Section 4.4. Commercialization and Other Expenses. Licensee and its Affiliates
shall pay all expenses for the commercialization of the Licensee Product. *
ARTICLE V
REPRESENTATIONS AND WARRANTIES
Section 5.1. Licensor's Representations and Warranties. Licensor represents and
warrants to the Licensee as follows:
(i) Exhibit 1 sets forth a complete and accurate list of the Licensed Patents as
of the date of this Agreement.
(ii) Licensor has all necessary corporate power and authority to enter into this
Agreement, perform its obligations hereunder and license the Technology, the
Licensed Patents and the Martek Products pursuant to the terms of this
Agreement. Licensor's performance under this Agreement does not conflict with
any other contract to which Licensor is bound.
(iii) Licensor has, prior to the date of this Agreement, provided Licensee with
a list of all Third Party patents and/ or patent applications related to the
Technology which are known to Licensor.
(iv) It is Licensor's belief as of the date of this Agreement, that no Third
Party patents are infringed by manufacture or sale, in the Territory, of the
Martek Products.
Section 5.2. DISCLAIMERS.
(i) LICENSOR HEREBY DISCLAIMS ANY WARRANTY OF MERCHANTABILITY OR FITNESS FOR A
PARTICULAR PURPOSE RELATING TO THE MARTEK PRODUCTS OR THE TECHNOLOGY AND ANY
OTHER WARRANTY OR WARRANTIES RELATING THERETO AND NOT EXPRESSLY SET FORTH IN
THIS AGREEMENT. LICENSOR MAKES NO REPRESENTATIONS OR WARRANTIES AND HAS NO DUTY
TO ENSURE THAT THE TECHNOLOGY OR THE MARTEK PRODUCTS ARE USABLE WITH THE
LICENSEE PRODUCT OR THAT THE TECHNOLOGY OR THE MARTEK PRODUCTS ARE SAFE OR CAN
BE INCORPORATED SAFELY INTO THE LICENSEE PRODUCT. IT IS HEREBY ACKNOWLEDGED AND
AGREED THAT IT SHALL BE LICENSEE'S RIGHT AND OBLIGATION TO DETERMINE THE SAFETY
AND UTILITY OF EACH MARTEK PRODUCT AS IT RELATES TO LICENSEE PRODUCTS.
(ii) LICENSOR DISCLAIMS AND SHALL NOT BE LIABLE FOR ANY DAMAGES OF ANY NATURE
RESULTING OR ARISING FROM OR RELATING TO (A) THE USE, MANUFACTURE, DISTRIBUTION,
MARKETING, OR SALE BY LICENSEE, ITS AFFILIATES OR ANY THIRD PARTY OF THE
TECHNOLOGY, THE MARTEK PRODUCTS OR THE LICENSEE PRODUCT, OR (B) ANY IMPROVEMENTS
OR MODIFICATIONS TO THE TECHNOLOGY, THE MARTEK PRODUCTS OR THE LICENSEE PRODUCT
WHICH ARE NOT MADE BY AND PROPRIETARY TO LICENSOR, UNLESS THE LIABILITY RESULTS
FROM (X) LICENSOR'S FAILURE TO PERFORM ITS OBLIGATIONS UNDER THIS AGREEMENT OR
(Y) IF LICENSEE ELECTS TO OBTAIN ANY MARTEK PRODUCT FROM LICENSOR, LICENSOR'S
FAILURE TO MANUFACTURE THE MARTEK PRODUCT IN ACCORDANCE WITH SPECIFICATIONS
MUTUALLY AGREED TO BETWEEN LICENSOR AND LICENSEE UNDER THE SUPPLY AGREEMENT.
(iii) LICENSOR HEREBY DISCLAIMS ANY WARRANTY THAT THE TECHNOLOGY OR THE LICENSED
PATENTS ARE FREE FROM INFRINGEMENT BY THIRD PARTIES, EXCEPT AS SET FORTH IN
SUBSECTION 5.1. LICENSOR FURTHER DISCLAIMS ANY WARRANTY RELATING TO THE
PATENTABILITY OF, OR THE VALIDITY OF ANY PATENTS RELATING TO, THE TECHNOLOGY OR
THE MARTEK PRODUCTS AND MAKES NO REPRESENTATIONS WHATSOEVER WITH REGARD TO THE
SCOPE OF ANY SUCH PATENTS OR, EXCEPT AS SET FORTH IN SUBSECTION 5.1, THAT SUCH
PATENTS MAY BE COMMERCIALLY EXPLOITED WITHOUT INFRINGING OTHER PATENTS. LICENSOR
HEREBY DISCLAIMS ANY WARRANTIES WITH REGARD TO THE VALIDITY OR USE OF THE
TRADEMARKS AND MAKES NO REPRESENTATIONS WHATSOEVER WITH REGARD TO THE SCOPE OF
ANY OF THE TRADEMARKS.
Section 5.3 Licensee's Representations and Warranties. Licensee represents and
warrants to the Licensor as follows:
(i) The execution and delivery of this Agreement and the performance by Licensee
of the transactions contemplated hereby have been duly authorized by all
necessary corporate actions.
(ii) The performance by Licensee of any of the terms and conditions of this
Agreement will not constitute a breach or violation of any other agreement or
understanding, written or oral, to which it or its Affiliates is a party.
ARTICLE VI
LICENSEE'S COVENANTS
Section 6.1. Compliance with Law; Regulatory Approval. Licensee covenants and
agrees that it and its Affiliates shall conduct all of their operations dealing
with the Technology, the Martek Products and the Licensee Product in material
compliance with all applicable laws, regulations and other requirements which
may be in effect from time to time, of all national governmental authorities,
and of all states, municipalities and other political subdivisions and agencies
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
thereof, including, without limiting the generality of the foregoing, the Infant
Formula Act of 1980, the Federal Food, Drug, and Cosmetic Act, the regulations
and other requirements of the United States Food and Drug Administration,
similar state laws and regulations and similar laws and other requirements,
including any and all amendments, as may be applicable in any jurisdiction in
which any Licensee Product is sold * The parties recognize and acknowledge
Licensee's intent to diligently pursue the commercialization of a Licensee
Product; provided, however, that nothing in this Agreement shall be construed so
as to obligate Licensee to take any specific action or measure to seek
regulatory approval for or to market Licensee Product.
Section 6.2. Performance and Product Quality. Licensee covenants and agrees that
it and its Affiliates shall exercise a reasonable standard of care in the
testing, manufacturing, marketing, packaging, distribution and sale of each
Licensee Product. Licensee further covenants and agrees that it and its
Affiliates shall maintain quality control, provide adequate tests of materials,
provide quality workmanship, and do such other things as are reasonably required
to assure high quality production of such Licensee Products. In this regard, and
without limiting the applicability of the general indemnification provisions
applicable to the representations, warranties and covenants made by the parties
to this Agreement as provided in Article X of this Agreement, Licensee hereby
covenants and agrees to indemnify, defend and hold harmless Licensor and
Licensor's directors, officers, employees and agents from and against all
claims, actions or causes of action (whether sounding in contract, negligence or
strict liability), suits and proceedings ("Claim") and all loss, assessments,
liability, damages, and expenses incurred in connection therewith (including
reasonable attorneys' fees) ("Loss") for which Licensor or its directors,
officers, employees or agents may become liable or incur with respect to any
product liability claim asserted against Licensee, its Affiliates, Third Parties
or Licensor *
Section 6.3. Licensee's Records. Licensee covenants and agrees that Licensee
will keep true and accurate records adequate to permit Royalties due to Licensor
to be computed and verified pursuant to this Section 6.3, which records shall be
made available upon prior written request by Licensor, during business hours,
for inspection by an independent accountant who is not the auditor of record for
Licensor and who is reasonably acceptable to Licensee and who shall be bound by
a confidentiality agreement with the Licensee, to the extent necessary for the
determination of the accuracy of the reports made hereunder. For the purposes of
this Section 6.3, any of the five largest accounting firms in the United States
(as of the date of the audit) shall be deemed acceptable to Licensee, provided
that the firm selected by Licensor is not Licensor's auditor of record. The
accountant shall provide Licensor with a report containing his/ her conclusions,
but not the inspected records nor the information contained therein, and shall
concurrently provide Licensee with such report. *
Section 6.4. Protection of Licensor's Proprietary Interest. *
Section 6.5 Product Use. *
ARTICLE VII
PATENT PROSECUTION AND ENFORCEMENT
Section 7.1. Patent Applications. The responsibility for the prosecution of, and
the exclusive right to apply for, prosecute, maintain and enforce the Licensed
Patents shall be and remain with Licensor except as provided below. Licensor
shall exercise all reasonable efforts in this regard. Licensor shall keep
Licensee informed of the course of such patent prosecution.
Section 7.2. Infringement Notice. Licensee shall notify Licensor promptly in
writing of any infringement of any issued Licensed Patent or other interference
with Licensor's proprietary interests relating to the Technology or the Martek
Products which becomes known to Licensee. If Licensor determines that a material
infringement exists, Licensor shall communicate such determination to Licensee
in writing and take prompt action to attempt to eliminate that infringement.
Section 7.3. Infringement Actions. If Licensor receives Licensee's infringement
notice under Section 7.2 of this Agreement and within a reasonable time
thereafter Licensor is unsuccessful in eliminating the infringement, Licensor
shall have the first right to bring, at its own expense, an infringement action
against any Third Party within a reasonable time * If Licensor waives its right
to bring such an infringement action in writing to Licensee or has not
eliminated such infringement or initiated an infringement suit *, Licensee,
after notifying Licensor in writing, shall be entitled to bring such
infringement action at its own expense. The party not bringing such infringement
action shall provide assistance, at the requesting party's expense, as may be
reasonably requested by the party bringing such action, including without
limitation joining an infringement suit as a party. * The party conducting such
action shall have full control over its conduct, including settlement thereof,
provided that no offer of settlement, settlement or compromise shall be binding
on a party without its prior written consent (which consent shall not be
unreasonably withheld) unless such settlement fully releases such party without
any liability, loss, cost or obligation to such party.
Section 7.4. Defense of Infringement Actions. Licensor and Licensee hereby
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
acknowledge and agree that each party shall be responsible for defending, at its
own expense, any infringement action brought against such party by any Third
Party, and Licensor and Licensee agree reasonably to cooperate with the other in
any such defense and in responding to any threatened infringement action, and to
provide assistance, at its own (respective) expense, as may be reasonably
requested by the defending party. In the event that Licensee is required to
defend any infringement action relating to the Technology or the Martek
Products, *
ARTICLE VIII
ASSIGNMENT
Section 8.1. Assignment. This Agreement and the rights granted hereunder shall
not be assignable, in whole or in part, by either party, nor shall its
obligations hereunder be delegated, without the prior written consent of the
other party, which shall not be unreasonably withheld; provided, however, that
this prohibition against assignment shall not apply to: (i) an assignment to an
Affiliate of Licensee, (ii) an assignment in connection with the transfer of a
substantial portion of either party's business or its merger or consolidation
with another company if such party promptly notifies the other party of any such
assignment, merger or consolidation; or (iii) an assignment by Licensor of its
rights, but not its obligations under this Agreement, to a Third Party *
ARTICLE IX
PARTIES' RELATIONSHIP
Section 9.1. Relationship between Parties. Neither party to this Agreement shall
have the power to bind the other by any guarantee or representation that either
party may give, or in any other respect whatsoever, or to incur any debts or
liabilities in the name of or on behalf of the other party, and for purposes of
this Agreement, the parties hereto hereby acknowledge and agree that they shall
not be deemed partners, joint venturers, or to have created the relationship of
agency or of employer and employee between the parties.
ARTICLE X
INDEMNITY
Section 10.1. Indemnity by Licensee. Licensee shall indemnify, defend and hold
harmless Licensor and Licensor's directors, officers, employees and agents from
and against all Claims and all Loss for which Licensor or its directors,
officers, employees or agents may become liable or incur or be compelled to pay
and resulting from of a breach of any of the Licensee's covenants,
representations and warranties or other material terms and conditions contained
herein, *
Section 10.2 Indemnity by Licensor. Licensor shall indemnify, defend and hold
harmless Licensee, its Affiliates, and Licensee's and its Affiliates' directors,
officers, employees and agents from and against all Claims and all Loss for
which Licensee, its Affiliates or the directors, officers, employees or agents
of either of them may become liable or incur or be compelled to pay and
resulting from: (i) a defect in the Martek Products purchased by Licensee from
Licensor under the Supply Agreement (excluding the determination of a defect in
the safety and utility of the Martek Product relating to its use in a Licensee
Product); (ii) the failure of Licensor to manufacture the Martek Products
purchased by Licensee from Licensor in accordance with specifications mutually
agreed to by Licensor and Licensee in the Supply Agreement; (iii) any negligence
or intentional wrongdoing of Licensor; and (iv) the breach by Licensor of this
Agreement or the Supply Agreement, *
Section 10.3 Condition to Indemnification. If either party expects to seek
indemnification under this Article X, it shall promptly give notice to the
indemnifying party of the basis for such claim of indemnification. If
indemnification is sought as a result of any third party claim or suit, such
notice to the indemnifying party shall be within fifteen (15) days after receipt
by the other party of such claim or suit (if to Abbott, notice to Xxxxxx
Laboratories, Risk Management, D-317, 000 Xxxxxx Xxxx Xxxx, Xxxxxx Xxxx, XX
00000-0000, with copy to the Abbott persons identified in Section 12.5 below; if
to Licensor, notice as set forth in Section 12.5 below); provided, however, that
the failure to give notice within such time period shall not relieve the
indemnifying party of its obligation to indemnify unless it shall be materially
prejudiced by the failure. Each party shall fully cooperate with the other party
in the defense of all such claims or suits. No offer of settlement, settlement
or compromise shall be binding on a party hereto without its prior written
consent (which consent shall not be unreasonably withheld) unless such
settlement fully releases such party without any liability, loss, cost or
obligation to such party.
Section 10.4 Survival of Indemnity Obligation. The indemnification obligations
provided in this Agreement, including that provided in this Article and in
Section 6.2 of this Agreement, shall survive the expiration or termination of
this Agreement, whether occasioned by the Agreement's expiration pursuant to
Section 3.1 of this Agreement or earlier termination pursuant to the other
Sections of Article III of this Agreement, for the longer of: *
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
ARTICLE XI
CONFIDENTIALITY
Section 11.1. Disclosure of Information. All the Technology and all other
information exchanged by the parties pursuant to, and in execution of their
obligations and in exercise of their rights under, this Agreement shall be
deemed confidential. Licensor and Licensee acknowledge and agree that the value
of the Technology, the Martek Products, and the Licensee Products is based, to a
large extent, on maintaining the confidentiality of the Technology, the Martek
Products and the Licensee Products and preventing any unauthorized dissemination
to or use by Third Parties of information relating to the Technology or the
Martek Products. Disclosure of confidential and proprietary information
hereunder, whether orally or in written form, shall be safeguarded by the
recipient and shall not be disclosed to Third Parties and shall be made
available only to the receiving party's employees or other agents who have a
need to know such information for purposes of performing the party's
obligations, or for purposes of exercising the party's rights, under this
Agreement and such employees or other agents shall have a legal obligation to
the employer or principal, as applicable, not to disclose such information to
Third Parties. Each party shall treat any and all such confidential information
in the same manner and with the same protection as such party maintains its own
confidential information. These mutual obligations of confidentiality shall not
apply to any information to the extent that such information: (i) is or later
becomes generally available to the public, such as by publication or otherwise,
through no fault of the receiving party; (ii) is obtained from a Third Party
having the legal right to make such a disclosure; or (iii) is independently
developed by a party without access to the confidential information. Licensor,
Licensee or Licensee's Affiliates shall not remove from any communications or
other documents delivered by a disclosing party any proprietary notices affixed
thereto by the disclosing party.
Without the prior written approval of the other party hereto, Licensor and
Licensee shall not be permitted to disclose (including but not limited to
disclosure in response to questions), announce, or issue a press release
concerning the fact, the nature and the terms of this Agreement and the
transactions to be performed pursuant hereto to any Third Person; provided,
however, that (i) Licensor and Licensee may disclose any otherwise confidential
or proprietary information as and to the extent required by applicable law or
government agency, including, but not limited to, any applicable disclosure
requirements under the federal securities laws or regulations thereunder,
provided that the disclosing party gives no less than five (5) business days
prior written notice to the other party and gives the other party such
assistance as the other party may reasonably request, in accordance with
applicable law, in order to prevent, challenge, modify or protect such
disclosure ; (ii) Licensor and Licensee may disclose the fact and the terms of
this Agreement to its attorneys and accountants; and (iii) promptly after the
date of this Agreement, Licensor and Licensee shall agree in writing upon, and
issue together, a joint press release.
Section 11.2. Post-Termination Obligations. * Licensee promptly shall return to
Licensor all the Technology, Martek Product samples, documents, records, and all
other property or documentation disclosed or delivered to Licensee or its
Affiliates pursuant to this Agreement and then in existence, subject to the
retention by Licensee of one (1) copy thereof for archival purposes.
ARTICLE XII
MISCELLANEOUS
Section 12.1. Dispute Resolution. Licensor and Licensee covenant and agree to
use their diligent efforts to resolve any disputes that arise between them in
the future and are related to this Agreement through negotiation and mutual
agreement and, if good faith efforts to so negotiate and mutually agree are
unavailing, through binding ADR under the procedures set forth in Exhibit 3
attached to this Agreement. The results of such ADR shall be final and binding
on the parties and enforceable in any court of competent jurisdiction.
Section 12.2 Information Exchange. During the term of this agreement, the
parties shall promptly notify each other of any report of an adverse event
associated with the use of a Martek Product in any infant formula product.
Licensee shall have sole discretion in determining what action, if any, is to be
taken in connection with any such adverse event report relating to an Infant
Formula Product.
Section 12.3. Force Majeure. Neither party to this Agreement shall be liable for
damages due to delay or failure to perform any obligation under this Agreement
if such delay or failure results directly or indirectly from circumstances
beyond the control of such party. Such circumstances shall include, but shall
not be limited to, acts of God, acts of war, civil commotions, riots, strikes,
lockouts, acts of the government in either its sovereign or contractual
capacity, perturbation in telecommunications transmissions, inability to obtain
suitable equipment or components, accident, fire, water damages, flood,
earthquake, or other natural catastrophes.
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
Section 12.4. Construction of Agreement. This Agreement shall be construed and
the respective rights of the parties shall be determined under and pursuant to
the laws of the State of Delaware, without regard to the principles of conflict
of laws thereof. The parties expressly exclude the applicability of the
Convention on Contracts for the International Sale of Goods.
Section 12.5. Notices. Notices required under this Agreement shall be in writing
and sent by registered mail, by facsimile transmission, by nationally recognized
overnight courier service, or by hand delivery, with written verification of
receipt and date of receipt, to the respective parties at the following
addresses:
Notices to Licensor:
Martek Biosciences Corporation
0000 Xxxxxx Xxxx
Xxxxxxxx, Xxxxxxxx 00000
Facsimile: (000) 000-0000
Attn: General Counsel
Notices to Licensee:
Xxxx Products Division
000 Xxxxxxxxx Xxx.
Xxxxxxxx, XX 00000
Attn: Vice President, Business Development and Strategic
Planning
Facsimile: (000) 000-0000
With a copy to:
Senior Counsel
Xxxx Products Division
[same address]
Facsimile: (000) 000-0000
Xxxxxx Laboratories
000 Xxxxxx Xxxx Xxxx
Xxxxxx Xxxx, XX 00000
Attn: President, Xxxxxx International Division
Facsimile: (000) 000-0000
With a copy to:
Vice President, International Legal Operations
Xxxxxx Laboratories
[same address]
Facsimile: (000) 000-0000
or to such other address as either party may designate by a notice given in
compliance with this paragraph, and shall be deemed effective when received.
Section 12.6. Entire Agreement. This Agreement, including the Exhibits hereto,
constitutes the entire agreement between the parties hereto and there are no
representations, warranties or covenants relative hereto, which shall survive
the execution of this Agreement unless fully set forth herein.
Section 12.7. Binding Effect. This Agreement shall be binding upon and inure to
the benefit of the parties hereto and their respective successors and permitted
assigns. No person, firm or corporation other than the parties hereto and their
successors and permitted assigns shall derive rights or benefits under this
Agreement.
Section 12.8. Counterparts. This Agreement may be executed in counterparts.
Section 12.9. Severability. If any provision of this Agreement is declared void
or unenforceable by any relevant judicial or administrative authority, such
declaration shall not of itself nullify the remaining provisions of this
Agreement. Consequently, the parties shall meet to determine the effect of any
such declaration and any variations to this agreement which are mutually
desirable.
Section 12.10. Waiver. No waiver by either party of any breach of any of the
terms or conditions herein provided to be performed by the other party shall be
construed as a waiver of any subsequent breach, whether of the same or of any
other term or condition hereof.
Section 12.11 Headings. Section headings contained in this Agreement are
inserted for convenience of reference only, shall not be deemed to be a part of
this Agreement for any purpose, and shall not in any way define or affect the
meaning, construction or scope of any of the provisions hereof.
THEREFORE, the parties hereto have caused this Agreement to be duly executed in
their respective behalves as of the day and year first written above.
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
MARTEK BIOSCIENCES CORPORATION
By:/s/ Xxxxx Xxxxxxx, Xx.
---------------------------
Print Name: Xxxxx Xxxxxxx, Xx.
------------------
Print Title: CEO
---
Date: 3/31/00
-------
XXXXXX LABORATORIES
By:/s/ Xxx X. Xxxxxxxx
-------------------
Print Name: Xxx X. Xxxxxxxx
Print Title: President, Xxxx Products Division
Date:3/31/00
-------
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
EXHIBIT 1 - MARTEK Patents and Patent Applications (4 pgs)
"Arachidonic Acid and Methods for the Production and Use Thereof"
Patents Granted
----------------------- ------------------------
Country Patent No.
----------------------- ------------------------
----------------------- ------------------------
Australia 661674
----------------------- ------------------------
----------------------- ------------------------
French Africa 09909
----------------------- ------------------------
----------------------- ------------------------
Xxxxxxxxx XX 0000000
----------------------- ------------------------
----------------------- ------------------------
Israel 100732
----------------------- ------------------------
----------------------- ------------------------
New Zealand 241,358
----------------------- ------------------------
----------------------- ------------------------
South Africa 92/0454
----------------------- ------------------------
----------------------- ------------------------
Xxx Xxxxx 00000
----------------------- ------------------------
----------------------- ------------------------
Russia 2120998
----------------------- ------------------------
*
PCT Application That Has Entered National Phase
-------------------------- ----------------------- --------------
Serial No. Publication No. Pbl. Date
-------------------------- ----------------------- --------------
-------------------------- ----------------------- --------------
PCT/US92/00517 WO 92/13086 8/6/92
-------------------------- ----------------------- --------------
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
"Arachidonic Acid and Methods for the Production and Use Thereof" (CIP)
Patents Granted
----------------------- ------------------------
Country Patent No.
----------------------- ------------------------
----------------------- ------------------------
United States 5,658,767
----------------------- ------------------------
----------------------- ------------------------
Xxxxxxxxx 00000
----------------------- ------------------------
*
PCT Application That Has Entered National Phase
-------------------------- ---------------------- ---------------
Serial No. Publication No. Pbl. Date
-------------------------- ---------------------- ---------------
-------------------------- ---------------------- ---------------
PCT/US96/00182 WO 96/21037 7/11/96
-------------------------- ---------------------- ---------------
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
"Docosahexaenoic Acid, Methods for its Production and Compounds Containing the
Same"
Patents Granted
----------------------- ---------------------
Country Patent No.
----------------------- ---------------------
----------------------- ---------------------
Australia 660,162
----------------------- ---------------------
----------------------- ---------------------
Europe 1 0515460
----------------------- ---------------------
----------------------- ---------------------
Israel 97126
----------------------- ---------------------
----------------------- ---------------------
Israel 111174
----------------------- ---------------------
----------------------- ---------------------
Japan 0000000
----------------------- ---------------------
----------------------- ---------------------
Philippines 31568
----------------------- ---------------------
----------------------- ---------------------
United States 5,397,591
----------------------- ---------------------
----------------------- ---------------------
United States 5,407,957
----------------------- ---------------------
----------------------- ---------------------
United States 5,492,938
----------------------- ---------------------
----------------------- ---------------------
United States 5,711,983
----------------------- ---------------------
1 Individual national applications based on this application were filed in
United Kingdom, Germany, France, Austria, Denmark, Greece, Luxembourg, Sweden,
Switzerland, Belgium, Italy, Netherlands, Spain, and Romania.
*
PCT Application That Has Entered National Phase
--------------------------- ---------------------- ---------------
Serial No. Publication No. Pbl. Date
--------------------------- ---------------------- ---------------
--------------------------- ---------------------- ---------------
PCT/US91/00733 WO 91/11918 8/22/91
--------------------------- ---------------------- ---------------
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
"Microbial Oil Mixtures and Uses Thereof"
Patents Granted
----------------------- ---------------------
Country Patent No.
----------------------- ---------------------
----------------------- ---------------------
Australia 661,297
----------------------- ---------------------
----------------------- ---------------------
Canada 2,101,274
----------------------- ---------------------
----------------------- ---------------------
French Africa 10348
----------------------- ---------------------
----------------------- ---------------------
Xxxxxxxxx XX 0000000
----------------------- ---------------------
----------------------- ---------------------
Israel 100733
----------------------- ---------------------
----------------------- ---------------------
Israel 114253
----------------------- ---------------------
----------------------- ---------------------
Japan 0000000
----------------------- ---------------------
----------------------- ---------------------
Xxxxxx 000000
----------------------- ---------------------
----------------------- ---------------------
New Zealand 241,359
----------------------- ---------------------
----------------------- ---------------------
Russia 2093996
----------------------- ---------------------
----------------------- ---------------------
South Africa 92/0452
----------------------- ---------------------
----------------------- ---------------------
Xxx Xxxxx 00000
----------------------- ---------------------
----------------------- ---------------------
United States 5,374,657
----------------------- ---------------------
----------------------- ---------------------
United States 5,550,156
----------------------- ---------------------
*
PCT Application That Has Entered National Phase
-------------------------- ---------------------- --------------
Serial No. Publication No. Pbl. Date
-------------------------- ---------------------- --------------
-------------------------- ---------------------- --------------
PCT/US92/00522 WO 92/12711 8/6/92
-------------------------- ---------------------- --------------
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
EXHIBIT 2 (3 pp.)
TRADEMARKS
--------------- ----------- -------- -------------------- ----------------------
XXXX COUNTRY CLASSES STATUS REGISTRATION OR
SERIAL NO.
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Neuromins United
States 1,5,29 Reg. 12/8/98 2,209,435
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Canada N/A Reg. 3/26/99 510,042
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
China 1 Reg. 8/14/99 1302546
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
[in Chinese
characters] China 1 Reg. 8/14/99 1302547
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
China 5 Reg. 8/14/99 1302800
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
[in Chinese
characters] China 5 Reg. 7/28/99 1297757
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
China 29 Reg. 7/14/99 1293972
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
[in Chinese
characters] China 29 Reg. 7/14/99 1293973
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
European
Community 1, 5, 30 Reg. 11/6/98 371,583
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Japan 29 Reg. 1/14/99 4,229,698
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Japan 30 Reg. 1/14/99 4,229,699
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Mexico 1 Reg. 7/30/97 554,719
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Mexico 5 Reg. 7/30/97 554.720
--------------- ----------- -------- -------------------- ----------------------
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
--------------- ----------- -------- -------------------- ----------------------
XXXX COUNTRY CLASSES STATUS REGISTRATION OR
SERIAL NO.
--------------- ----------- -------- -------------------- ----------------------
Neuromins
(cont'd) Mexico 29 Reg. 7/30/97 554.721
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Mexico 30 Reg. 7/30/97 554.722
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Arasco United
States 1, 5 Reg. 5/23/95 1,894,738
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Benelux 1, 5 Reg. 9/22/94 558,581
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Canada N/A Reg. 4/22/97 475,074
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
China 1 Reg. 2/28/97 952085
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
China 5 Reg. 4/14/97 978613
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
France 1, 5 Reg. 10/6/94 94/539.090
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
France 5 Reg. 7/27/95 95/582.463
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Germany 1, 5 Reg. 6/22/95 2 908 191
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Germany 5 Reg. 10/20/97 395 30 455
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Israel 1 Reg. 7/1/96 94940
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Israel 5 Reg. 7.1.96 94941
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Italy 1, 5 Reg. 7/26/96 685002
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Japan 5 Reg. 8/29/97 3343313
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
--------------- ----------- -------- -------------------- ----------------------
XXXX COUNTRY CLASSES STATUS REGISTRATION OR
SERIAL NO.
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Arasco
(cont'd)
[in Korean
characters] South Korea 10 Reg. 9/27/97 3672277
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Spain 1 Reg. 5/5/95 1 923 229/2
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Spain 5 Reg. 5/5/95 1 923 231/4
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
United
Kingdom 1 Reg. 9/26/94 1,586,321
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
United
Kingdom 5 Reg. 9/26/94 1,586,322
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Dhasco United
States 1 Reg. 5/23/95 1,894,739
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Benelux 1, 5 Reg. 9/22./94 558,580
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Canada N/A Reg. 4/23/97 475.803
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
China 1 Reg. 2/28/97 952084
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
China 5 Reg. 4/14/97 978614
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
France 1, 5 Reg. 10/6/94 94/539.089
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
France 5 Reg. 7/27/95 95/582.461
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Germany 5 Reg. 7/25/95 395 30 456
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Indonesia 1, 5 Reg. 5/19/95 367,623
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Israel 1 Reg. 7/1/96 94942
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Israel 5 Reg. 7/1/96 94943
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Italy 1, 5 Reg. 7/25/96 685003
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Japan 1 Reg. 12/25/96 3236317
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Japan 5 Reg. 8/29/97 3343314
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
[in Korean
characters] South Korea 10 Reg. 4/23/96 337927
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
United
Kingdom 1 Reg. 9/26/94 1,586,323
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
United
Kingdom 5 Reg. 9/26/94 1,586,324
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Formulaid United
States 5 Reg. 12/21/93 1,812,662
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Benelux 5 Reg. 8/4/94 561,563
--------------- ----------- -------- -------------------- ----------------------
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
--------------- ----------- -------- -------------------- ----------------------
XXXX COUNTRY CLASSES STATUS REGISTRATION OR
SERIAL NO.
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Formulaid
(cont'd) Canada N/A Reg. 12/22/95 452,191
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
* * * *
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
France 5 Reg. 8/22/94 94/533.500
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Germany 5 Reg. 5/15/95 2 096 416
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Indonesia 5 Reg. 5/19/95 371734
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Israel 5 Reg. 2/4/96 94166
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Italy 5 Reg. 7/25/96 684464
--------------- ----------- -------- -------------------- ----------------------
Japan 5 Reg. 4/25/97 3294461
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
[in Korean
characters] South Korea 10 Reg. 11/13/97 382069
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
Spain 5 Reg. 10/5/95 1.918.547/2
--------------- ----------- -------- -------------------- ----------------------
--------------- ----------- -------- -------------------- ----------------------
United
Kingdom 5 Reg. 8/8/94 1581072
--------------- ----------- -------- -------------------- ----------------------
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
EXHIBIT 3
Alternative Dispute Resolution
The parties recognize that bona fide disputes as to certain matters may arise
from time to time during the term of this Agreement which relate to either
party's rights and/or obligations. To have such a dispute resolved by this
Alternative Dispute Resolution ("ADR") provision, a party first must send
written notice of the dispute to the other party for attempted resolution by
good faith negotiations between their respective presidents (or their designees)
of the affected subsidiaries, divisions, or business units within twenty-eight
(28) days after such notice is received (all references to "days" in this ADR
provision are to calendar days).
If the matter has not been resolved within twenty-eight (28) days of the notice
of dispute, or if the parties fail to meet within such twenty-eight (28) days,
either party may initiate an ADR proceeding as provided herein. The parties
shall have the right to be represented by counsel in such a proceeding.
1. To begin an ADR proceeding, a party shall provide written notice to the other
party of the issues to be resolved by ADR. Within fourteen (14) days after its
receipt of such notice, the other party may, by written notice to the party
initiating the ADR, add additional issues to be resolved within the same ADR.
2. Within twenty-one (21) days following receipt of the original ADR notice, the
parties shall select a mutually acceptable neutral to preside in the resolution
of any disputes in this ADR proceeding. If the parties are unable to agree on a
mutually acceptable neutral within such period, either party may request the
President of the CPR Institute for Dispute Resolution ("CPR"), 000 Xxxxxxx
Xxxxxx, 00xx Xxxxx, Xxx Xxxx, Xxx Xxxx 00000, to select a neutral pursuant to
the following procedures:
(a) The CPR shall submit to the parties a list of not less than five (5)
candidates within fourteen (14) days after receipt of the request, along with
Curriculum Vitae for each candidate. No candidate shall be an employee,
director, or shareholder of either party or any of their subsidiaries or
affiliates.
(b) Such list shall include a statement of disclosure by each candidate of any
circumstances likely to affect his or her impartiality.
(c) Each party shall number the candidates in order of preference (with the
number one (1) signifying the greatest preference) and shall deliver the list to
the CPR within seven (7) days following receipt of the list of candidates. If a
party believes a conflict of interest exists regarding any of the candidates,
that party shall provide a written explanation of the conflict to the CPR along
with its list showing its order of preference for the candidates. Any party
failing to return a list of preferences on time shall be deemed to have no order
of preference.
(d) If the parties collectively have identified fewer than three (3) candidates
deemed to have conflicts, the CPR immediately shall designate as the neutral the
candidate for whom the parties collectively have indicated the greatest
preference. If a tie should result between two candidates, the CPR may designate
either candidate. If the parties collectively have identified three (3) or more
candidates deemed to have conflicts, the CPR shall review the explanations
regarding conflicts and, in its sole discretion, may either (i) immediately
designate as the neutral the candidate for whom the parties collectively have
indicated the greatest preference, or (ii) issue a new list of not less than
five (5) candidates, in which case the procedures set forth in subparagraphs
2(a) - 2(d) shall be repeated.
3. No earlier than twenty-eight (28) days or later than fifty-six (56) days
after selection, the neutral shall hold a hearing to resolve each of the issues
identified by the parties. The ADR proceeding shall take place at a location
agreed upon by the parties. If the parties cannot agree, the neutral shall
designate a location other than the principal place of business of either party
or any of their subsidiaries or affiliates.
4. At least seven (7) days prior to the hearing, each party shall submit the
following to the other party and the neutral:
(a) a copy of all exhibits on which such party intends to rely in any oral or
written presentation to the neutral;
(b) a list of any witnesses such party intends to call at the hearing, and a
short summary of the anticipated testimony of each witness;
(c) a proposed ruling on each issue to be resolved, together with a request for
a specific damage award or other remedy for each issue. The proposed rulings and
remedies shall not contain any recitation of the facts or any legal arguments
and shall not exceed one (1) page per issue.
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
(d) a brief in support of such party's proposed rulings and remedies, provided
that the brief shall not exceed twenty (20) pages. This page limitation shall
apply regardless of the number of issues raised in the ADR proceeding.
Except as expressly set forth in subparagraphs 4(a) - 4(d), no discovery shall
be required or permitted by any means, including depositions, interrogatories,
requests for admissions, or production of documents.
5. The hearing shall be conducted on two (2) consecutive days and shall be
governed by the following rules:
(a) Each party shall be entitled to five (5) hours of hearing time to present
its case. The neutral shall determine whether each party has had the five (5)
hours to which it is entitled.
(b) Each party shall be entitled, but not required, to make an opening
statement, to present regular and rebuttal testimony, documents or other
evidence, to cross-examine witnesses, and to make a closing argument.
Cross-examination of witnesses shall occur immediately after their direct
testimony, and cross-examination time shall be charged against the party
conducting the cross-examination.
(c) The party initiating the ADR shall begin the hearing and, if it chooses to
make an opening statement, shall address not only issues it raised but also any
issues raised by the responding party. The responding party, if it chooses to
make an opening statement, also shall address all issues raised in the ADR.
Thereafter, the presentation of regular and rebuttal testimony and documents,
other evidence, and closing arguments shall proceed in the same sequence.
(d) Except when testifying, witnesses shall be excluded from the hearing until
closing arguments.
(e) Settlement negotiations, including any statements made therein, shall not be
admissible under any circumstances. Affidavits prepared for purposes of the ADR
hearing also shall not be admissible. As to all other matters, the neutral shall
have sole discretion regarding the admissibility of any evidence.
6. Within seven (7) days following completion of the hearing, each party may
submit to the other party and the neutral a post-hearing brief in support of its
proposed rulings and remedies, provided that such brief shall not contain or
discuss any new evidence and shall not exceed ten (10) pages. This page
limitation shall apply regardless of the number of issues raised in the ADR
proceeding.
7. The neutral shall rule on each disputed issue within fourteen (14) days
following completion of the hearing. Such ruling shall adopt in its entirety the
proposed ruling and remedy of one of the parties on each disputed issue but may
adopt one party's proposed rulings and remedies on some issues and the other
party's proposed rulings and remedies on other issues. The neutral shall not
issue any written opinion or otherwise explain the basis of the ruling.
8. The neutral shall be paid a reasonable fee plus expenses. These fees and
expenses, along with the reasonable legal fees and expenses of the prevailing
party (including all expert witness fees and expenses), the fees and expenses of
a court reporter, and any expenses for a hearing room, shall be paid as follows:
(a) If the neutral rules in favor of one party on all disputed issues in the
ADR, the losing party shall pay 100% of such fees and expenses.
(b) If the neutral rules in favor of one party on some issues and the other
party on other issues, the neutral shall issue with the rulings a written
determination as to how such fees and expenses shall be allocated between the
parties. The neutral shall allocate fees and expenses in a way that bears a
reasonable relationship to the outcome of the ADR, with the party prevailing on
more issues, or on issues of greater value or gravity, recovering a relatively
larger share of its legal fees and expenses.
9. The rulings of the neutral and the allocation of fees and expenses shall be
binding, non-reviewable, and non-appealable, and may be entered as a final
judgment in any court having jurisdiction.
10. Except as provided in paragraph 9 or as required by law, the existence of
the dispute, any settlement negotiations, the ADR hearing, any submissions
(including exhibits, testimony, proposed rulings, and briefs), and the rulings
shall be deemed Confidential Information. The neutral shall have the authority
to impose sanctions for unauthorized disclosure of Confidential Information.
*The asterisk denotes that confidential portions of this exhibit have been
omitted in reliance on Rule 24b-2 of the Securities Exchange Act of 1934. The
confidential portions have been submitted separately to the Securities and
Exchange Commission.
