September 6, 2005 POSITRON CORPORATION and NEUSOFT POSITRON MEDICAL SYSTEMS CO., LTD.
September
6, 2005
POSITRON
CORPORATION
and
NEUSOFT
POSITRON MEDICAL SYSTEMS CO., LTD.
This
Software Sub-License Agreement (the "Agreement") is entered into on September
6,
2005 ("Effective
Date")
by and
between
POSITRON
CORPORATION, a corporation organized under the laws of Texas, USA and having
its
principal office at 0000 Xxxxxxx Xxxxx Xxxxx Xxxxx 000, Xxxxxxx, XX 00000,
USA("Licensor")
And
NEUSOFT
POSITRON MEDICAL SYSTEMS CO., LTD., a Chinese-foreign equity joint venture
organized under the laws of the People's Republic of China ("PRC'), having
its
principal office at Xx.0 Xxxxxx Xxxxxx, Xxx Xxx Xxx Xxxxxxxx, Xxxxxxxx 000000,
PRC ("Licensee")
Licensor
and Licensee are hereinafter also referred to individually as "Party" or jointly
as "Parties".
RECITALS:
WHEREAS,
Licensor received a worldwide, perpetual, irrevocable, non-exclusive,
royalty-free, transferable, sub-licensable and fully paid-up license from GE
Medical Systems Business ("GEMS")
to
use, reproduce, make derivative works of, distribute and otherwise commercially
exploit certain Cardiac PET software in perpetuity under the terms of the
Software License Agreement between the Licensor and GEMS dated June 29, 2003
("Original
License Agreement");
WHEREAS,
Neusoft Medical Systems Co., Ltd. ("NMS")
and
licensor entered into a Joint Venture Contract ("Joint
Venture Contract")
for
the establishment of Licensee, and agreed hereunder to have Licensor and
Licensee enter into this Agreement; and
WHEREAS,
Licensee desires to obtain, and Licensor has agreed to grant, certain license
rights concerning the above Cardiac PET software according to the terms of
this
Agreement.
IT
IS AGREED AS FOLLOWS
ARTICLE
1
DEFINITIONS
Section
1.1. Unless
otherwise provided herein, the capitalized words herein shall have the same
meaning as those of the Joint Venture Contract.
Section
1.2. For
purposes of this Agreement, the following terms have the meanings specified
or
referred to in this Section
1.2.
"Documentation"
means
the documentation reasonably necessary to utilize the Software effectively
in
accordance with the terms and conditions of this Agreement. Documentation shall
include, without limitation, such documents and manuals that collectively
contain a complete description and definition of all Software operations and
all
user guides necessary for the operation and management of the Software in the
appropriate language(s) and formats, including design documents and test
plans.
"End
Uses"
means
any Licensee's customer who is permitted to use the Software under asoftware
license agreement.
"Executable
Code"
means
the fully compiled version of a software program that can be executed by a
computer and used by an end user without further compilation.
"Improvements"
shall
mean any modification, adaptation, invention, or other improvement relating
to
any item of the Software or component or part thereof, made during the term
of
this Agreement.
"Software"
shall
have the same meaning as the word defined in the Original License
Agreement.
"Source
Code"
means
the human-readable version of a software program that can be compiled into
Executable Code.
"Territory"
means
the People's Republic of China.
ARTICLE
2
LICENSE
Section
2.1. Software
License.
Subject
to the provisions of Section
5.2,
Licensor hereby agrees to grant Licensee a worldwide, irrevocable, exclusive
in
the Territory (non-exclusive outside the Territory) license to use, reproduce,
make derivative works of, distribute and otherwise commercially expbit the
Software. Except for the methods or purposes set out above, Licensee may not
use
the Software in any other method or for any other purpose. Licensor hereby
agrees not grant the same or similar license to anyone else covering the
Territory.
ARTICLE
3
ROYALTY
AND PAYMENT TERMS
Section
3.1. Royalty.
Licensee shall pay US$250,000 as royalty to Licensor within 60 days after the
Establishment of the Joint Venture (obtaining business license). The foregoing
payment as royalty shall be the full and complete consideration under this
Agreement. Except for such royalty, Licensee shall have no obligation to make
any other payment to Licensor.
Section
3.2. Taxes
and Duties.
Licensor and Licensee shall be separately responsible for and shall pay all
taxes, duties, import deposits, assessments and other governmental charges
designed to them, which are now or hereafter imposed under or by any
governmental authority or agency, that are (a) associated with the performance
of its obligations hereunder, or (b) associated with the payment of any amount
by Licensee to Licensor pursuant to this Agreement; provided, however, that
Licensor shall be responsible for all withholding taxes on the payment of this
royalty under Section
3.1
above.
For the avoidance of doubt, the Parties hereby agree that Licensee shall not
be
responsible for any taxes, duties, assessments or fees of whatever kind or
nature levied upon Licensor outside the Territory.
-2-
ARTICLE
4
INTELLECTUAL
PROPERTY ENFORCEMENT
Section
4.1. Enforcement
of Intellectual Property Rights.
If
Licensee believes that any of the intellectual property rights in the Software
are being infringed or misused by a third party in the Territory, Licensee
shall
promptly notify Licensor of such infringement or misuse. Licensor and Licensee
shall have the right to bring action regarding such infringement or misuse.
If
one Party brings such action, the other Party shall provide such assistance
as
the Party bringing the action shall request. Further, unless the Parties
otherwise agree in writing, all damages, profits, awards and royalties obtained
in connection with such action shall be for the benefit of Licensor and
Licensee, provided that the Licensor shall reimburse the costs and expenses
incurred to Licensee in the provision of above assistance.
Section
4.2. Maintenance
of Intellectual Property.
Licensor shall make and maintain filings (if any) for the protection and
maintenance of the Software.
ARTICLE
5
TERM
AND TERMINATION
Section
5.1. Term.
This
Agreement shall take effect from the Effective Date. The term of this Agreement
shall be ten (10) years and can be automatically extended by another ten (10)
years without limitation on the time of such extension.
Section
5.2. No
Termination.
This
Agreement shall be irrevocable upon execution. In no event will either Party
have the right to terminate this Agreement or the licenses granted herein.
Licensor expressly covenants and agrees that it shall not take any action,
and
shall not attempt in any way, to revoke, cancel, terminate or otherwise refute
the license to Licensee under this Agreement. Notwithstanding the foregoing,
in
the event the Joint Venture Contract is terminated or Licensee is dissolved,
the
license granted to Licensee under this Agreement shall terminate and shall
be
assigned to NMS at which time such license shall become non-exclusive in the
Territory and outside the Territory.
ARTICLE
6
CONFIDENTIALITY
Section
6.1. Nondisclosure.
Licensee acknowledges that both the Source Code of the Software and any
non-public information regarding the structure or organization of the Software
constitute valuable trade secrets of Licensor. Accordingly, except for the
terms
and conditions as set forth in Section
9.3,
Licensee agrees to keep secure and not to disclose, disseminate or otherwise
make available to any third party other than under a confidentiality agreement
with restrictions at least as strict as those set forth in this Agreement (a)
the Source Code of the Software, (b) any non-public information regarding the
structure or organization of the Software. For the avoidance of doubt, the
Parties understand and agree that violations of any of these restrictions shall
not give rise to any right to terminate, cancel or revoke any of the license
rights granted in Section
2.1.
-3-
ARTICLE
7
INDEMNIFICATION
AND LIABILITY
Section
7.1. Indemnification
by Licensee.
Licensee agrees to indemnify, defend and hold Licensor, its officers, directors,
agents, and employees harmless from and against any and all liabilities,
damages, losses, expenses, claims, demands, suits, fines or judgments, including
reasonable attorneys' fees and costs and expenses incidental thereto, which
may
be suffered by, accrued against, charged to or recoverable from Licensor, its
officers, directors, agents, or employees arising out of or in connection with
Licensee's operations, including, without limitation the use of the Software
or
any act, error or omission of Licensee, its officers, directors, agents,
employees and subcontractors, during the performance of this
Agreement.
Section
7.2. Indemnification
by Licensor.
Licensor agrees to indemnify, defend and hold Licensee, its officers, directors,
agents, and employees harmless from and against any and all liabilities,
damages, losses, expenses, claims, demands, suits, fines or judgments, including
reasonable attorneys' fees and costs and expenses incidental thereto, which
may
be suffered by, accrued against, charged to or recoverable from Licensee, its
officers, directors, agents, or employees arising out of or in connection with
the nature or content of the Software or Documentation, or any act, error or
omission of Licensoi its officers, directors, agents, employees and
subcontractors, during the performance of this Agreement.
ARTICLE
8
PROPRIETARY
RIGHTS
Section
8.1. Proprietary
Rights of Licensor.
All
rights, title and interest in and to any modification or other derivative work
of the Software developed or otherwise created by or on behalf of Licensor,
and
all worldwide intellectual property rights therein, will be the exclusive
property of Licensor. Licensor shall promptly grant Licensee a license
non-exclusive and royalty free license to use such Improvements anywhere in
the
world .
Section
8.2. Proprietary
Rights of Licensee.
All
rights, title and interest in and to any modification or other derivative work
of the Software developed or otherwise created by or on behalf of Licensee
after
the Effective Date, and all worldwide intellectual property rights therein,
will
be the exclusive property of Licensee.
ARTICLE
9
MISCELLANEOUS
Section
9.1. Amendment
and Modification.
This
Agreement may be amended, modified, or supplemented only by written agreement
signed by both of the Parties.
Section
9.2. Waiver
of Compliance; Consents.
Any
failure of a Party to comply with any obligation, covenant, agreement, or
condition herein may be waived by the other Party; provided, however, that
any
such waiver may be made only by a writing signed by the Party granting such
waiver, but such waiver or failure to insist upon strict compliance with such
obligation, covenant, agreement, or condition shall not operate as a waiver
of,
or estoppel with respect to, any subsequent or other failure.
-4-
Section
9.3. Assignment.
This
Agreement and all of the provisions hereof shall be binding upon and inure
to
the benefit of the Parties hereto and their respective successors and permitted
assigns. Licensee may not assign any of its rights or obligations hereunder
without the prior written consent of Licensor, except for assignment to NMS
or
its Affiliates.
Section
9.4. Governing
Law.
The
laws or regulations of the PRC which are officially published and publicly
available shall apply to and govern the formation, validity, interpretation
and
implementation of this Agreement.
Section
9.5. Dispute
Resolution.
Any
dispute arising from, out of or in connection with this Agreement shall be
settled through friendly consultations between the Parties. Such consultations
shall begin immediately after a Party has delivered to the other Party a written
request for such consultation. If within forty-five (45) days following the
date
on which such notice is given, the dispute cannot be settled through
consultations, the dispute shall, upon the request of any Party with notice
to
the other Party, be submitted to arbitration at the China International Economic
and Trade Arbitration Commission at Beijing, PRC. The arbitration proceedings
shall be conducted in Chinese. The arbitration tribunal shall apply the rules
of
the China International Economic and Trade Arbitration Commission in effect
on
the date of the dispute be submitted. The arbitral award shall be final and
binding upon all Parties, not subject to any appeal, and shall deal with the
question of costs of arbitration and all matters related thereto.
Section
9.6. Counterparts.
This
Agreement may be executed in four (4) counterparts, each of which shall be
deemed an original, but all of which together shall constitute one and the
same
instrument
Section
9.7. Notices.
Unless
otherwise specified, whenever this Agreement requires or permits any consent,
approval, notice, request, or demand from one Party to another, that
communication must be in writing to be effective and is deemed to have been
given if by certified or registered mail, on the third business day after it
is
enclosed in an envelope and properly addressed, stamped, sealed, and deposited
in the appropriate official postal service with a return receipt requested.
Until changed by notice pursuant to this Agreement, the addresses for the
Parties are set forth above in the introductory paragraph.
Section
9.8. Headings.
The
article and section headings contained in this Agreement are for reference
purposes only and shall not affect in any way the meaning or interpretation
of
this Agreement.
Section
9.9. Entire
Agreement.
This
Agreement embodies the entire agreement and understanding of the Parties hereto
in respect of the subject matter contained herein. This Agreement supersedes
all
prior agreements and understandings between the Parties with respect to the
subject matter contained herein.
Section
9.10. Severability.
If any
one or more provisions contained in this Agreement shall, for any reason, be
held to be invalid, illegal, or unenforceable in any respect, such invalidity,
illegality, or unenforceability shall not affect any other provision of this
Agreement, but this Agreement shall be construed as if such invalid, illegal,
or
unenforceable provision had never been contained herein.
-5-
Section
9.11. Language.
This
Agreement is executed in English and Chinese and both language versions shall
have equal validity.
Section
9.12. Government
Filing.
Licensee shall handle the filing procedures in connection with importation
of
technology and the exclusive license of the Software (if any), and Licensor
shall provide all reasonable assistance.
Section
9.13. Force
Majeure.
In the
event of earthquake, typhoon, flood, fire, war, computer virus, loophole in
the
design of tooling software, internet encountering a hacker, change of policies
of laws, and other unforeseeable or unpreventable or unavoidable event of force
majeure, which directly prevents a Party from performing this Agreement or
performing the same on the agreed condition, the Party encountering such as
force majeure event shall forthwith issue a notice by a facsimile and, within
thirty (30) days, present the documents proving the details of such force
majeure event and the reasons for which this Agreement is unable to be performed
or is required to be postponed in its performance, and such proving documents
shall be issued by the notarial office of the area where such force majeure
event takes place. The Parties shall consult each other and decide whether
this
Agreement shall be waived in part or postponed in its performance with regard
to
the extent of impact of such force majeure event on the performance of this
Agreement.
IN
WITNESS WHEREOF, the Parties hereto have caused this Agreement to be executed
as
of the date above written.
-6-
Signature Page
|
POSITRON
CORPORATION
|
||
|
By:
|
||
|
Name:
|
||
|
Title:
|
||
|
NEUSOFT
POSITRON MEDICAL SYSTEMS CO., LTD.
|
||
|
By:
|
||
|
Name:
|
||
|
Title:
|
||
-7-
