EXCLUSIVE LICENSE AGREEMENT
BETWEEN
MAXXON, INC.
AND
XXXXXXX X. XXXXXXXXX, XX., XXX XXXXXXX AND XXXX XXXXXX
THIS EXCLUSIVE LICENSE AGREEMENT ("Agreement") is entered into by and among
MAXXON, INC. ("MAXXON"), and XXXXXXX X. XXXXXXXXX, XX. ("XXXX"), XXX XXXXXXX
("XXXXXXX") and XXXX XXXXXX ("XXXXXX") (together XXXX, XXXXXXX and XXXXXX are
referred to collectively as the "LICENSORS").
RECITALS
WHEREAS, LICENSORS own all the rights, titles and interests in and to that
certain single-handed, vacuum-operated safety syringe device and technology
("Xxxx Syringe") covered to be covered by a US Patent to be filed on or before
December 31, 1999 ("US Patent Application"), together with all improvements,
modifications, and changes therein made therein by LICENSORS while this
Agreement remains in effect and all patents, patent applications, patent rights,
and other intellectual property rights therein ("Invention"); and
WHEREAS, LICENSORS will file and prosecute with their best good faith
diligent efforts the US Patent Application to completion through the US Patent
and Trademark Office and may apply for additional patent protection in the
Invention in jurisdictions other than in the US; and
WHEREAS, additional development of the Invention is required; and
WHEREAS, MAXXON desires to acquire, and LICENSORS desire to grant to
MAXXON, an exclusive worldwide license to use, exploit and practice the
Invention, to design, develop and manufacture products that incorporate the
Invention ("Licensed Products") and to make, market, commercialize, sell,
distribute and use the License Products on a worldwide basis.
NOW, THEREFORE, in consideration of the premises and for other good and
valuable consideration, the receipt, adequacy and sufficiency of which is hereby
acknowledged, the parties agree as follows:
I. DEFINITIONS
The capitalized terms defined herein have the following meanings:
"Agreement" is defined in the Introduction this Exclusive License
Agreement, together with any exhibits, schedules, amendments, modifications and
changes therein from time to time.
"XXXXXX" is defined in the Introduction.
"XXXXXXX" is defined in the Introduction.
"Invention" is defined in the Recitals.
"License" means the exclusive worldwide license in the Invention granted by
this Agreement.
"Licensed Products" means any product or part, apparatus, method, or
service, which uses or incorporates within it any of the Patent Rights and
which:
(i) Is covered in whole or in part by an issued, unexpired claim or pending
claim contained in the Patent Rights in the country in which any such
product or part thereof is made, used or sold; or
(ii) Is manufactured using a process or employees a practice or process
which is covered in whole or in part by an issued patent or an unexpired
claim contained in the Patent Rights; or
(iii) Includes any process or method which is covered in whole or in part
by an issued patent, or contains an unexpired claim contained in the Patent
Rights.
"LICENSORS" is defined in the Introduction.
"MAXXON" is defined in the Introduction.
"Minimum Royalties" is defined in Paragraph 3.03 below.
"Net Sales" shall mean the gross receipts of moneys or cash equivalents
actually received by MAXXON in consideration for the sale of Licensed Products
transferred by MAXXON or by any sublicensee, distributor or sales representative
of MAXXON from any jurisdiction in which the Patent Rights remain in full force
and effect at the time of such sale, computed on a calendar quarter basis, less
allowances for the following items which are directly related to the sale of
Licensed Products:
(a) Cash, trade, or quantity discounts; and
(b) Taxes, including sales taxes;
(c) Import, export and other customs fees and duties; and
(d) Extension of credits and any bad debts; and
(e) Returned or stopped checks or payment for any reason; and
(f) Returns, rejections and replacements of Licensed Products; and
(g) Cost of insurance in transit; and
(h) Commissions paid to foreign sales or export/import/customs agents
or other similar representatives; and
(i) Special packaging; and
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(j) Transportation and handling charges; and
(k) Other similar charges related directly to the sale of Licensed
Products.
Net Sales shall be deemed to have occurred when Maxxon actually receives payment
there for and such payment has cleared all applicable banking channels and is
not subject to be stopped or canceled.
"Patent Rights" means all intellectual property and other rights at common
law and all rights arising from the US Patent Application and any other
provisional or non-provisional patent applications and all amendments and
modifications therein, together with all re-examinations, extensions, or
continuations covering the Invention, and all patents issued covering any
portion of the Invention, and all other intellectual property rights with
respect to the Invention, together with all modifications, changes and
improvements therein.
"XXXX" is defined in the Introduction.
"Xxxx Syringe" is defined in the Recitals.
"US Patent Application" is defined in the Recitals.
II. GRANT OF EXCLUSIVE LICENSE
2.01 EXCLUSIVE LICENSE. LICENSORS hereby grant to MAXXON, and MAXXON hereby
accepts from LICENSORS, upon the terms and conditions herein specified, an
exclusive worldwide License to do the following:
(i) Use, exploit and practice the Patent Rights; and
(ii) Design, develop and improve, and assist LICENSORS to design, develop
and improve the Invention and the Licensed Products; and
(iii)Make, market, commercialize, sell and use Licensed Products;
(iv) Sublicense and contract with others to provide services in connection
with Licensed Products to do any of the foregoing.
2.02 PROHIBITED ACTS BY LICENSORS. LICENSORS agree that they will not:
(i) Grant any licenses in the Invention or the Patent Rights to others; or
(ii) Provide Licensed Products to others for any commercial purpose; or
(iii)Subject to and consistent with Article VII hereof, permit others to
use the Invention or Licensed Products for any commercial use.
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Notwithstanding the provisions contained in Paragraphs 2.01 and 2.02 above,
LICENSORS agree to provide consulting and other assistance in the design,
development and commercialization of Licensed Products, to assist and cooperate
with Maxxon in the design, development and commercialization of Licensed
Products; and to provide consulting services for and cooperation with engineers,
mold manufacturers, and manufacturers of Licensed Products to advance and
further the commercialization of Licensed Products.
2.03 RESERVATION OF RIGHTS. LICENSORS reserve the right to make, use and
further develop the Invention and to practice the Invention or the Patent Rights
for their own educational, research and non-commercial purposes; but they agree
that they will not make or permit others to make commercial sales or use of
Licensed Products except through MAXXON or its authorized representatives.
2.04 DUE DILIGENCE. The parties agree to use their good faith diligent
efforts to bring one or more Licensed Products into the commercial market and to
continue active, diligent marketing efforts for one or more Licensed Products
throughout the life of this Agreement.
2.05 SUBLICENSING BY MAXXON. MAXXON has the right to grant sublicense,
distribution, manufacturing and marketing rights to third parties in its sole
discretion upon terms and conditions it deems appropriate. MAXXON agrees to
consult with LICENSORS before any such transaction and to give sympathetic
consideration to the comments, questions and concerns of LICENSORS with respect
thereto, provided that LICENSORS shall not have the right to veto any such
transaction. Copies of all such agreements shall be provided to LICENSORS. For
purposes of coordination and cooperation contemplated by the Paragraph, the
LICENSORS hereby designate XXXX as their representative, and MAXXON shall be
deemed to have coordinated with LICENSORS hereunder if MAXXON has coordinated
with LICENSOR's designated representative. MAXXON hereby designates Dr. Xxxxxx
Xxxxxxxx, Jr. as its representative.
2.06 COMMERCIAL DISTRIBUTION OF LICENSED PRODUCTS. The License rights
granted hereunder entitle MAXXON to make, use, sell, practice, exploit and
distribute Licensed Products and to permit others to do the same, through any of
its or their affiliates, subsidiaries and distributors, and to sell Licensed
Product through any channels of commerce, including manufacturers.
2.07 PERFORMANCE SCHEDULE. MAXXON and the LICENSORS agree to cooperate in
good faith with each other, to communicate and coordinate promptly and use their
best good faith diligent efforts to bring the Xxxx Syringe to commercialization
as promptly as reasonably possible under all the circumstance. In that regard,
upon the execution of this Agreement, Dr. Xxxxxx Xxxxxxxx, Jr. of MAXXON and
XXXX will promptly meet to arrange the manufacture of soft molds for the making
of a prototype of the Xxxx Syringe and coordinate with each other to establish a
schedule for the making of a full working prototype of the Xxxx Syringe as soon
as is reasonably possible. Thereafter, MAXXON and the LICENSORS will continue to
bring the Xxxx Syringe to market with all deliberate speed. MAXXON and LICENSORS
may designate successor representatives to assist in
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the technical development of the Xxxx Syringe from time to time by giving the
other notice of the successor technical representative.
2.08 REQUIREMENT TO USE GOOD FAITH EFFORTS TO COMMERCIALIZE. MAXXON agrees
to use its good faith diligent efforts to commercialize the Xxxx Syringe after
Completion of Development of the Xxxx Syringe.
III. COMPENSATION
3.01 ROYALTIES. MAXXON agrees to pay LICENSORS royalties at the rate of 4%
per cent of Net Sales of Licensed Products which MAXXON actually receives from
the sale of Licensed Products, paid quarterly on or before the last day of
January, April, July, and October of each year in which Licensed Products are
sold. MAXXON agrees to provide LICENSORS a report of Net Sales in sufficient
detail for the LICENSORS to calculate applicable royalties.
3.02 PAYMENTS UPON THE OCCURRENCE OF CERTAIN CONDITIONS. MAXXON agrees to
pay LICENSORS $200,000 as follows: $100,000 to XXXX; $50,000 to XXXXXXX; and
$50,000 to XXXXXX, subject to satisfaction of the following conditions: (1) The
issuance of a US Patent covering the Xxxx Syringe and the Invention; (2) The
completion of a fully functional and working safety syringe using the Invention;
and (3) FDA approval to sell Xxxx Syringes in the US; provided that the events
set forth in subparagraphs (1), (2), and (3) above shall occur on or before
September 30, 2001; and further provided that MAXXON agrees to pay the
obligations represented by this paragraph on a superior basis to all other
indebtedness out of the first $200,000 of net profits from the sale of Xxxx
Syringes, even if those syringes do not have FDA approval and even if those
syringes are sold in jurisdictions not requiring FDA approval. In the event such
events have not occurred by September 30, 2001, then the obligations of MAXXON
to pay the LISENSORS under this paragraph shall be terminated and of no force or
effect. In addition, the unpaid principal balance of the obligations to pay
LICENSORS under this paragraph shall bear interest at the simple rate of 8% per
annum, compounded annually, from and after the due date until paid in full.
3.03 MINIMUM ROYALTIES. MAXXON agrees to pay LICENSORS a minimum annual
royalty in order to keep the License in full force and effect from and after
Completion of Development of the Xxxx Syringe as follows:
A. BEGINNING ON THE 4TH annual anniversary after Completion of
Development of the Xxxx Syringe and for each of the next 3 years,
$10,000 less Royalties paid in the previous year; and
B. BEGINNING ON THE 7TH annual anniversary after Completion of
Development of the Xxxx Syringe and for each of the next 3 years,
$15,000 less Royalties paid in the previous year; and
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C. BEGINNING ON THE 10TH annual anniversary after Completion of
Development of the Xxxx Syringe and for each year thereafter, $20,000
less Royalties paid in the previous year.
3.04 INITIAL SUBLICENSE FEES. MAXXON agrees to pay to LICENSORS 10% of all
initial sublicense, distribution and other marketing fees actually received by
MAXXON, in addition to the royalty payment set forth in Paragraph 3.01 above.
3.05 REIMBURSEMENT OF PATENT COSTS. MAXXON agrees to escrow $10,000 upon
the execution of this Agreement to be used to pay patent application fees in
connection with the Invention as an advance against royalty payments provided
for in Paragraph 3.01. MAXXON may pay other patent fees and expenses from time
to time as an advance against royalties provided for in Paragraph 3.01 above,
including patent and maintenance fees, reasonable attorneys' fees and expenses
and other costs incurred in connection with filing, prosecuting, securing and
maintaining Patent Rights.
3.06 OPTIONS IN MAXXON COMMON STOCK. MAXXON agrees to grant to LICENSORS
stock options to purchase 1,600,000 shares in the aggregate of Common Stock of
MAXXON in accordance with the Option Agreements attached as exhibits hereto. The
Options and the Option shares issuable upon the exercise of such Options may be
pledged as collateral to secure loans to an INVENTOR, but the foreclosure upon a
default thereof shall be subject to all applicable laws, rules and regulations,
including applicable federal and state securities laws.
3.07 ADDITIONAL COMPENSATION. In the rights of MAXXON hereunder are sold or
MAXXON is a participant in a merger, share exchange, reorganization, or other
form of business acquisition before any Licensed Product is sold, then MAXXON
agrees to deliver to LICENSORS 25% of the compensation received by MAXXON upon
the consummation of any such transaction, after the payment of creditors but
before the distribution of any consideration to the shareholders of MAXXON.
3.08 FORM OF PAYMENTS. All payments to LICENSORS hereunder shall be paid in
the same form of consideration as is received by MAXXON; provided however,
MAXXON in its discretion may make any such payments in US dollars. All payments
in currencies other than U.S. dollars shall be calculated using the appropriate
exchange rate for such transactions quoted by the Citibank NA, New York foreign
exchange desk on the last banking day of each calendar quarter.
IV. TERM AND TERMINATION
4.01 TERM. This Agreement shall become effective as of the first date set
forth above and shall continue in effect for the last Patent Rights to expire in
any country in which a patent may have been issued, extended or renewed. MAXXON
shall not be required to pay royalties by reason of the manufacture, use or sale
of Licensed Products in any jurisdiction after the License has expired or the
Patent Rights have expired in that jurisdiction.
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4.02 TERMINATION. This Agreement may be terminated by a party:
(d) In the event the other party commits any material breach of its duties
under this Agreement by giving written notice thereof to the other
party stating the nature of the defaults claimed. The breaching party
shall have 60 days to cure the asserted defaults. This Agreement shall
continue in full force and effect as if such notice had not been given
if the breaching party cures the defaults.
(b) This Agreement shall terminate at the election of a party if either
MAXXON or LICENSORS permits any of the following events to occur:
(i) A party suspends or abandons its business; or
(ii) A party files a voluntary petition in bankruptcy or any
creditors' rights proceeding filed against it; or
(iii)A party admits the material allegations in any involuntary
petition in bankruptcy or any creditors' rights proceeding filed
against it; or
(iv) A party makes a general assignment of all or substantially all
its assets for the benefit of creditors; or
(v) A party applies for or consents to the appointment of a receiver
or trustee or similar representative over all or substantially
all its assets.
4.03 EFFECT OF TERMINATION. Upon termination of this Agreement, MAXXON
shall cease all production and sale of Licensed Products, except for the
production and sale of Licensed Products on which production had begun prior to
notice of such termination or orders have been accepted prior to the receipt of
notice of termination. MAXXON may continue to sell such Licensed Products for up
to one year after such notice upon payment of royalties accruing thereon. MAXXON
agrees to provide a report of Net Sales to the LICENSORS of any royalties which
may become due by reason thereof.
V. PROSECUTION AND MAINTENANCE OF PATENT RIGHTS
LICENSORS shall prosecute, pursue and maintain the US Patent
Application and all other patent applications relating to the Invention and to
use their best, good faith, diligent efforts to secure patents in the US and in
such other jurisdictions as the parties mutually agree and to protect all the
Patent Rights and intellectual property rights relating thereto, using patent
counsel of their choice; provided, however, that MAXXON shall have reasonable
opportunities to advise LICENSORS with respect to marketing and other
considerations related to the Licensed Products and related needs for
intellectual property protection, and MAXXON shall cooperate with LICENSORS with
respect to the filing, prosecution and maintenance of such patent applications
and patents. LICENSORS shall
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cooperate and coordinate with MAXXON on such filings and provide copies of
material documents relevant to any such filings in sufficient time to review and
comment upon such documents before filed. All attorneys' fees and expenses,
filing fees and other costs of preparing, filing and prosecuting such
applications patent issuance shall be the responsibility of LICENSORS. If
LICENSORS elect not to pay the expenses of a patent application or maintain an
issued patent included within the Patent Rights or seek a patent in a
jurisdiction which MAXXON believes is important to protect the rights of the
Invention, MAXXON shall have the right to pursue such patent protection and
charge the costs thereof to LICENSORS; provided, however, MAXXON shall notify
LICENSORS.
VI. CONFIDENTIALITY
MAXXON has entered into a Confidentiality Agreement with LICENSORS prior to
the date hereof. The obligation of confidentiality thereunder shall continue in
accordance therewith; provided, however, the obligation of confidentiality shall
not apply to information which is:
(a) In the public domain or which becomes generally available to the
public through no fault of the receiving party; or
(b) Already known to or in the possession of the receiving party prior to
disclosure by the disclosing party; or
(c) Disclosed on a non-confidential basis from a third party having the
right to make such a disclosure; or
(d) Independently developed by the receiving party (by activity not
associated with the Patent Rights); or
(e) Not in fact confidential, proprietary or competitively sensitive; or
(f) Required to be disclosed by law or governmental order.
VII. INFRINGEMENT
7.01 THIRD PARTY INFRINGEMENT OF PATENT RIGHTS. MAXXON and LICENSORS shall
promptly provide written notice to the other party of any alleged infringement
by a third party of the Patent Rights and provide such other party with any
available evidence of such infringement. In the event there is good reason to
believe infringement of any of the Patent Rights is occurring, the parties will
jointly take prompt action to xxxxx or settle such infringement. Either party
shall have the right to institute an action in its own name in so far as
permitted by law to xxxxx the infringement and may join the other as a party
plaintiff.
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7.02 ENFORCEMENT AND DEFENSE. MAXXON shall have the right to prosecute and
defend, at its own expense and utilizing counsel of its choice, any claim of
infringement of or challenge to the validity of the Patent Rights. MAXXON shall
promptly provide LICENSORS copies of all material documents in such proceedings.
No settlement, consent judgment or other voluntary final disposition of any such
suit may be entered into without the written consent of LICENSORS, which consent
shall not unreasonably be withheld.
7.03 COSTS OF ENFORCEMENT AND DEFENSE. In the event that MAXXON shall
undertake the enforcement or defense of the Patent Rights, MAXXON shall have the
right to withhold and set off royalties payable hereunder to LICENSORS to cover
their equal share of all such costs and expenses. In the event MAXXON recovers
from the infringer MAXXON's legal fees or other expenses of litigation, it shall
promptly reimburse LICENSORS any retained royalties.
7.04 CONTROL. If within six (6) months after receiving notice of any
alleged infringement of the Patent Rights by a third party, MAXXON shall have
been unsuccessful in persuading the alleged infringer to desist or shall not
have brought and shall not be diligently prosecuting an infringement action, or
if MAXXON shall notify LICENSORS at any time prior thereto of its intention not
to bring suit against the alleged infringer, then LICENSORS shall have the
right, but not the obligation, to prosecute, at its own expense, utilizing
counsel of its choice, any infringement of the Patent Rights, and LICENSORS may,
for such purposes, join MAXXON as a party plaintiff. The total cost of any such
infringement action commenced solely by LICENSORS shall be borne by LICENSORS;
and LICENSORS shall keep any recovery or damages for past infringement derived
therefrom.
7.05 COOPERATION. In any suit to enforce or defend the Patent Rights
pursuant to this Agreement, the party not in control of such suit shall, at the
request and expense of the controlling party, cooperate in all respects and, to
the extent reasonably possible, have its employees testify when requested and
make available relevant records, papers, information, samples, specimens, and
the like.
7.06 DAMAGES. In the event MAXXON institutes an action for infringement of
Patent Rights and a settlement is entered into or monetary damages are awarded
in a final non-appealable judgment, the amount paid as a result of such
settlement or the monetary damages awarded shall be applied first to the payment
of MAXXON's unpaid attorney's fees incurred in bringing the action. Any such
recovery shall be included in MAXXON's calculation of Net Sales, applied to the
quarter in which such recovery is obtained.
7.07 INFRINGEMENT CLAIMS. Each party shall promptly notify the other upon
receipt of any information regarding any proceedings commenced or threatened
against either party or any purchaser of a Licensed Product on the ground that
the manufacture, use, sale or possession of the Licensed Product is an
infringement of any third party's intellectual property rights. MAXXON and
LICENSORS shall jointly defend all suits brought against it as a result of the
exercise of the rights granted hereunder, and each agrees to render all
reasonable assistance in any such proceedings. The
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costs of all such actions shall be borne equally by the parties. Payment of any
amounts which may be recovered by such third party by way of judgement, award,
decree, or settlement, that resulted from infringement of third party patent
rights by a Licensed Product, including attorneys' fees and expenses and other
costs related thereto, shall be shared equally by the parties. Each of the
LICENSORS and MAXXON agrees not to settle or compromise any action, suit or
proceeding in a manner that would materially and adversely affect the rights of
the other or the Patent Rights, without the written consent of the other.
VIII. WARRANTIES AND INDEMNITIES
8.01 DISCLAIMERS. Nothing in this Agreement shall be construed as:
(a) A warranty or representation by LICENSORS as to the validity or scope
of the Patent Rights, except that LICENSORS reasonably believe that
the Patent Rights do not infringe the rights of others; or
(b) A warranty or representation by LICENSORS that anything made, used,
sold, or otherwise disposed of through the License granted herein is
or will be free from infringement of patents, copyrights, trademarks,
or other proprietary rights of third parties.
8.02 GENERAL REPRESENTATIONS. Each party represents and warrants to the
other that: (i) it has all requisite authority and power to enter into and
perform its obligations under this Agreement; (ii) the person who has executed
this Agreement for such party has all requisite authority to do so for and on
behalf of that party; and (iii) this Agreement is valid, binding and enforceable
in accordance with its terms.
IX. INDEMNIFICATION
9.01 INDEMNIFICATION. Each party agrees to indemnify, defend and hold
harmless the other party and its directors, officers, employees, agents and
representatives, and their respective successors, heirs and assigns
("Indemnities"), against any liability, damage, loss or expenses (including
reasonable attorneys' fees and expense of litigation) incurred by or imposed
upon any one of them in connection with any claims, suits, actions, demands or
judgments arising out of any theory of law arising by reason of a breach of its
duties hereunder. With respect to infringement by the Invention of third party
intellectual property rights, each party understands and agrees that each is
entering into this Agreement reasonably believing that the Invention does not
infringe the rights of others, but no assurance is given by either party to that
effect. Each party shall give prompt written notice to the other of the
commencement of any action, suit, or proceeding for which indemnification may be
sought and shall cooperate reasonably with the other in the defense and
prosecution thereof. Neither party may settle any such dispute where the
settlement adversely affects the rights of the other without the written consent
of the other.
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9.02 Diclaimer. LICENSORS MAKE NO REPRESENTATIONS AND EXTEND NO WARRANTIES
OF ANY KIND, EXPRESSED OR IMPLIED, EXCEPT TO THE EXTENT THAT LICENSORS OWN THE
INVENTION AND THE PATENT RIGHTS AND THAT THEY REASONABLY BELIEVE THAT INVENTION
AND PATENT RIGHTS DO NOT INFRINGE ANY RIGHTS OF ANY OTHER PERSON OR ENTITY.
X. PATENT MARKINGS
The parties each agree to comply with all applicable laws, rules and
regulations applicable to its performance hereunder. MAXXON will require any
manufacturers to comply with all applicable laws relating to the marking of
Licensed Products on packaging with patent pending, patent numbers, copyrights,
and other intellectual property notices and legends required to maintain the
intellectual property rights licensed in this Agreement.
XI. MISCELLANEOUS
11.01 MANNER OF PAYMENT. All payments hereunder shall be made by check to
LICENSORS. MAXXON shall not withhold taxes required to be paid to a taxing
authority on account of such income to LICENSORS, except as required by
applicable law. Only where required to do so, MAXXON shall withhold taxes in
accordance with applicable law and inform LICENSORS of all amounts so withheld.
All such tax liabilities are the sole responsibility of LICENSORS.
11.02 PROVISIONS CONTRARY TO LAW. The parties agree to comply with all
laws, rules and regulations applicable to the performance of their obligations
hereunder.
11.03 NOTICES. Any notice may be initially given by facsimile with
confirmation required or permitted to be given by this License by postpaid,
first class, registered or certified mail addressed as set forth below unless
changed by notice so given:
For MAXXON: For LICENSORS:
MAXXON, INC. Xxx Xxxxxxx
0000 Xxxxx Xxxx, Xxxxx 000 c/o Petroxx Resources, Inc.
Xxxxx, XX 00000-0000 0000 Xxxx 00xx-0 Xxxx
Attn: Xxxxxxx Xxxxx Xxxxx, XX 00000
Phone: (000) 000-0000 Phone: (000) 000-0000
Fax: (000) 000-0000 Fax: (000) 000-0000; and
Xxxxxxx X. Xxxxxxxxx
Xxxxx 0 Xxx 000
Xxxxx, XX 00000
Phone: (000) 000-0000
Cell: (000) 000-0000
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Such notices properly addressed shall be effective upon receipt by the party to
whom notice is sent.
11.04 DISPUTE RESOLUTION. The parties agree to use good faith reasonable
diligence to seek to resolve all disputes by mutual agreement. All disputes
arising hereunder not resolved by mutual agreement shall be resolved by binding
arbitration conducted in English in Tulsa, Oklahoma in accordance with the
Commercial Rules of Arbitration of the American Arbitration Association. The
parties agree to be fully and finally bound by a decision made in arbitration.
Each party agrees to submit to and not contest personal jurisdiction or venue in
Tulsa County, Oklahoma. The prevailing party in any such proceeding shall be
entitled to be awarded its attorneys' fees and expenses, enforcement costs and
such other relief as the court of competent jurisdiction shall award.
11.05 FORCE MAJEURE. Neither party to this Agreement shall be liable for
delay or failure in the performance of any of its obligations hereunder, except
for the payment of money, if such delay or failure is DUE TO CAUSES BEYOND ITS
REASONABLE CONTROL. THE PARTY AFFECTED BY A FORCE MAJEURE event shall use its
good faith diligent efforts to remedy such event as soon as is reasonably
possible.
11.06 ASSIGNMENTS. This Agreement may not be assigned by either party
without the written prior consent of the other party, which consent shall not be
unreasonably withheld; provided, however, MAXXON may assign this Agreement or
any portion hereof to an affiliate or to a successor of all or substantially all
of its business relating to the Licensed Products without the consent of
LICENSORS and MAXXON shall provide LICENSORS notice of any such assignment.
Assignees of this Agreement may also assign this Agreement in the manner
described above. Assignees are bound by all the obligations of this Agreement.
The parties hereto agree that each is acting as an independent contractor and
not as an agent of the other or as joint venturers.
11.07 WAIVERS AND MODIFICATIONS. The failure of any party to insist on the
performance of any obligation hereunder shall not act as a waiver of such
obligation. No waiver, modification, release, or amendment of any obligation
under this Agreement shall be valid or effective unless in writing and signed by
both parties hereto.
11.08 SUCCESSORS IN INTEREST. This Agreement shall inure to the benefit of
and be binding on the parties' permitted assigns, successors in interest, and
subsidiaries.
11.09 CHOICE OF LAW AND JURISDICTION. This Agreement is subject to and
shall be construed and enforced in accordance with the laws of Oklahoma.
11.10 ENTIRE AGREEMENT. This Agreement constitutes the entire agreement
between the parties as to the subject matter hereof, and all prior negotiations,
representations, agreements and understandings are merged into, extinguished by
and completely expressed by this Agreement.
11.11 NO EFFECT ON OTHER AGREEMENTS. This Agreement shall not alter or
affect in any way any agreement by or between the parties or their affiliates
with respect to any subject.
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11.12 FAILURE TO OBTAIN A US PATENT. LICENSORS agree to use their best
efforts to cause the US Patent Application to be approved, resulting in the
issuance of valid US patents covering the Invention. In the event that a US
patent is not issued after LICENSORS have used their best efforts in that
effort, these shall not be any liability by LICENSORS to MAXXON by reason of the
failure to secure the issuance of a US patent covering the Invention.
IN WITNESS WHEREOF, the parties have duly executed this Agreement on the
date written below.
MAXXON, INC. LICENSORS:
By ______________________________ ____________________________________
Xxxxxxx Xxxxx, President Xxxxxxx X. Xxxxxxxxx, Xx.
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Xxxx Xxxxxx
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Xxx Xxxxxxx
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ADDENDUM
THIS ADDENDUM IS ENTERED INTO THIS 18TH day of November, 1999, between
Maxxon, Inc. and Xxxxxxx X. Xxxxxxxxx, Xx., Xxx Xxxxxxx, and Xxxx Xxxxxx
("Licensors"). The parties agree as follows:
1. This Addendum shall supercede and clarify the terms and conditions
contained in the Exclusive License Agreement between the parties. If the terms
and conditions of this Addendum conflict the Exclusive License Agreement, this
Addendum shall control.
2. The Exclusive License Agreement covers only the Xxxx Syringe and
improvements and modifications thereto. The Exclusive License Agreement does not
apply in any way to any other invention, idea or patents of Licensors.
3. Maxxon agrees to pay Licensors royalties at the rate of 4% of gross sales
of Licensed Products. There shall be no deductions taken into account in
determining the royalty of 4% of gross sales of Licensed Products. All
deductions listed under the definition of Net Sales shall be deleted, and all
references to Net Sales shall refer to gross sales.
4. The royalty of 4% of gross sales due Licensors shall remain the property of
Licensors and shall be deemed a covenant running with the all rights concerning
the Xxxx Syringe. In no manner, either expressed or implied, does Maxxon have
the right to change this gross royalty of 4% due to Licensors.
5. In the event Maxxon files bankruptcy or an involuntary petition in
bankruptcy is successful against Maxxon, at the election of Licensors, this
agreement shall immediately be terminated, and Licensors shall be vested with
all right, title, and interest to the patent or any other right regarding the
Xxxx Syringe.
6. Paragraph 7.03 is amended to read as follows:
7.03. Costs of Enforcement and Defense. In the event MAXXON shall undertake
the enforcement or defense of the Patent Rights, MAXXON shall pay the costs
thereof, and MAXXON shall not seek or be entitled to reimbursement from
LICENSORS for any amount thereof.
7. The parties acknowledge that other than the amendments and clarifications
contained in this Addendum, all other terms and conditions of the Exclusive
License Agreement shall remain in full force and effect.
In Witness Whereof, this Addendum was executed the day and year first
written above.
MAXXON, INC.
By_________________________________ ____________________________________
Xxxxxxx X. Xxxxx, President Xxxxxxx X. Xxxxxxxxx, Xx.
--_________________________________ ____________________________________
Xxx Xxxxxxx Xxxx Xxxxxx
