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EXHIBIT 10.19
AGREEMENT
This AGREEMENT is made on 15th December 1997
BETWEEN
UNILEVER PLC, an English company having its principal place of business at
Xxxxxxxx Xxxxx, Xxxxxxxxxxx, Xxxxxx XX0X 0XX, Xxxxxxx and UNILEVER NV, a
Netherlands company having its principal place of business, at Xxxxx 000, 0000
XX Xxxxxxxxx, Xxxxxxxxxxx (hereinafter collectively "Unilever").
AND
SALIVA DIAGNOSTIC SYSTEMS INC., having its principal place of business at 00000
X.X. 00xx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxx 000000, XXX (hereinafter "Licensee").
1. DEFINITIONS
1.1 "Affiliate" shall mean in relation to the Licensee, any company of
which Licensee owns or controls a majority of the ordinary share
capital.
1.2 "Patent Rights" shall mean UK 2204398, AU 626207, XX 000000, XX
656967, Italian utility model 21428, all national patents designated
under EP 291194B, corresponding patent applications pending in Japan
and the United States and all equivalents, substitutions, additions,
extensions, divisionals, continuations, continuations-in-part,
re-examinations, re-issues or registrations thereof, including those
detailed in Appendix 1.
1.3 "Territory" shall mean all those territories where there are
subsisting Patent Rights.
1.4 "Licensed Product" shall mean any device for qualitative Or
quantitative detection of the analytes specified in Appendix 2a
covered by or made in accordance with, or adapted for use
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within a claim of a patent or published patent application within the
Patent Rights.
1.5 "Products Under Option" shall mean any device for qualitative or
quantitative detection of the analytes specified in Appendix 2b
covered by or made in accordance with, or adapted for use within a
claim of a patent or published patent applications with the Patent
Rights.
1.6 "Product Sale Date" shall mean the date of first commercial sale of
any Licensed Product in the Territory.
1.7 "Net Sales" shall mean the amount invoiced by the Licensee or an
Affiliate to an independent third party for sale of Licensed Product
less any customary trade, quantity or cash discounts and
non-affiliated broker's or agent's commissions actually allowed and
taken, amounts repaid or credited by reason of rebate, rejection,
return, short-dating outdating, and less any import, value added or
excise taxes and customs duties levied and any other governmental
charges made as to production, sale, transportation, delivery or use
to the extent such charges art paid by the Licensee or Affiliate and
are separately identified on invoices.
1.8 "Effective Date" shall mean the date of first commercial sale of
Licensed Product.
1.9 "Calendar Quarter" shall mean the respective three month periods
ending on the last business days of March, June, September and
December respectively,
2. LICENSE GRANT
2.1 Unilever hereby grants to the Licensee and the Licensee hereby accepts
with effect from the Effective Date a nonexclusive royalty-bearing
licence under the Patent Rights in the Territory to make, have made
for it, use and sell Licensed Products.
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2.2 Unilever hereby grants to the Licensee and the Licensee hereby accepts
with effect from the Effective Date a nonexclusive option to a
royalty-bearing licence to make, have made for it, use and sell
Products Under Option. This option may he exercised on a per analyte
basis at any time within the two (2) year period subsequent to the
signature of this agreement, whereupon it will cease on a per analyte
basis.
2.3 It is hereby expressly agreed that no licence is granted by Unilever
to the Licensee under any other Unilever patent rights whatsoever and
licence is granted by Unilever to the Licensee for any analyte other
than those indicated in Appendix 2.
2.4 There will be no right to sub-licence without prior written consent of
Unilever.
2.5 The licence to the Licensee shall not be assigned or otherwise
transferred in whole or in part except to the purchaser of all the
material business assets and goodwill of the Licensee with respect to
all the Licensed Products, who shall have agreed with Unilever in
writing prior to such assignment or transfer to accept all of the
Licensee's obligations under this Agreement with respect to the
Licensed Products, and any such licence so transferred may thereafter
continue to be used by the purchaser only in connection with the
Licensee's business assets which are so purchased.
3. PAYMENTS
3.1 In consideration of the licence granted in clause 2.1 hereof, the
Licensee will pay to Unilever within seven (7) days of the date of
signature of this agreement an initial nonreturnable sum of twenty
thousand pounds sterling (20,000 Pounds) and provided that ten
thousand pounds sterling (10,000 Pounds) may be credited against
royalty payments due under clause 3.3 made on and subsequent to the
Effective Date until 31st December 1997.
3.2 In consideration of the licence option granted in clause 2.2 hereof,
the Licensee will pay to Unilever within seven (7)
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days of signature of this agreement a sum of three thousand pounds
sterling (f3,000) per analyte and a further ten thousand pounds
sterling (10,000 Pounds) per analyte upon exercise of the licence
option or upon first commercial sale of a Product Under Option,
whichever is sooner.
3.3 The licensee will pay to Unilever a royalty on Licensed Products which
relate to Helicobacter pylori and on Products Under Option at a rate
of five per cent (5%) A all Net Sales made by Licensee and Affiliates
on and after the Effective Date.
The licensee will pay to Unilever a royalty on Licensed Products which
relate to Human Immunodeficiency Virus at a rate of five per cent (5%)
of all Net Sales made up to a threshold of twenty thousand pounds
Sterling (20,000 Pounds) per annum and at a rate of three per cent
(3%) of all Net Sales made over twenty thousand pounds Sterling
(20,000 Pounds) per annum by Licensee and Affiliates on and after the
Effective Date.
3.4 Only one royalty shall be paid upon sale of any Licensed Product
regardless of the number of claims or patents within the Patent Rights
that may be infringed by the Licensed Product or its use.
4. ACCOUNTING AND AUDIT
4.1 Commencing within thirty (30) days after the date of signature of this
Agreement and thereafter within thirty (30) days after the end of each
Calendar Quarter for the remainder of the term of this Agreement, the
Licensee shall furnish to Unilever at the address in clause 7.3
hereof, a written report certified as correct by the Licensee's chief
executive officer or senior qualified accountant setting forth the
number, name and type of all Licensed Product in each country of sale
upon which the Licensee is obligated to pay royalties and the
computation of the royalties payable with respect thereto, together
with the remittance of the amount due. For the avoidance of doubt,
the first royalty report shall include an account of royalties due on
sales made on and
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subsequent to the Effective Date until the day prior to signature of
this agreement. A report will be furnished to Unilever whether or
not any sales have been made in that Calendar Quarter. Any payments of
royalties which are sent more than fifteen (15) days beyond the due
date shall bear interest. at fifteen (15) percent per annum from the
date on which payment was due to the date on which payment is received
by Unilever.
4.2 Fees and royalties shall be paid in Pounds sterling by cheque payable
to Unilever PLC at the address in clause 7.3 hereof, or otherwise as
Unilever shall direct. Unilever NV hereby confirms that Unilever PLC
may give valid and binding receipt on behalf of Unilever NV. All
currency translations from the currency of sale to Pounds sterling
will be made based on the mid-rate of exchange published by the
Financial Times (London) on the last business day of the relevant
Calendar Quarter for calculation of royalties due under use 3.3.
4.3 All royalty payments provided for under this Agreement shall be made
to Unilever in full, provided however that in any event and to the
extent that any royalty or other sum payable hereunder is subject to
direct taxes levied or assessed by any government authority under the
law of the country from which the remittance is made, and a treaty
exists with that country and the country where the remittance is
received or there is other provision for the avoidance of double
taxation, the Licensee has the right to deduct from the payment any
such taxes and the Licensee shall for each such deduction provide to
Unilever a certificate or other documentary evidence executed by the
appropriate official or relevant government authority to enable
Unilever to claim relief from double taxation on such payments All
payments due under this Agreement are exclusive of value added tax, or
equivalent taxes where applicable.
4.4 The Licensee shall keep accurate records in sufficient detail to
enable royalties payable hereunder to he determined, and shall permit
such records to be inspected once per year with reasonable notice. In
the event Unilever does not request an
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inspection of the records within three years following a royalty
report the Licensee may dispose Of the records. Any inspection of
records shall be made during reasonable business hours by a certified
accountant reasonably acceptable to the Licensee and appointed by
Unilever at its expense for this purpose, but only to the extent
necessary to verify the amount of royalties payable. The accountant
making such inspection shall report to Unilever No amount of royalty
due and payable. Any amount of royalty found to be underpaid shall be
promptly remitted to Unilever together with any interest at a rate of
fifteen (15) percent per annum, and any amount of royalty found to be
overpaid shall be deductible from subsequent royalty remittances, and
if the amount of royalty found to be underpaid shall exceed (10)
percent of the royalty payment for the respective period, the Licensee
shall pay to Unilever the reasonable cost of the inspection of the
records by the certified Accountant.
5. APPLICABLE LAW
5.1 This Agreement shall be deemed to have be made in and shall be
construed in accordance with the laws of England for all matters
(other than scope and validity of the Patent Rights which shall be
construed and governed in accordance with laws of the jurisdiction in
which the Patent Rights have been granted) and the parties submit to
the jurisdiction of the English Courts.
6. TERMINATION
6.1 The Licensee may terminate the licence granted in this Agreement at
any time upon ninety (90) days written notice subject to payment of
royalties in respect of sales of all Licensed Product and Product
Under Option until termination.
6.2 Upon material default by the Licensee in the performance of any
obligation to be performed by the Licensee, Unilever may give written
notice specifying the thing or matter in default. Unless the default
is cured within sixty (60) days following the giving of notice,
Unilever may give further
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written notice to the other party forthwith terminating the licence
granted hereunder,
6.3 if the Licensee shall directly or indirectly dispute the validity of
the Patent Rights in any country for which they have been licensed
under this Agreement, Unilever may upon thirty (30) days written
notice terminate the licence rights to the Licensee.
6.4 Unilever may terminate the licence rights of Licensee forthwith if the
Licensee shall be declared bankrupt or shall enter into liquidation or
receivership or similar state.
6.5 Unilever may terminate the licence rights of the Licensee forthwith if
the Licensee manufactures uses or sells (or procures any third party
so to do), any product which is covered by the Patent Rights in the
country of such manufacture use or sale, other than a Licensed Product
or Product Under Option on which royalty is paid pursuant to this
Agreement.
6.6 Unilever can terminate the licence on a per analyte basis on thirty
(30) days notice if the Licensee makes no sales of the Particular
Licensed Product or if the royalties received by Unilever are less
than five thousand pounds sterling (5,000 Pounds) per analyte within
any period of 12 months starting one year after signature of this
Agreement.
6.7 Unilever can terminate the licence on a per analyte basis on thirty
days (30) notice if the. Licensee makes no sales of Product Under
Option or if the royalties received by Unilever are less than five
thousand pounds sterling (5,000 Pounds) per analyte within any period
of 12 months starting one year after exercise of the option for the
particular Product Under Option.
6.8 Termination pursuant to clauses 6.1 to 6.6 hereof shall not relieve
either party of any obligations accrued prior to the termination.
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6.9 Unless sooner terminated as provided above, the licence rights granted
hereunder shall continue until expiration of the last no expire of the
patents within the Patent Rights.
7. GENERAL PROVISIONS
7.1 This Agreement supersedes all previous oral and written agreements
between the parties and is the only and entire understanding existing
between the parties with respect to the subject matter of this
Agreement. Any amendment thereto shall be in writing and signed by
the parties.
7.2 The provisions of this Agreement shall be deemed separable, and if any
part of this Agreement is rendered void, invalid, or unenforceable,
such rendering shall not affect the validity or enforceability of the
remainder of the Agreement unless the part or parts which are void,
invalid or unenforceable shall substantially impair the value of the
whole Agreement to either party.
7.3 All notices and reports shall be sent to the parties at the addresses
shown below. Such notice or report shall be deemed received when sent
addressed to the party at the address shown below by first class mail
with correct postage affixed or by express service prepaid or by
facsimile or telex confirmed by mail within 14 days, The addresses for
notices and reports may be changed by timely written notice to the
other party.
For the Licensee: President and CEO
SALIVA DIAGNOSTIC SYSTEMS INC.
00000 X.X. 00xx Xxxxxx
Xxxxxxxxx
Xxxxxxxxxx 000000
X.X.X.
For Unilever: The Agreements Advisor
UNILEVER PLC
Patent Division
Colworth House
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Xxxxxxxxxx
Xxxxxxxxxxxx XX00 0XX
Xxxxxxx
7.4 Unilever represents and warrants that they own directly or indirectly
all right title and interest in and to the Patent Rights or are
otherwise authorised to enter into this Agreement. Unilever expressly
does not warrant the validity of any of the Patent Rights but is not
aware of any ground for invalidity thereof. The Licensee will
promptly inform Unilever of any apparent infringements of the Patent
Rights which come to its notice, and the parties will on request
discuss the action to be taken in that respect. It is Unilever's
intention to use reasonable efforts to enforce the Patent Rights, but
Unilever shall not be compelled to take Court action. against third
party infringers. Unilever will advise the Licensee of the status of
the Patent Rights following any significant change to the status and
on the request of the Licensee.
7.5 Unilever expressly does not warrant that any Licensed Product or
Product Under Option is free from infringement of any third party
patent or other intellectual property rights. The Licensee accepts
full responsibility for the manufacture use and sale of all Licensed
Product and Product Under Option and Unilever shall not be liable to
Licensee for the consequences of any such infringement of third party
rights or other damages caused to any third party by such manufacture
use or sale, and the Licensee shall hold harmless and indemnify
Unilever from any and all judgements of any kind which arise from such
manufacture, use and sale of Licensed Product and Product Under
option-
7.6 The Licensee shall not make any use of the Unilever name or any
trademark of Unilever or of any company in the Unilever Group in
connection with the manufacture use or sale of Licensed Product or
Product Under option or otherwise without the prior written consent of
Unilever.
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7.7 No licence is hereby granted to the Licensee by implication, estoppel
or otherwise under any letters patent or application thereof other
than under the Patent Rights.
7.8 Failure by either party to enforce any provision of this Agreement
shall not be construed as a waiver of such provision and shall not
affect the validity of the Agreement or any part thereof or the right
of that party to enforce any provision thereof.
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In WITNESS WHEREOF, the parties have caused this Agreement to be executed in
duplicate originals.
UNILEVER PLC SALIVA DIAGNOSTICS SYSTEMS INC.
BY: /s/ Signature Illegible BY: /s/ Xxxxxxx X. XxXxxxxxx
TITLE: ...................... TITLE: President
UNILEVER NV
BY (1): /s/ Signature Illegible
TITLE: ......................
BY (2): /s/ Signature Illegible
TITLE: Agreements Advisor
NFS/31 October 1997
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APPENDIX 1
A) GRANTED RIGHTS
COUNTRY NUMBER EXPIRY DATE
---------------------------------------------------------------------------
United Kingdom 2204398 26 April 2008
Hong Kong 1409/95 26 April 0000
Xxxxx 214285 27 April 0000
Xxxxxxxxx 626207 26 April 0000
Xxxxxxxxx 656966 26 April 0000
Xxxxxxxxx 656967 26 April 2008
USA 5602040 11 February 2014
USA 5622871 22 April 2014
European 291194 26 April 2008
designated states under the
European patent are:-
Austria E101721 26 April 0000
Xxxxxxx 291194 26 April 2008
France 291194 26 April 0000
Xxxxxxx 3887771 26 April 0000
Xxxxxx 940400378 26 April 0000
Xxxxx 291194 26 April 0000
Xxxxxxxxxxx 291194 26 April 0000
Xxxxx 291194 26 April 0000
Xxxxxx 291194 26 April 0000
Xxxxxxxxxxx 291194 26 April 2008
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APPENDIX 1 (cont.)
B) PENDING RIGHTS
COUNTRY NUMBER
------------------------------------------
Australia Divisional 3 80490/94
Australia Divisional 4 80489/94
European Divisional 1 93108764.7
European Divisional 2 00000000.9
Japan 503518/88
Xxxxx Xxxxxxxxxx 0 000000/00
Xxxxx Divisional 2 150882/93
USA Divisional 1 08/305967
USA Divisional 2 08/474192
USA Divisional 3 08/487319
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APPENDIX 2
(a) Human Immunodeficiency virus
Helicobacter pylori
(b) Hepatitis A
Tuberculosis
