Exhibit 10.20
Dated 28 February 2002
BIOCOMPATIBLES LIMITED
- and -
COOPERVISION INTERNATIONAL HOLDING COMPANY LP
- and -
THE XXXXXX COMPANIES, INC.
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PATENT AND TRADE XXXX LICENCE
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XXXXXX XXXXXXX XXXXXXX
Xxxxxxxxx
00 Xxxxxxxx Xxxxxxxxxx
Xxxxxxxxxxx
Xxxxxx XX0X 0XX
T:x00(0)00 0000 0000
F:x00(0)00 0000 0000
DX 41 London
Ref:JWR/DVP
Index
Clause No.
1. Definitions and interpretation................................ 3
2. Grant......................................................... 5
3. Term.......................................................... 6
4. Marking....................................................... 6
5. Maintenance of Licensed Patents and Trade Marks............... 8
6. Improvements.................................................. 9
7. Infringement.................................................. 10
8. Disclaimer of representations and warranties.................. 11
9. Indemnity..................................................... 12
10. Confidentiality and disclosure of Confidential Information.... 12
11. Termination................................................... 13
12. Effects of termination........................................ 14
13. Force majeure................................................. 15
14. Severability.................................................. 15
15. Variation..................................................... 15
16. Assignment.................................................... 15
17. Relationship between the parties.............................. 16
18. Entire agreement.............................................. 16
19. Notices....................................................... 16
20. Waiver........................................................ 17
21. Cumulative remedies........................................... 17
22. Rights of third parties....................................... 18
23. Publicity..................................................... 18
24. Precedence.................................................... 18
25. Counterparts.................................................. 18
26. Governing law and jurisdiction................................ 18
SCHEDULE 1................................................................. 21
Patents being licensed........................................ 22
SCHEDULE 2................................................................. 23
Trade Marks................................................... 23
SCHEDULE 3................................................................. 24
Existing Agreements........................................... 24
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THIS LICENCE is made on 28 February 2002
BETWEEN
(1) BIOCOMPATIBLES LIMITED an English registered company number 1833264 whose
registered office is at Xxxxxxx House, Farnham Business Park, Xxxxxx Xxxx,
Xxxxxxx, Xxxxxx, XX0 0XX ("Licensor"); and
(2) COOPERVISION INTERNATIONAL HOLDING COMPANY LP whose registered office is at
c/o The Xxxxxx Companies, Inc., 0000 Xxxxxxxxxx Xxxx Xxxx, Xxxxx 000,
Xxxxxxxxxx, XX 00000, Xxxxxx Xxxxxx of America ("Licensee"); and
(3) THE XXXXXX COMPANIES, INC. whose principal office is at 0000 Xxxxxxxxxx
Xxxx Xxxx, Xxxxx 000, Xxxxxxxxxx, XX 00000, Xxxxxx Xxxxxx of America
("Xxxxxx").
INTRODUCTION
(A) Licensor is registered as the proprietor of the patents and the applicant
in respect of the patent applications short particulars of which are set
out in schedule 1. In addition, Licensor is the registered proprietor of
the trade marks and the applicant in respect of the trade xxxx applications
which are set out in schedule 2.
(B) The parties are willing to enter into a licence under such licensed patents
and trade marks on the terms as set out in this agreement.
AGREED TERMS
1. Definitions and interpretation
1.1 In this agreement the following words and expressions have the following
meanings:
(a) "Confidential Information" means any and all technical information,
data, materials and other information relating to the business of
either of the parties, which one party (the "Disclosing Party")
provides to the other party (the "Receiving Party") hereunder orally,
in writing or in any other tangible form, but shall not include any
portion thereof which:
(i) is known to the Receiving Party, as evidenced by the Receiving
Party's written records, before receipt thereof under this
agreement;
(ii) is disclosed to the Receiving Party by a Third Party having a
right to make such disclosure;
(iii) is or becomes patented, published or otherwise part of the
public domain through no fault of the Receiving Party; or
(iv) is independently developed by or on behalf of the Receiving
Party, as evidenced by the Receiving Party's written records,
without recourse to such Confidential Information disclosed
under this agreement.
(b) "Existing Agreements" means the agreements referred to in schedule 3
and which shall refer to the Existing Agreements in their form as at
the date of this agreement.
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(c) "Field" means vision correction, soft contact lens care and cosmetic
applications.
(d) "Group" means in relation to a party, its subsidiaries, its holding
company and any subsidiaries of such holding company. A company is a
"subsidiary" of another company (its "holding company") if that other
company, directly or indirectly, through one of its subsidiaries:
(i) holds a majority of the voting rights in it; or
(ii) is a member or shareholder of it and has the right to appoint or
remove a majority of its board of directors or equivalent
managing body; or
(iii) is a member or shareholder of it and controls alone, pursuant to
an agreement with other shareholders or members, a majority of
the voting rights in it; or
(iv) has the right to exercise a dominant influence over it pursuant
to its constitutional documents or pursuant to a control
contract.
(e) "Improvement" means any improvement, modification, adaptation or
alteration to the inventions the subject of the Licensed Patents which
falls within a claim of the Licensed Patents which is developed or
created within two years of the date of this agreement.
(f) "Infringer" means a third party that infringes or makes unauthorised
use of any of the Licensed Patents or Trade Marks.
(g) "Infringement" means any infringement or unauthorised use of any of
the Licensed Patents or Trade Marks by an Infringer within the Field.
(h) "Licensed Patents" means the patents and patents applications as
listed in Schedule 1 (which may be updated from time to time by mutual
agreement of the parties) including any continuing applications,
provisional applications, divisional applications or continuation in
part applications relating to such patent applications and any
national or international patent applications claiming priority from
such patent applications anywhere in the world and any reissue or
renewals or re-examinations of such patents and any extensions of the
exclusivity granted in connection with such patents.
(i) "Patent Licence Term" has the meaning as specified in clause 3.1.
(j) "Product" means a soft contact lens or a soft contact lens care
solution manufactured, marketed or sold for use within the Field.
(k) "Share Sale Agreement" means the International Share Sale Agreement
between Biocompatibles International plc, Aspect Vision Holdings
Limited and The Xxxxxx Companies, Inc. dated 15 January 2002.
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(l) "Trade Xxxx Licence Term" has the meaning as specified in clause 4.1.
(m) "Trade Marks" means the trade marks particulars of which are set out
in Schedule 2.
1.2 References to "this agreement" include (exhaustively) this agreement and
any schedules to it as may be varied from time to time in accordance with
its provisions. The introduction forms part of this agreement but headings
are for ease of reference only and shall not affect the meaning of this
agreement.
1.3 In this agreement, any reference to:
(a) any statute or statutory provision includes a reference to that
statute or statutory provision as amended, extended or re-enacted and
to any regulation, order, instrument or subordinate legislation under
the relevant statute or statutory provision;
(b) the singular includes a reference to the plural and vice versa;
(c) any paragraph of the introduction, clause, sub-clause or schedule is
to a paragraph of the introduction, clause, sub-clause or schedule (as
the case may be) of or to this agreement;
(d) the word "include" or "including" is, unless otherwise stated, to be
construed without limitation to the generality of the preceding words;
and
(e) any person includes any reference to a body corporate, unincorporated
association or a partnership and any reference to any party who is an
individual is also deemed to include his respective legal personal
representative(s).
1.4 In this agreement any reference to a "law" includes common or customary law
and any constitution, decree, judgment, legislation, order, ordinance,
regulation, statute, treaty or other legislative measure, in each case of
any jurisdiction whatsoever (and "lawful" and "unlawful" shall be construed
accordingly).
1.5 Except for the Existing Agreements, each reference in this agreement to
this agreement or any other agreement, document or deed shall be construed
as a reference to this agreement or such other agreement, document or deed
as each of the same may be amended, varied, novated or supplemented from
time to time.
2. Grant
2.1 Licensor grants to Licensee, and Licensee accepts, an exclusive, subject to
the rights granted to third parties by virtue of the Existing Agreements,
royalty-free licence under the Licensed Patents to research, develop,
manufacture, use, supply, offer to supply, sell, dispose, import, keep and
otherwise exploit Products for the Patent Licence Term in the jurisdictions
covered by the Licensed Patents.
2.2 Licensee may:
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(a) sub-license any of its rights under this agreement to a member of its
Group; or
(b) sub-contract the manufacture of, or other dealings in, the Products
under the licence granted in clause 2.1 to any third party
provided that Licensee (1) ensures that there are included in the terms of
the sub-licence or sub-contract obligations and undertakings on the part of
the sub-licensee or subcontractors equivalent to those in this agreement
and (2) any breach or other default by the sub-licensee or subcontractor
will be deemed to be a breach or default by Licensee.
2.3 Save as expressly set out in this agreement no licence under any patent or
other right is granted.
3. Term
3.1 This agreement takes effect on the date of this agreement and (unless
terminated under clause 15) shall continue on a country by country basis in
respect of the Licensed Patents until the later of the date of expiry of
the last to expire of the Licensed Patents subsisting in each such country
respectively, on which date it shall terminate (the "Patent Licence Term").
3.2 During the Patent Licence Term, save with the prior written consent of
Licensee, Licensor shall not make any use in relation to any Product of any
materials sourced from Seal Sands Chemicals Limited under the agreement
with that company referred to in Schedule 3 herein where such use would
fall within any claim of the Licensed Patents.
4. Marking
4.1 Licensee is hereby granted an exclusive, subject to the rights granted to
third parties by virtue of the Existing Agreements, royalty free licence to
use the Trade Marks in relation to Products, which licence may be
terminated immediately by notice:
(a) on the termination of this agreement for any reason;
(b) in the event that Licensee is in material and persistent breach of
clause 4.4
(the "Trade Xxxx Licence Term").
4.2 Licensor shall not, during the Trade Xxxx Licence Term, grant any licence
to use the Trade Marks in relation to Products to any third party, except
with the prior express written consent of Licensee.
4.3 During the Trade Xxxx Licence Term, Licensee may at its option xxxx all
packaging and advertising material relating to Products manufactured, sold
or disposed of by it under this agreement with the Trade Marks and such
marking shall be:
(a) accompanied by a notice stating that the Trade Marks are the trade
marks of Licensor; and
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(b) used in accordance with this clause 4.
4.4 In order to maintain the standards which are essential for the protection
of the value of the Trade Marks, during the Trade Xxxx Licence Term, where
Licensee exercises the rights granted to it under clause 4.3 above,
Licensee shall use (and shall ensure that permitted sub-licensees and
subcontractors of Licensee use) the Trade Marks only in connection with the
supply, disposal, advertising, distribution and promotion of Products where
the Products have been manufactured in accordance with good industry
practice and to standards and procedures consistent with those used or
applied in respect of the manufacture of Products prior to the date of this
agreement by Licensor.
4.5 During the Patent Licence Term, if Licensee (or its permitted sub-licensees
and subcontractors) makes any reference in any advertising, promotional or
other materials used for Products to the technology licensed herein under
the Licensed Patents, Licensee shall (and shall ensure that its permitted
sub-licensees and subcontractors) include with reasonable prominence a
notice in any such advertising, promotional or other materials stating that
the technology is licensed under patents owned by Licensor.
4.6 Licensee and its permitted sub-licensees do not by virtue of this agreement
obtain or claim any right, title or interest in or to the Trade Marks
except the rights of use as are specifically set out in this agreement.
4.7 Licensee shall not (and shall ensure that permitted sub-licensees and
subcontractors of Licensee do not):
(a) adopt or use any trade xxxx, symbol or device which incorporates or is
confusingly similar to, the Trade Marks or unfairly competes with the
Trade Marks;
(b) at any time, whether during or after termination of this Agreement,
use the Trade Marks as part of any corporate business or trading name
or style of Licensee;
(c) use the Trade Marks in any way which would tend to allow any of them
to become generic, lose their distinctiveness, become liable to
mislead the public, or be materially detrimental to or inconsistent
with the good name, goodwill, reputation and image of Licensor;
(d) purport to be or represent to any Third Party that Licensee is an
agent or representative of Licensor.
4.8 Licensee acknowledges and agrees that:
(a) ownership of the Trade Marks, and of the goodwill connected with and
symbolised by the Trade Marks, remains the property of Licensor, and
use of the Trade Marks by Licensee is use on behalf of Licensor;
(b) the goodwill in the Trade Marks which Licensee derives by use of the
Trade Marks, or by being connected with the Trade Marks in the course
of trade (whether arising at common law or otherwise), shall accrue to
Licensor, and Licensee shall (before or after
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termination of this agreement) at Licensor's request and expense (as
to out-of-pocket expenses only) assign the same, with all rights of
action then accrued, to Licensor without payment.
4.9 Licensee shall not (and shall ensure that permitted sub-licensees and
subcontractors of Licensee do not), while this agreement is in force or
subsequently for so long as any registration of or application for the
Trade Marks is in force or Licensor is applicant for or registered as
proprietor of the Trade Marks or any substantially similar marks in any
part of the world:
(a) challenge Licensor's ownership of the Trade Marks in any part of the
world; nor
(b) apply for registration of the Trade Marks (or any confusingly similar
xxxx) for any goods or services in any part of the world.
5. Maintenance of Licensed Patents and Trade Marks
5.1 Subject to clause 5.2, Licensor shall:
(a) pay all associated costs and official fees and shall use all
reasonable endeavours to obtain patents on the applications listed in
schedule 1, and after grant and during the Patent Licence Term to keep
in force:
(i) any patents so granted; and
(ii) the patents listed in schedule 1, (except that where a European
patent has been or is about to be granted for any country any
national patent or application for the same country may be
surrendered or allowed to be revoked); and
(b) during the Patent Licence Term pay all renewal fees.
5.2 Subject to clause 5.3, during the Patent Licence Term Licensor may:
(a) abandon any of the Licensed Patents; or
(b) allow any of the Licensed Patents to lapse;
(c) amend the specification of any of the Licensed Patents
provided that it first gives Licensee at least 90 days' notice in writing
of its intention to do so. Where Licensor intends to abandon or allow to
lapse a Licensed Patent (an "Abandoned Patent") such notice shall operate
to grant Licensee an exclusive option, exercisable any time during the
period of 90 days from receipt by Licensee of such notice by notice in
writing to Licensor, to have the Abandoned Patent assigned to it by
Licensor for one pound sterling, subject to Licensor being released from
any and all obligations in respect of such Abandoned Patent (including
those in clause 5.1).
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5.3 Licensor may abandon any one or more of the Licensed Patents within the BCP
123 designation (namely, patent 2098823) (a "BCP 123 Patent") without prior
notice to Licensee provided that, in any particular case, there is in force
within the relevant jurisdiction a Licensed Patent within the BCP 19
designation which provides at least equivalent coverage of scope as the BCP
123 Patent insofar as it relates to the Licensee's rights under this
agreement.
5.4 During the Trade Xxxx Licence Term, Licensor shall pay all renewal fees for
all registrations of the Trade Marks and shall pay all associated costs and
official fees and shall use all reasonable endeavours to obtain
registrations of the trade xxxx applications within the Trade Marks and
Licensee shall provide, at the reasonable request and expense of Licensor,
all necessary assistance in maintaining such registrations or prosecuting
such applications in respect of the Trade Marks.
5.5 During the Trade Xxxx Licence Term, if Licensor no longer wishes to
maintain any of the Trade Marks in respect of any particular territory
Licensor shall give 90 days' prior written notice of this fact to Licensee
and Licensee shall have an option to purchase such Trade Marks for (pound)1
consideration.
5.6 During the Trade Xxxx Licence Term, at Licensee's reasonable request and at
Licensee's expense, Licensor shall provide reasonable assistance to
Licensee in making applications to the relevant registries for either the
registration of this agreement as a licence or the registration of Licensee
as a registered user of the Licensed Patents and Trade Marks in respect of
each registration included in this agreement.
6. Improvements
6.1 During the first two years of this agreement, if either party (or a member
of its Group involved with the development of the subject matter of the
Licensed Patents) makes any Improvement then (subject to clause 10 and to
the extent permitted by law and/or contract) it shall disclose the same to
the other party (which disclosure may be made in confidence pending filing
of patent applications), but shall not be obliged to make such disclosure:
(a) unless the Improvement is substantive; or
(b) after any notice to terminate this agreement has been given,
Improvements shall be disclosed annually or at such other intervals agreed
between the parties.
6.2 In the case of Improvements disclosed by Licensor, such Improvements shall
be licensed to Licensee in accordance with the provisions of this
agreement. In the case of Improvements disclosed by Licensee, Licensor
shall be granted a non-exclusive, non-terminable, (except in circumstances
equivalent to those set out in clause 11.1, mutatis mutandis) royalty-free
and paid up worldwide licence to use (and to assign or sub-license the
right to use on equivalent terms to those accepted by Licensee hereunder)
the same outside the Field during the term of this agreement and
subsequently.
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7. Infringement
7.1 Each of Licensee and Licensor agrees promptly to notify the other of any
Infringements or any suspected Infringements or any claim by any third
party that Licensee's use of the rights licensed hereunder infringes any
intellectual property rights of any third party of which they become aware.
7.2 Licensee may initiate proceedings alleging an Infringement in its own name
and at its own expense. Licensor shall, at the reasonable request and cost
of Licensee, give Licensee any assistance it may reasonably request in
connection with such proceedings. Licensee shall have sole discretion
regarding selection of counsel and venue, and ultimate and determinative
authority regarding patent litigation strategy; provided, that Licensee
shall keep Licensor fully informed as to the conduct of such proceedings.
If so requested by Licensee and necessary for Licensor to be a plaintiff or
claimant party, Licensor shall join in any such infringement proceedings as
a plaintiff or claimant party with Licensee or allow Licensee to take such
proceedings in Licensor's name.
7.3 If Licensee does not, within three (3) months after having any Infringement
drawn to its attention by Licensor, commence an action for such
Infringement pursuant to clause 7.2, then Licensor shall be entitled (but
not obliged) to commence proceedings for such Infringement in its own name
and at its own expense. Licensee shall, at the request and cost of
Licensor, give Licensor any assistance reasonably requested by Licensor in
connection with such proceedings. Licensor shall keep Licensee fully
informed as to the conduct of such proceedings. Licensee shall have the
right to participate in the decision-making process with regard to any
decisions that would reasonably affect the scope of the patent claims. Any
sums recovered in the course of such proceedings from the Infringer,
whether by way of damages, account of profits, costs or otherwise, shall be
applied first in reimbursing Licensor for its external costs and expenses
of such proceedings (which shall include any related allegation or claim
made by the defendant that any rights or patent claim asserted in such
action are invalid and/or unenforceable), including legal fees and
expenses, patent attorney fees and expenses and experts' fees and expenses
(provided that Licensor shall not be responsible for legal expenses or
costs incurred by Licensee's counsel related to (i) monitoring or (ii)
participating in the litigation due to a conflict) and the balance shall be
paid to Licensee. If so requested by Licensor and necessary or desirable
for Licensee to be a plaintiff or claimant party, Licensee shall join in
any such infringement proceedings as a plaintiff or claimant party with
Licensor or allow Licensor to take such proceedings in Licensee's name.
7.4 If in the course of any infringement action brought by Licensee pursuant to
clause 7.2 or in the course of any infringement action brought by Licensor
pursuant to clause 7.3, an allegation or claim be made by the defendant in
such action that any rights or patent claim asserted in such action are
invalid and/or unenforceable, the party that brought the infringement
action (the "Controlling Party") shall bear all costs associated with, and
shall be solely responsible for, defending such allegation or claim. The
Controlling Party shall consult with the other party in all significant
matters concerning the defence of such allegation or claim of invalidity
and/or unenforceability, including issues of strategy and settlement, and
shall act in accordance with any reasonable request of the other party.
Neither party shall seek to settle or compromise such allegation or claim
of invalidity and/or unenforceability without the consent of the other
party.
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7.5 Where one party (the "Joining Party") becomes a party to proceedings at the
request of the other (the "Requesting Party") pursuant to clause 7.2 or
7.4, then the Requesting Party shall indemnify the Joining Party for any
costs or expenses incurred in respect of such proceedings and for any
liability for costs awarded to any other party and for which the Joining
Party is liable to pay.
7.6 In the event that a party becomes aware of any threatened or actual
opposition in respect of any patent application within the Licensed Patents
or any claim that any granted Licensed Patent is invalid, the party
becoming aware shall forthwith notify the other of such matter and the
parties shall consult with each other in good faith as to the defence of
such opposition or claim. If Licensor does not wish to defend any such
claim, and does not commence the defence of any such allegation or claim
within 2 months of notice of the allegation or claim, Licensee may do so
(but not otherwise), provided that Licensee shall bear all costs associated
with, and shall be solely responsible for, defending such allegation or
claim. Licensee shall consult with the Licensor on all significant matters
concerning the defence of such allegation or claim, including issues of
strategy and settlement, and shall act in accordance with any reasonable
request of Licensor. Neither party shall seek to settle or compromise such
allegation or claim of invalidity and/or unenforceability without the
consent of the other party.
8. Disclaimer of representations and warranties
8.1 Except as expressly set out in the Share Sale Agreement, Licensor does not
give any warranties or representations that exercise of the rights granted
to Licensee under this agreement, or manufacture, sale, disposal,
distribution or use of Products does not infringe the intellectual property
rights of any third parties and all representations, warranties or
conditions to that effect are hereby excluded.
8.2 Licensor does not give any warranties or representations that exercise of
the rights granted to Licensee under this agreement, or manufacture, sale,
disposal, distribution or use of Products shall not infringe the
intellectual property rights of any third parties and all representations,
warranties or conditions to that effect are hereby excluded.
8.3 Licensor gives no representation or warranty that any patent application
contained in the Licensed Patents will result in grant, or that any granted
patent contained in the Licensed Patents (or any patent now or subsequently
granted on any application) is or will be valid.
8.4 Licensor gives no representation or warranty that any trade xxxx
application within the Trade Marks will result in registration, or that any
registered Trade Xxxx (or any Trade Xxxx now or subsequently registered on
any application) is or will be valid.
8.5 Except as expressly set out in this agreement and as expressly set out in
the Share Sale Agreement, all conditions, warranties, representations and
other terms, whether express or implied by statute, common law, trade
practice or howsoever, are excluded.
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9. Indemnity
9.1 Licensee shall hold Licensor, members of its Group, its officers and
employees (the "Indemnified Parties") harmless and shall indemnify the
Indemnified Parties in respect of all claims, liabilities, costs, damages,
and expenses (including reasonable legal fees and expenses) which any or
all of the Indemnified Parties may incur, to which any or all Indemnified
Parties may become liable or which may be awarded against any or all of the
Indemnified Parties, to the extent that such arise from the exercise by
Licensee of any of the rights licensed to it under this agreement
including:
(a) any claims or allegations that the manufacture, use, sale, of disposal
of a Product infringes the intellectual property rights of any third
party; and
(b) any claims or allegations in respect of personal injury or death as a
result of use of the Products.
9.2 In consideration of Licensor entering into this agreement with Licensee,
Xxxxxx shall be jointly and severally liable to Licensor under the
indemnity set out under sub-clause 9.1 above as if Xxxxxx was named in
place of Licensee in such sub-clause and provided always that any defences
available to Licensee under the agreement shall be available to Xxxxxx
hereunder.
10. Confidentiality and disclosure of Confidential Information
10.1 The parties acknowledge and agree that during the term of this agreement,
each of them and the members of their Group may exchange Confidential
Information, and the disclosure and use of any such Confidential
Information shall be governed by the provisions of this clause 10.
10.2 Each party shall use the Confidential Information of the other party only
for the purpose of the activities contemplated by this agreement and shall
not disclose such Confidential Information to a third party except in
accordance with the provisions of this agreement. The parties shall ensure
that the members of their respective Groups keep all Confidential
Information exchanged hereunder confidential in accordance with the
provisions hereof as though those members were parties hereto.
10.3 Each party shall seek confidential treatment for the terms and conditions
of this agreement to the fullest extent permitted by any governmental
agency or self-regulatory organisation to which such party is required to
provide a copy of this agreement. Prior to seeking confidential treatment
from any governmental agency or self-regulatory organisation for any such
document, the party in question shall consult with the other and the
other's counsel and provide them with a reasonable opportunity to request
the inclusion of specified provisions in any request by the party in
question for confidential treatment.
10.4 Nothing contained in this agreement shall preclude either party from using
Confidential Information as may be necessary in obtaining governmental
marketing approvals, or in manufacturing or marketing products pursuant to
this agreement or in prosecuting patent applications. In the event that
Confidential Information is required by law or government
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regulations to be disclosed, the party required to disclose Confidential
Information shall promptly:
(a) inform the disclosing party of such requirement;
(b) use reasonable efforts to limit such disclosure, maintain
confidentiality to the extent possible; and
(c) permit the disclosing party to attempt to limit such disclosure by
appropriate legal means.
11. Termination
11.1 Licensor may terminate this agreement immediately by notice only if one or
more of the following events occurs (to the exclusion of any additional
common law rights to terminate):
(a) Licensee, or a member of Licensee's Group, whether individually or
jointly with others, challenges the validity of or opposes the grant
of any Patent (or assists a third party to do the same);
(b) Licensee becomes or is deemed insolvent;
(c) any distress or execution is levied on any of Licensee's property or
assets;
(d) Licensee makes or offers to make any arrangement or composition with
creditors;
(e) any resolution or petition to wind up Licensee's business (other than
for the purpose of amalgamation or reconstruction) is passed or
presented (and not dismissed or withdrawn within 21 days) or if a
receiver or administrative receiver of Licensee's undertaking,
property or assets is appointed or a petition is presented for the
appointment of an administrator (and not dismissed or withdrawn within
21 days);
(f) Licensee is subject to any proceedings which are equivalent or
substantially similar to any of the proceedings under sub-clause (b),
(c), (d) or (e) under any applicable jurisdiction;
(g) Licensee or any member of the Licensee's Group fails to pay within 14
days of date due (being the Payment Date (as such expression is
defined in the Promissory Notes referred to below) or such earlier
date pursuant to clause 3 of the Promissory Notes referred to below)
all amounts of principal due and payable on such date under certain
Promissory Notes issued on closing of, and in accordance with the
terms of Clause 6.3 of and Schedule 12 to, the Share Sale Agreement
(the "Promissory Notes") and as amended by or in accordance with the
Share Sale Agreement or the Repayment Deed dated on or about 28
February 2002 between, inter alios, Biocompatibles plc, Aspect Vision
Holdings Limited and The Xxxxxx Companies, Inc
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(h) Licensee or any member of the Licensee's Group fails to pay within 14
days of the due date for payment all amounts of interest due and
payable on such date under the Promissory Notes; or
(i) Licensee or any member of the Licensee's Group fails to pay within 14
days of the due date for payment all amounts due and payable under the
Arrangement and Administration Agreement dated on or about 28 February
2002 between Biocompatibles International plc, Aspect Vision Holdings
Limited and The Xxxxxx Companies, Inc.
12. Effects of termination
12.1 Termination of this agreement will not affect any accrued rights or
liabilities which either party may have by the time termination takes
effect.
12.2 In the event of termination of this agreement for any reason the following
shall survive:
(a) the confidentiality obligations of the parties; and
(b) the obligations of Licensee under this agreement to indemnify
Licensor.
12.3 In the event of termination of this agreement all licences granted under
this agreement shall terminate.
12.4 Subject to clause 12.3, after termination Licensee shall:
(a) make no further use of any:
(i) Licensed Patents (but this restriction shall only apply in
relation to any particular Licensed Patent during the life of
such Licensed Patent);
(ii) Trade Marks; and
(iii) Confidential Information supplied by Licensor;
(b) provide reasonable and prompt assistance to Licensor to cancel any
registered licences;
(c) as soon as practicable permanently and irretrievably erase all
Confidential Information from all computer memories and storage media;
(d) as soon as practicable return to Licensor all other records of and
documents containing Confidential Information (and all copies thereof)
in the possession, power or control of Licensee (or of a member of
Licensee's Group);
(e) not later than 14 days after such termination, supply to Licensor a
written certificate, signed by a director of Licensee, confirming that
the provisions of this clause 12.4 have been complied with.
14
13. Force majeure
13.1 Neither party shall be liable for any delay or failure in performing any of
its obligations under this agreement (excluding any obligations as to
payment of royalties) if such delay or failure is caused by circumstances
outside the reasonable control of the party concerned (a "Force Majeure
Event"). Such circumstances shall include acts or defaults of the other
party, acts of God or government, natural disasters, storms, fire, labour
disputes, failure or delay of transportation or default by suppliers.
13.2 The party claiming the Force Majeure Event shall:
(a) promptly notify the other in writing of the reasons for the delay or
stoppage and the likely duration and will make reasonable efforts to
overcome the delay or stoppage; and
(b) be excused from performance of its obligations for a reasonable period
(and in any event for the duration of the Force Majeure Event), and
the time for performance of its obligations shall be automatically
extended for that period.
14. Severability
If at any time any provision of this agreement is or becomes invalid
illegal or unenforceable in any respect under the law of any jurisdiction
then such provision shall be treated in such jurisdiction as severed from
the remaining provisions and neither the validity legality or
enforceability of the remaining provisions nor the validity legality or
enforceability of such provision under the law of any other jurisdiction
shall in any way be affected or impaired. In the event of any such deletion
the parties shall negotiate in good faith in order to agree an alternative
provision in place of the provision so deleted.
15. Variation
Variations to this agreement shall not be effective unless they are in
writing and signed on behalf of both parties by an authorised signatory.
16. Assignment
16.1 This agreement may be assigned by Licensee:
(a) to any member of its Group
(b) to any other person to whom it transfers the business in which the
Licensed Patents are used
provided that Licensee notifies Licensor of any such assignment and, if
Licensor so requires, procures that the assignee enters into an agreement
on the same terms as this agreement directly with Licensor.
15
16.2 Licensor may assign all or part of this agreement to any person to whom it
transfers all or some of the Licensed Patents and shall promptly notify
Licensee of any such assignment.
17. Relationship between the parties
Nothing in this agreement creates a partnership, agency relationship,
franchise, employment relationship or joint venture between the parties.
Neither party is permitted to enter into any agreement with a third party.
on behalf of the other, nor make any representation or give any warranty to
a third party on behalf of the other, or otherwise bind the other party in
any manner whatsoever without the consent of the other.
18. Entire agreement
18.1 This agreement and the Share Sale Agreement constitute the entire agreement
between the parties in relation to its subject matter and supersede any
previous agreement between the parties in relation to its subject matter.
18.2 Each party acknowledges and agrees that it has not been induced to enter
into this agreement in reliance upon any representation, warranty or term
other than as expressly set out in this agreement and the Share Sale
Agreement. The only remedy available to a party for breach of such
representation, warranty or term shall be for breach of contract.
18.3 Nothing in this agreement shall limit or exclude liability for fraud or
fraudulent misrepresentation.
19. Notices
19.1 Any notice in connection with this agreement (a "Notice") shall be:
(a) in writing in English;
(b) delivered by hand, fax, registered post or by courier using an
internationally recognised courier company.
19.2 A Notice to Licensor shall be sent to such party at the following address,
or such other address as Licensor may notify to Licensee from time to time:
Biocompatibles International plc
Xxxxxxx Xxxxx
Xxxxxx Xxxx
Xxxxxxx
Xxxxxx XX0 0XX
XX
16
Fax: 00000 000000
Attention: Xxxxxxx Xxxxx/Company Secretary
19.3 A Notice to Licensee shall be sent to such party at the following address,
or such other address as the Licensee may notify to Licensor from time to
time:
CooperVision International Holding Company LP
c/o The Xxxxxx Companies, Inc.
0000 Xxxxxxxxxx Xxxx Xxxx
Xxxxx 000
Xxxxxxxxxx, XX 00000
Xxxxxx Xxxxxx of America
Fax: 000-000-0000
Attention: Vice President of Legal Affairs & Secretary
19.4 A Notice shall be effective upon receipt and shall be deemed to have been
received:
(a) at the time of delivery, if delivered by hand, registered post or
courier;
(b) at the time of transmission in legible form, if delivered by fax.
20. Waiver
20.1 If a party delays in enforcing its rights under this agreement then unless
the party concerned expressly agrees otherwise, that delay shall not be
treated as waiving the rights of the party concerned.
20.2 The single or partial exercise of any right, power or remedy shall not
preclude any other or further exercise of that right, power or remedy.
20.3 Any waiver of a party's rights in relation to a particular breach of this
agreement shall not operate as a waiver of any subsequent breach.
20.4 No custom or practice of the parties at variance with the terms of this
agreement shall constitute a waiver of the rights of either party under
this agreement.
21. Cumulative remedies
Any right, remedy or power to which either party is or may become entitled
under this agreement or in consequence of the other's conduct may be
enforced from time to time separately or concurrently with any right or
remedy given by this agreement or now or afterwards provided for and
arising by operation of law so that such rights and remedies are not
exclusive of the other or others but are cumulative.
17
22. Rights of third parties
No term of this agreement shall be enforceable under the Contracts (Rights
of Third Parties) Xxx 0000 by a party other than the parties to this
agreement (or their permitted assignees).
23. Publicity
Neither party may include the other's name or any information concerning
the transactions referred to in this agreement in any of its publicity
material, press announcements or other communications without first
obtaining the other party's written consent, except that nothing shall
restrict the parties from complying with any regulation or legislation
pertaining to public announcements.
24. Precedence
In the event of any conflict between the provisions of this agreement and:
(a) the provisions of any formal or confirmatory licence used for recordal
purposes; or
(b) the Share Sale Agreement,
the provisions of this agreement shall prevail.
25. Counterparts
This agreement may be entered into in any number of counterparts, all of
which taken together shall constitute one and the same instrument. Any
party may enter into this agreement by executing any such counterpart.
26. Governing law and jurisdiction
26.1 This agreement shall be governed by and construed in accordance with
English law.
26.2 Each of the parties irrevocably agrees that the courts of England are to
have exclusive jurisdiction to settle any dispute which may arise out of or
in connection with this agreement and the documents to be entered into
pursuant to it and that accordingly any proceedings arising out of or in
connection with this agreement and the documents to be entered into
pursuant to it shall be brought in such courts. Each of the parties
irrevocably submits to the jurisdiction of such courts and waives any
objection to proceedings in any such court on the ground of venue or on the
ground that proceedings have been brought in an inconvenient forum.
18
This agreement has been executed and delivered as a deed on the date first
written above.
EXECUTED by BIOCOMPATIBLES )
LIMITED acting by )
/s/ Swag Xxxxxxx
-------------------------------
Authorised signatory
/s/ Xxxxx Xxxxx
-------------------------------
Authorised signatory
EXECUTED by COOPERVISION )
INTERNATIONAL HOLDING )
COMPANY LP acting by )
-------------------------------
Authorised signatory
-------------------------------
Authorised signatory
EXECUTED as a deed by THE XXXXXX )
COMPANIES, INC. acting by )
-------------------------------
Authorised signatory
-------------------------------
Authorised signatory
19
This agreement has been executed and delivered as a deed on the date first
written above.
EXECUTED by BIOCOMPATIBLES )
LIMITED acting by )
-------------------------------
Authorised signatory
-------------------------------
Authorised signatory
EXECUTED by COOPERVISION )
INTERNATIONAL HOLDING )
COMPANY LP acting by )
/s/ Xxxxx X. Xxxxxxx
-------------------------------
Authorised signatory
-------------------------------
Authorised signatory
EXECUTED as a deed by THE XXXXXX )
COMPANIES, INC. acting by )
/s/ Xxxxx X. Xxxxxxx
-------------------------------
Authorised signatory
-------------------------------
Authorised signatory
20
This agreement has been executed and delivered as a deed on the date first
written above.
EXECUTED by BIOCOMPATIBLES )
LIMITED acting by )
-------------------------------
Authorised signatory
-------------------------------
Authorised signatory
EXECUTED by COOPERVISION )
INTERNATIONAL HOLDING )
COMPANY LP acting by )
/s/ Xxxxx X. Xxxxxxx
-------------------------------
Authorised signatory
/s/ Xxxxxx X. Xxxxx
-------------------------------
Authorised signatory
EXECUTED as a deed by THE XXXXXX )
COMPANIES, INC. acting by )
/s/ Xxxxx X. Xxxxxxx
-------------------------------
Authorised signatory
/s/ Xxxxxx X. Xxxxx
-------------------------------
Authorised signatory
21
SCHEDULE 1
Patents being licensed
Client Ref. Country Appl. Number Priority Date Appl. Date Grant Date
BCP019 Austria 91918819.3 29-Oct-90 29-Oct-91 00-Xxx-00
XXX000 Xxxxxxx 91918819.3 29-Oct-90 29-Oct-91 00-Xxx-00
XXX000 Xxxxxxx 91918819.3 29-Oct-90 29-Oct-91 18-Dec-96
BCP019 France 91918819.3 29-Oct-90 29-Oct-91 00-Xxx-00
XXX000 Xxxxxxx 91918819.3 29-Oct-90 29-Oct-91 00-Xxx-00
XXX000 Xxxxxx 91918819.3 29-Oct-90 29-Oct-91 00-Xxx-00
XXX000 Xxxx Xxxx 532/1997 00-Xxx-00 00-Xxx-00
XXX000 Xxxxx 91918819.3 29-Oct-90 29-Oct-91 00-Xxx-00
XXX000 Xxxxxxxxxx 91918819.3 29-Oct-90 29-Oct-91 00-Xxx-00
XXX000 Xxxxxxxxxxx 91918819.3 29-Oct-90 29-Oct-91 00-Xxx-00
XXX000 Xxxxxxxxx 0000000-0 29-Oct-90 29-Oct-91 18-May-98
BCP019 Spain 91918819.3 29-Oct-90 29-Oct-91 00-Xxx-00
XXX000 Xxxxxx 91918819.3 29-Oct-90 29-Oct-91 00-Xxx-00
XXX000 Xxxxxxxxxxx 91918819.3 29-Oct-90 29-Oct-91 00-Xxx-00
XXX000 Xxxxxx Xxxxxxx 91918819.3 29-Oct-90 29-Oct-91 18-Dec-96
BCP019.1 Japan 517136/91 29-Oct-90 29-Oct-91 19-Dec-96
BCP019.1 DIV Japan 8-194131 29-Oct-90 05-Jul-96 03-Dec-99
XXXX00 Xxxxxx 95901536.3 00-Xxx-00 00-Xxx-00 00-Xxx-00
XXXX00 Xxxxxxx 95901536.3 00-Xxx-00 00-Xxx-00 00-Xxx-00
XXXX00 Xxxxx 7-514911 00-Xxx-00 00-Xxx-00 00-Xxx-00
XXXX00 Xxxxxxxxxxx 95901536.3 00-Xxx-00 00-Xxx-00 00-Xxx-00
XXXX00 Xxxxxx Xxxxxxx 95901536.3 00-Xxx-00 00-Xxx-00 00-Xxx-00
BCP123 Canada 2098823 21-Dec-90 20-Dec-91
22
SCHEDULE 2
Trade Marks
Application Registration
Country Trade xxxx designation Proprietor/Applicant number number Classes
-------------------- ------------------------- ---------------------- ----------- ------------ -------
Japan Biocompatibles-PC Device Biocompatibles Limited 10-61411 4468801 5,9,10
Switzerland Biocompatibles-PC Device Biocompatibles Limited 3190/1998 460506 5,9,10
Norway Biocompatibles-PC Device Biocompatibles Limited 9802340 202264 5,9,10
Australia Biocompatibles-PC Device Biocompatibles Limited 757183 757183 5,9,10
United Kingdom PC Inside (Series of 2) Biocompatibles Limited 2225139 2225139 5,9,10
Euro-Community (CTM) Biocompatibles -PC Device Biocompatibles Limited 000727131 5,9,10
Canada Biocompatibles-PC Device Biocompatibles Limited 876974 Pending n/a
23
SCHEDULE 3
Existing Agreements
Agreement between Biocompatibles Limited and Seal Sands Chemicals Limited dated
September 2000.
Undated agreement between Biocompatibles Limited and Specsavers (UK) Limited.
Distribution agreements between Biocompatibles Limited and any distributor under
which (a) the distributor distributes Products manufactured by Biocompatibles
Limited and (b) the distributor is granted rights under the Trade Marks in
relation to such Products.
24
