EXHIBIT 10.9
LICENSING
AGREEMENT
This Agreement, dated September 14, 1999, is made by and between Xxxxxx
Consulting Corporation (referred to as "LICENSOR"), a corporation organized and
existing under the laws of New York and having a principal place of business at
000 Xxx Xxx Xxxx Xxxxx Xxxx, Xxxxxxxxx, Xxx Xxxx and Xxxxxxxxx LLC ("LICENSEE"),
a limited liability company corporation organized and existing under the laws of
Delaware and having a principal place of business at 000 Xxx Xxx Xxxx Xxxxx
Xxxx, Xxxxxxxxx, Xxx Xxxx.
WHEREAS:
A. LICENSOR is the sole owner of all right, title, and interest in U.S.
Patent Application #023569 entitled "Methods, agents and devices for removing
nucleophilic toxins from tobacco and tobacco smoke" (see Exhibit A), including
all associated inventions, technology, know-how, and intellectual property
rights (the "Product"), and LICENSOR has the right to grant the rights
transferred under this Agreement.
B. LICENSEE is desirous of acquiring from LICENSOR the exclusive
worldwide exploitation rights to practice and utilize the aforesaid inventions,
technology, know-how, and patent pending applications, including the right to
manufacture and market the Product.
C. LICENSOR is willing to grant such rights upon the terms and
conditions set forth in this Agreement.
NOW, THEREFORE, in consideration for the mutual covenants and promises
contained in this Agreement, the parties agree as follows:
Definitions
The term "TECHNOLOGY," as used in this Agreement, shall mean all
known-how, technical data, or other proprietary information or materials of any
kind regarding the design, manufacture, operation, use, or sale of any Product
or other device for use in any field and incorporating or based on U.S. Patent
Application #023569, foreign counterparts of these applications leading to such
patents, including any amendment to said domestic and foreign applications, any
other patents now or hereafter owned or controlled by LICENSOR which would be
infringed by LICENSEE in exercising its rights and license under this Agreement,
or any modifications, improvements, or derivatives thereto made by LICENSOR, or
LICENSEE.
The terms "PRODUCT" and "PRODUCTS," as used in this Agreement, shall
mean any and all items produced, used, and/or sold or otherwise commercialized
by LICENSEE or its sublicensees resulting from the use of any portion of the
TECHNOLOGY or based on any portion of the TECHNOLOGY.
The term TERRITORY, as used in this Agreement shall mean the entire
world.
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Grant of Technology Rights
Subject to the other terms and conditions set forth herein., LICENSOR
hereby grants to LICENSEE an exclusive worldwide right and license to use, sell,
manufacture, and otherwise to commercialize the TECHNOLOGY and/or PRODUCTS in
all fields of use.
LICENSEE may file for additional patents or intellectual property
rights on behalf of LICENSOR and in LICENSOR's name at LICENSEE's own expense in
any country it so desires.
Notwithstanding anything to the contrary, all rights to the patents or
intellectual property rights now existing or to be obtained in the future, which
are based on the TECHNOLOGY or PRODUCTS, shall be the sole property of LICENSOR.
Upon execution of this Agreement, LICENSOR shall disclose to LICENSEE any and
all technical information, materials, and know-how then within the knowledge or
possession of LICENSOR which was not already disclosed to LICENSEE and which
would be helpful to LICENSEE in the manufacture, use or sale of the PRODUCT or
in otherwise exploiting the subject matter of this Agreement.
Warranties and Representations of LICENSOR
LICENSOR warrants and represents that to the best of its knowledge it
owns or has an exclusive right to the TECHNOLOGY and patents pending listed in
Exhibit A and that LICENSOR is free to enter into this Agreement and that
LICENSOR has no knowledge of any suit, action or claim instituted or threatened
by a third party against any of its intellectual property rights relating to
TECHNOLOGY.
LICENSOR represents, warrants, and covenants that it has not, and
during the term of this Agreement will not, grant any other license for sale,
use or manufacturing of the PRODUCTS in the TERRITORY, nor shall LICENSOR itself
sell, use, manufacture or otherwise commercialize the PRODUCTS in the TERRITORY.
LICENSOR agrees at its expense, to hold LICENSEE harmless from any
liability which results from any breach by LICENSOR of these representations and
warranties.
Payments and Obligations
LICENSEE agrees to pay all future costs for development, manufacturing,
commercialization, including all other future fees and costs in connection with
patents issued or applications pending at the date of the execution of this
Agreement, or any other future costs associated with the PRODUCTS and
TECHNOLOGY.
The license granted to LICENSEE by LICENSOR hereunder is granted on a
perpetual and royalty-free basis and without the payment of any fees.
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Confidential Information
In connection with the license granted herein, LICENSEE acknowledges
that LICENSOR will disclose to LICENSEE confidential and proprietary
information, including valuable trade secrets and, confidential know-how,
technical data, and other information and materials pertaining to the TECHNOLOGY
(hereinafter "Confidential Information"). LICENSEE agrees to maintain and
protect the strict confidentiality of such Confidential Information, and
LICENSEE agrees that inappropriate disclosure of the Confidential Information
may cause irreparable injury to LICENSOR. Accordingly, LICENSEE acknowledges and
agrees that the remedy at law for any breach of this provision may be
inadequate, and in recognition thereof, agrees that LICENSOR shall be entitled
to injunctive relief for inappropriate disclosure of Confidential Information by
LICENSEE, which relief shall be in addition to any other remedies that may be
available to LICENSOR.
Infringement of Patents by Third Parties
Should LICENSOR or LICENSEE become aware of any infringement or alleged
infringement of any portion of the TECHNOLOGY, the knowing party shall
immediately notify the other party of the name and address of the alleged
infringer, the alleged acts of infringement, and any available evidence of
infringement. LICENSOR and LICENSEE agree to work jointly (on a best efforts
basis) to prevent any infringement and defend any patents or other intellectual
property rights upon which the TECHNOLOGY is based. The total expense of all
such actions shall be borne by LICENSEE and all proceeds shall be for LICENSEE's
account.
If, at any time during the term of this Agreement, LICENSOR or LICENSEE
shall be unable to uphold the validity of any intellectual property rights of
the TECHNOLOGY against any alleged infringer, LICENSEE shall not have a damage
claim or a claim for refund or reimbursement against LICENSOR.
LICENSEE agrees to defend to the best of its ability the intellectual
property rights of the TECHNOLOGY, including the patents or patent applications.
Term and Termination
With respect to the rights granted herein, this Agreement shall
commence upon the execution hereof by both parties and shall continue in
perpetuity,
Notwithstanding anything to the contrary, if LICENSEE materially
defaults in performing any of the material terms of his Agreement, and continues
in default for a period of thirty (30) days, or if LICENSEE becomes insolvent or
enters into an agreement with creditors, or if a receiver is appointed for it,
LICENSOR shall have the right to terminate this Agreement by giving notice to
LICENSEE. Thirty (30) days after such notice, this Agreement, if such default is
not cured to LICENSOR's satisfaction, shall automatically terminate.
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Subsequent to the termination of this Agreement, as provided in
subsections 7a or 7b hereof, LICENSEE agrees that it will not engage in the use,
sale, or other commercialization of the TECHNOLOGY and, that it will not sell
the PRODUCTS. Notwithstanding the foregoing, LICENSEE may, for up to ninety (90)
days after the effective date of such termination, sell all PRODUCTS which may
be in inventory and not sold.
(a)Upon termination of this Agreement, all licenses granted herein
shall be immediately revoked, LICENSEE shall promptly return all Confidential
Information to LICENSOR or destroy all Confidential Information, and nothing
herein shall be construed to release either party of any obligation which
matured prior to the effective date of such termination or which may continue
beyond such termination.
Taxes, Governmental Approvals and Liability
LICENSEE shall be solely responsible for the payment and discharge of
any taxes, duties, or withholdings relating to any transaction of LICENSEE in
connection with the manufacture, use, sale, lease, or other commercialization of
the TECHNOLOGY or the PRODUCTS, if done by LICENSEE.
LICENSEE shall, at its own expense, be responsible for applying for and
obtaining any government approvals, authorizations or validations relative to
this Agreement under the appropriate laws.
LICENSEE shall be responsible for all PRODUCT liability and PRODUCT
warranty for any PRODUCTS manufactured for or by LICENSEE under this Agreement
and shall insure this risk accordingly. LICENSEE further indemnifies LICENSOR
for any and all claims brought against LICENSOR of which the cause of action was
set by any act of LICENSEE related to any PRODUCTS covered by this Agreement.
Independence of the Parties
This Agreement shall not constitute the designation of either party as
the representative or agent of the other, nor shall either party by this
Agreement have the right or authority to make any promise, guarantee, warranty
or representation, or to assume, create, or incur any liability or other
obligation of any kind, express or implied, against or in the name of, or on
behalf of, the other, except as described herein.
Assignment
Neither party shall have the right to assign or otherwise transfer this
Agreement and the rights acquired and obligations imposed hereunder, without the
prior written consent of the other party. If such written consent is given, such
assignment or transfer shall not be deemed effective unless such assignee or
transferee has agreed in writing to be bound by the terms and provisions of this
Agreement.
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LICENSER shall be free to sublicense others to manufacture, use or sell
the PRODUCT under the licensed technology but shall remain bound to the terms
and conditions of this Agreement.
Notices
All notices, demands, and other communications under this Agreement
shall be deemed to have been duly given and delivered one (1) day after sending,
if sent by fax, telegram or telex, and, ten days after posting, if sent by
registered airmail, postage prepaid, to the parties at the following locations:
If to LICENSOR:
000 Xxx Xxx Xxxx Xxxxx Xxxx
Xxxxxxxxx, Xxx Xxxx 00000
If to LICENSEE:
000 Xxx Xxx Xxxx Xxxxx Xxxx
Xxxxxxxxx Xxx Xxxx 00000
The parties hereto may give written notice of change of address. and
after such notice has been received, any notice of request shall thereafter be
given to such party at the changed address.
Jurisdiction; Governing Law
Any dispute, controversy or claim between the parties arising out of or
in connection with this Agreement, including but not necessarily limited to its
conclusion, existence, validity, interpretation, performance or non-performance,
breach, or termination, whether arising before or after the termination of the
Agreement, shall be referred to and finally determined by the appropriate court
located in the State of New York.
This agreement shall be governed by, and construed in accordance within
the laws of the State of New York, except that the Federal Laws of the United
States of America shall apply to questions regarding the validity or
infringement or enforceability of United States Federal Patent rights relating
in any way to this Agreement or the subject matter of this Agreement.
Identification of TECHNOLOGY and PRODUCTS
LICENSEE agrees to xxxx the following with the appropriate U.S. or
foreign patent number in conformity with the patent laws and practice of the
respective country:
1. all PRODUCTS which are made, used, sold, leased, or otherwise
disposed of;
2. all packaging of all PRODUCTS, and
3. all brochures, manuals, and documents describing the PRODUCTS
which are to be used, sold, or distributed.
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Unless otherwise directed by LICENSOR, LICENSEE shall state in a manner
acceptable to LICENSOR and approved by LICENSOR, in a prominent position on all
materials and things specified in the sub-section above, that the TECHNOLOGY is
utilized and the PRODUCTS are manufactured and sold by LICENSEE under license
from LICENSOR.
General Provisions
The parties hereto have read this Agreement and agree to be bound by
its terms. The parties further agree that this Agreement shall constitute the
complete and exclusive statement of the Agreement between them and supersedes
all proposals, oral or written, and all other communications between them
relating to the TECHNOLOGY and PRODUCTS, including but not limited to the
inventions, technology, and know-how, which are the subject matter of this
Agreement.
No agreement changing, modifying, amending, extending, superseding,
discharging, or terminating this Agreement or any provisions hereof shall be
valid unless it is in writing and is dated and signed by duly authorized
representatives of the party or parties to be charged.
The provisions of this Agreement are severable, and in the event that
any provisions of this Agreement shall be held to be invalid, illegal or
unenforceable, the validity, legality, and enforceability of the remaining
provisions shall not in any way be affected or impaired thereby.
Failure of any of the parties hereto to enforce any of the provisions
of this Agreement or any rights with respect thereto or to exercise any election
provided for therein, shall in no way be considered a waiver of such provisions,
rights, or election or in any way to affect the validity of this Agreement. No
term or provision hereof shall be deemed waived and no breach excused, unless
such waiver or consent shall be in writing and signed by the party claimed to
have waived or consented. The failure by any of the parties hereto to enforce
any of said provisions, rights, or elections shall not preclude or prejudice
other provisions, rights, or elections which it may have under this Agreement.
Any consent by any party to, or waiver of, a breach by the other, whether
express or implied, shall not constitute a consent or waiver of, or excuse for
any other, different or subsequent breach. All remedies herein conferred upon
any party shall be cumulative and no one shall be exclusive of any other remedy
conferred herein by law or equity.
This Agreement shall be binding not only upon the parties hereto, but
also upon without limitations thereto, their assignees, successors, heirs,
devices, divisions, subsidiaries, officers, directors and employees.
There shall be no liability on either party on account of any loss,
damage, or delay occasioned or caused by strikes, riots, fires, insurrections or
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the elements, embargoes, failure of carriers, acts of God or of the public
enemy, or any other force majeure causes beyond the control of either party.
Except as provided elsewhere in this Agreement, all of the legal,
accounting, and other miscellaneous expenses incurred in connection with this
Agreement and the performance of the various provisions of this Agreement shall
be paid by the party who incurred the expense.
In any action for breach of this agreement or for any other cause of
action, neither party shall be liable to the other party for any punitive,
indirect or consequential damages; provided, however, that this provision shall
not be deemed to limit in any way LICENSEE's duty to defend and indemnify
LICENSOR for claims brought by third parties as set forth in this Agreement.
Headings used in this Agreement are for reference purposes only and
shall not be deemed a part of this Agreement.
This Agreement may be executed in any number of counterparts, each of
which shall be deemed to be an original all of which constitute one and the same
agreement.
(a) All representations, warranties, including all contractual
provisions relevant to confidentiality, notices, jurisdiction/governing law,
defense and indemnification obligations, and limitations of liability made
herein shall survive the termination of this Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be
duly executed as of the date first mentioned above.
LICENSOR: XXXXXX CONSULTING CORPORATION LICENSEE: XXXXXXXXX FILTERS, LLC
By: /s/Xxxxx Xxxxxx By: /s/Xxxxxxx Xxxx
Printed Name: Xxxxx Xxxxxx Printed Name: Xxxxxxx Xxxx
Title: Vice President Title: Managing Member
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Exhibit A
U.S. Patent Application #023569 entitled "Methods, agents and devices
for removing nucleophilic toxins from tobacco and tobacco smoke"
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