Exh. 10.3
AGREEMENT
Dated the 26 June 2005
by and between
OMRIX BIOPHARMECEUTICALS LTD. ("OMRIX")
An Israeli company duly registered and existing under the laws of Israel
of Tel Hashomer (MDA Building), Kiryat Ono
and
MEDIMOP MEDICAL PROJECTS LTD. ("MEDIMOP")
An Israeli company duly registered and existing under the laws of Israel
of 0 Xxxxxxxx Xxxxxx, Xx'xxxxx 00000 - Xxxxxx.
(the "PARTIES")
PREAMBLE
WHEREAS Omrix and Medimop were engaged in business of research, development and
manufacturing of a device comprised of Omrix's IP. and IP rights in a Mix-Ject
which belongs to Medimop (as appears in Exhibit "B" and marked MIXJECT(R) in
Exhibit "C") (the "DEVICE" and "MIX-JECT" respectively) to be used by Omrix as
part of its fibrin sealant products and/or any component & thereto (such as
thrombin) or combination of the components of fibrin sealant with any other
material(s) (the "FIELD");
AND WHEREAS The Parties (directly or through assignors) had signed agreements,
inter alia, on the 6/6/1996 ("THE 1996 AGREEMENT") and on 25/12/2000 ("THE 2000
AGREEMENT") and on the 21/7/2002 ("THE 2002 AGREEMENT") (collectively: "THE
AGREEMENTS");
AND WHEREAS THE Parties declare and agree that all rights and obligation under
the Agreements vest wholly and entirely in the Parties hereto to exclude any
right or liability to any of the original parties to the Agreements;
AND WHEREAS certain disputes arose between the parties in connection with their
respective rights and liabilities, whether under the Agreements or otherwise:
AND WHEREAS the Parties wish to settle all their differences of whatsoever
nature and to agree on certain terms with regards to the future relationship
between them.
AND WHEREAS the Parties wish that the terms of this Agreement will bind, replace
and exclusively govern their respective relationship, in accordance with its
provisions hereto agreed:
NOW THEREFORE, THE PARTIES DECLARE, AGREE AND UNDERTAKE TOWARDS EACH OTHER AS
FOLLOWS:
PORTIONS OF THIS EXHIBIT MARKED BY AN *** HAVE BEEN OMITTED PURSUANT
TO A REQUEST FOR CONFIDENTIAL TREATMENT FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION.
-2-
1. The preamble to this Agreement shall constitute an integral part of the
Agreement. Omrix and Medimop have reached the following understandings:
2. SALE & DELIVERY OF DEVICES.
Medimop shall not be bound to supply to Omrix any Device or any other type
of products or services, of whatsoever nature, and Medimop is not bound to
give reasons to its decision. Hence, in the absence of a written agreement
to the contrary, Omrix shall have no claim, suit or cause of action of
whatsoever nature against Medimop, or anybody connected with Medimop, for
refusal to supply products, except with respect to information required by
Omrix in order to comply with third party complaints, recalls and/or
regulatory requirements.
3. PAYMENTS. Without derogating from Omrix rights under this Agreement, Omrix
indulgently undertakes to pay the following cumulative sums to Medimop:
3.1 RETROACTIVE PRICE INCREASE OF 15%. The price per each Device supplied
to Omrix starting January 1, 2004, excluding devices supplied as
replacement to defective devices, through Jan-May 2005 shall be
retroactively increased by 15%. Accordingly, Omrix shall pay Medimop,
upon signing this Memorandum of Agreement, NIS *** for supplies
during 2004 and NIS *** for supplies during 2005. Upon signing this
Agreement Omrix shall make payment to Medimop of the said price
increase, which is calculated by agreement to be NIS ***.
3.2 MOLDS. Omrix shall acquire and Medimop shall sell and deliver to Omrix
the molds required to produce the Device (exclusive the Mix-Ject) (the
"MOLDS") the particulars of which are detailed in EXHIBIT A attached
hereto. Within 15 days of signing of this agreement, Medimop
undertakes to transfer to Omrix the Molds (Ex Works - Incoterms 2000)
in their form and shape they will be at the time of actual transfer
("as is") and no warranty shall be given to the Molds other than
ownership by Medimop, provided always that Medimop will not use the
Molds for any other client except for the benefit of Omrix. The agreed
upon price for the Molds is US dollars $***. Omrix shall make
payment of such sum to Medimop's attorney (adv. Nukrai), in trust upon
signing this Agreement, and the trustee will transfer the funds to
Medimop upon the delivery of the Molds to Omrix as aforesaid per Omrix
notice to the trustee.
3.3 NON-COMPETITION PAYMENT. Without derogation from the provisions of S.
4.12 below. Omrix will pay the Sum of US dollars $*** to Medimop
for its non-compete undertakings as per Section 10 of the 2000
Agreement and Section 10 of the
-3-
2000 Agreement is deemed to have been explicitly incorporated into
this Agreement, except that S.10.1.1 shall be amended to read after
the words. "Perform any services" there shall be inserted the words:
"IN THE FIELD". Omrix shall transfer such US $*** to Medimop upon
signing of this Memorandum of Agreement.
3.4 BONUS PAYMENT. Omrix shall pay to Medimop upon signing of this
Memorandum of Agreement a one-time bonus payment equal to US ***.
3.5 KNOWLEDGE TRANSFER. Omrix shall pay Medimop the lump sum of US
$*** in respect of Medimop's agreement to cooperate with the
transferring the knowledge held by Medimop in the manufacture of the
Device (exclusive of the Mix-ject) (the "FEE"). Such Fee payment to be
transferred to Medimop upon signing this Memorandum of Agreement. The
parties envisage that the transfer of the knowledge and know-how, will
have been completed by no later than December 31, 2005. The parties
agree that time is of the essence and Omrix shall do everything it can
to absorb the knowledge and know-how by end of 2005.
In addition to the above, the parties are aware that the knowledge and
know-how is currently not compiled in writing; therefore in order to
be transferred to Omrix in a written form, it needs to be assembled
and put down into writing and supported by expert consultancy services
to be given by Medimop at Omrix request. In order to do so, Omrix may,
but is not obligated to, purchase from Medimop additional services to
be paid separately and by the hour (the written compilation of the
know-how and consultancy services shall be referred to hereunder: "THE
TASK"). Should Omrix wish to perform the Task, in its sole discretion.
Omrix shall have to: (i) give Medimop a written notice of at least 60
days in advance in order to allow in preparation, (ii) will have to
commit for a minimum binding total hours package of 200 hours, (iii)
commit for a minimum 50 hours per month (so that spending less than 50
hours per month will be at Omrix expense), and (iv) Omrix must make
sure it buys sufficient hours to complete the Task by the end of 2005,
latest, beyond which Medimop will be under no obligation to provide
any service in connection with the performance of the Task.
Each hour of engagement by Medimop in the performance of the Task,
including any incidental action thereto, will cost Omrix US $*** per
hour (all prices in this Agreement are exclusive of VAT).
Payment terms for performing the Task shall be executed within 15 days
from the end of the relevant month.
-4-
As of receipt of the written notice from Omrix, if so, Medimop
undertakes to make available, during the course of the calendar month
of 2005 adequate personnel to perform the Task. Medimop undertakes, on
a best effort and good faith basis, to provide adequate access to the
knowledge and know-how (exclusive of Mix-Ject) to allow Omrix to
absorb the know-how and exploit it for commercial purposes.
For the avoidance of any doubt, the undertaking by Medimop on the
transfer of knowledge and know-how is limited through end of 2005 and
provided Medimop fulfill its obligations and cooperate as prescribed
hereunder, since 1/1/2006 Medimop will have no obligation with respect
to transfer knowledge or know-how nor to perform any of the Task.
4. EXCLUSIVE LICENSE
4.1 Medimop hereby grants Omrix, and its successors, the irrevocable,
non-transferable (subject to Section 8 below and to Ormix's right to
sub-license to subcontractors and independent contractors for the
purpose of allowing them to manufacture the Mix-Ject in the Field
only, for Omrix's benefit) perpetual exclusive, worldwide, royalty
free, fully-paid license (the "EXCLUSIVE LICENSE") unlimited in time
and without the obligation of accounting or payment to Medimop to use
manufacture, exploit, modify, create derivative works of, market,
distribute, and sell, directly or indirectly through a third party or
parties, the Mix-Ject and exploit all Intellectual Property Rights
related thereto, BUT ANY AND ALL OF THE ABOVE SHALL APPLY ONLY TO BE
USE IN THE FIELD ONLY AND FOR NO OTHER PURPOSE. In order to avoid any
doubt, nothing herein contained shall require Medimop to make
disclosure to Omrix of any of the information under the IP.
4.2 "INTELLECTUAL PROPERTY RIGHTS" ("IP") shall mean any or all of the
following and all rights in, arising out of, or associated with the
Mix-Ject: (i) all patents and utility models and applications
therefore and all reissues, divisions, re-examinations, renewals,
extensions, provisionals, continuations and continuations-in-part
thereof, and equivalent or similar rights anywhere in the world in
inventions and discoveries including without limitation invention
disclosures, including, but not limited, the patents listed on Exhibit
B hereto ("PATENTS"); (ii) all manufacturing processes and trade
secrets and other rights in know-how and confidential or proprietary
information: (iii) all copyrights, copyrights registrations and
applications therefor and all other rights corresponding thereto
throughout the world; (iv) all industrial designs and any
registrations and applications therefore throughout the world; and (v)
mask works, mask work, registrations and applications therefore, and
all other rights corresponding thereto throughout the world; and (vi)
any
-5-
similar, corresponding or equivalent rights to any of the foregoing
anywhere in the world.
4.3 Notwithstanding anything to the contrary in this Agreement, Medimop
shall not be bound to make any voluntary or involuntary disclosure to
Omrix of any information in relation to the IP comprised in the
Mix-Ject, notwithstanding the grant of the Exclusive License.
4.4 No warranty, representation or assurance is made by Medimop with
respect to the IP, including and without derogation as to the quality
of any of the IP, extent, duration, enforceability or otherwise, and
in any event. Omrix is not granted any better right than Medimop can
posses. The parties acknowledge that all IP in the Mix-Ject only (not
including Omrix's registered patents) belong to Medimop solely and
exclusively, subject to the Exclusive License granted to Omrix;
Medimop shall prepare, file, and maintain all of the Patents related,
to the Mix-Ject and if choose not to do so will notify Omrix and Omrix
may take the necessary steps, on Medimop's behalf, to protect the
Intellectual Property in order to preserve the Exclusive License.
Medimop will co-operate with Omrix in the preservation of the
Exclusive License as aforesaid.
4.5 The Exclusive License shall be granted to Omrix free and clear of all
encumbrances, charges, liens or any other third party rights that may
be voluntarily given by Medimop. Further, Medimop represents and
warrants to the best of its knowledge and belief that there are no
attachments or third party's rights or claims on the IP. Medimop
agrees to provide written notice to Omrix promptly after becoming
aware of any infringement of any IP which may relate to the use of the
IP and will co-operate with Omrix to stop such infringement.
4.6 The Exclusive License is embodied in this Agreement is the only right
granted to Omrix under the IP or any part thereof and to each party's
knowledge, no other special document shall be required to further
manifest, evidence, or prove such Exclusive License. Notwithstanding
the foregoing, however, if additional documentation is necessary to
manifest, evidence, or prove such Exclusive License, at the request of
Omrix and within five (5) business days of such request. Medimop shall
provide Omrix with any and all such documentation provided the
documentation will not include any better rights than those contained
in this Agreement.
4.7 Omrix to the extent permitted by law, shall have the right, but not
the obligation, under its own control and at its own expense, to
prosecute any third party infringement of the Exclusive License or any
other IP in the Field. If required or permitted by law, Medimop (if
not acted promptly to stop the infringing activity) shall permit any
legal proceedings under this Section to be brought in its name to stop
such infringement, including
-6-
being joined as a party-plaintiff, provided that Omrix shall pay the
costs and expenses in connection with such action. The parties will
co-operate in such event to protect the legitimate interests of both
parties,
4.8 In the event that legal action is brought against Medimop and/or Omrix
by a third party alleging invalidity, unenforceability, or
non-infringement of any IP, which may potentially effect the rights
of Omrix under the Exclusive License, each Party will promptly notify
the other about such action and the Parties will co-operate to defend
the action. In the event that a Party decides not to defend the
action, the other Party may assume the defense in the joint names of
the Parties on its own expense.
4.9 Omrix and/or its successors shall have the full rights of exploitation
to any derivative works created pursuant to the Exclusive License and
shall be entitled to protect such rights to the fullest extent
permitted by law.
4.10 Omrix will keep all confidential or proprietary information in
relation or connected to the IP in strict confidence, secret and
confidential in order to protect it from disclosure or misuse by an
un-authorized third party. Omrix will use its best endeavors in doing
so in accordance with the procedures it uses to protect Omrix's
confidential information, but not less than reasonable skill and care;
provided, however, such obligation shall not relate to information
that (i) is publicly available or in the public domain at the time
disclosed; (ii) is or becomes publicly available or enters the public
domain through no fault of Omrix; (iii) is rightfully communicated to
Omrix, to Omrix's knowledge, by persons not bound by confidentiality
obligations with respect thereto; (iv) it can prove that it is already
in Omrix's possession free of any confidentiality obligations with
respect thereto at the time of disclosure; (v) is independently
developed by Omrix; or (vi) is required to be disclosed pursuant to
any applicable law, regulation, judicial or administrative order or
decree, or request by other regulatory organization having authority
pursuant to the law but before disclosure under SS (vi) Omrix will use
its best endeavors to notify Medimop of the required disclosure. In
the event of breach of said confidentiality Omrix shall notify
Medimop, giving full particulars and co-operation, as soon as it comes
to Omrix attention.
4.11 Subject to Omrix timely making all payments as required by this
Agreement, Medimop acknowledges the importance to Omrix of the
Exclusive License and, therefore, the parties explicitly agree that
such rights are irrevocable and that in the event of any dispute
arising from or related to this
-7-
Agreement, or in any other dispute between the parties of whatever
kind or type, each party will only have the right to seek monetary
damages, and shall not (i) have the right to revoke or try to revoke
Omrix rights mentioned in this section, including, but not limited to
under the Exclusive License, under any circumstances whatsoever, or
(ii) be able to seek injunctive relief. To the extent Medimop attempts
to revoke the Exclusive License or threatens to revoke the Exclusive
License or moves for injunctive relief or any other relief not being
monetary damages. (i) Omrix shall be entitled to dismiss such
revocation or claim for relief, as the case may be and shall be
entitled to receive all costs and expenses incurred (including
attorneys' fees) in relation to such claim; (ii) any and all waivers
granted by Omrix under this Agreement shall automatically terminate.
and Omrix will, consequently have any and all remedies under law in
connection with the Agreements or any other matter; If so Medimop
will retain its defenses; (iii) Medimop may be liable to all direct
and/or consequential damage arising to Omrix as a result of attempt to
revoke the Exclusive License.
4.12 Medimop acknowledges and agrees that it will not (directly or
knowingly indirectly) (i) engage in any development activities for a
product in the Field; or (ii) manufacture or allow any third party to
manufacture any product for the purpose of being used or sold in the
Field, provided Medimop can produce & sell other products in the
Field, not including Mix-Jects, as appear in Medimop's catalog.
EXHIBIT "C", or (iii) permit or assist, in the Field, any entity or
person which competes with Omrix in the Field. Medimop will not sell
(directly or knowingly indirectly) any Mix-Ject units to any one to be
used in the Field. Without derogating from the generality of this
Section, Medimop undertakes and covenants that it will not grant,
sublicense, assign or otherwise transfer to any other person or entity
any licenses, sublicenses or any other IP that may conflict with or
inhibit the use of the Exclusive License or that may be competing with
the activities carried by Omrix within the Field.
Each party's rights and obligations under this Article 4 shall survive
expiration or termination of this Memorandum of Agreement for any
reason.
5. For avoidance of doubt, all prices contained in this Agreement which will
be paid in return for a tax invoice and any and all purchase orders
delivered pursuant hereto are exclusive of all V.A.T. Payment shall be made
against Tax Invoice. Medimop will be responsible for all taxes related to
any payment made to Medimop for any delivered products.
6. By signing this Agreement, each of the parties hereto (including its
respective officers, directors, employees, shareholders and agents) hereby
waives (on its own and its affiliates behalf) any and all claims of any
type, circumstance, cause, nature
-8-
or kind such party has against the other party and/or their respective
officers, directors, employees, shareholders and agents, in connection with
any fact, statement, matter, circumstance, action or omission, occurring
prior to the date hereof, including, but not limited to, in relation to
past Agreements or undertakings, provided that such waiver shall not relate
to any obligation under this Agreement. Such waiver to be construed widely
in order to prevent any future disputes arising from the past.
7. This Agreement and all its schedules and exhibits and the provisions hereof
will only be effective following, the approval of both BoD of the Parties
and also timely payment by Omrix of the sums listed in this Agreement. In
the event that BoD approval of either Party is not granted within 3
business days following the date of signing this Agreement, the other Party
may revoke its approval and rescind the agreement. Payment to Medimop under
this Agreement shall be deemed approval of the Agreement by Omrix's BoD.
8. This Agreement shall not be assignable by any Party without the prior
written consent of the other Party, except that either Party shall be
permitted to assign this Agreement and any rights hereunder, without the
other Party's consent, to an affiliate (at least 30% of the ownership or
control) or a company acquiring all or substantially all of the first
Party's relevant assets, voting stock or business via merger or any other
transaction. Any assignment shall not relieve the assignee from the
obligations under this Agreement and the terms of assignment shall be the
entire agreement only.
9. This Agreement substitutes and replaces all past agreements, dealings and
undertakings between the parties, whether made oral or in writing.
AGREED AND ACCEPTED: AGREED AND ACCEPTED:
OMRIX BIOPHARMECEUTICALS LTD. MEDIMOP MEDICAL PROJECTS LTD.
BY: /s/ Xxxxxxx Xxxxxxxxx BY: /s/ Xxxxxx Xxxxxx
--------------------------------- ------------------------------------
NAME: Xxxxxxx Xxxxxxxxx NAME: Xxxxxx Xxxxxx
TITLE: CFO TITLE: President
DATE: 26/6/05 DATE: 26/6/05
/s/ Xxxxxx Xxxxxxxx
---------------------------------
Xxxxxx Xxxxxxxx
GM & COO
26/6/05
