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License Agreement
THIS AGREEMENT entered into this fourth day of October, 1993, by and between
Erie Scientific Company, ("Erie"), a corporation organized under the laws of the
State of Delaware, a wholly owner subsidiary of Sybron, Corporation, with
offices locate at Portsmouth Industrial Par, Portsmouth new Hampshire 03801-5691
and Infectech, Inc. ("Infectech"), a corporation organized under the laws of the
State of Delaware, with offices located at 0000 Xxxxxxxx Xxxx, Xxxxxxx,
Xxxxxxxxxxxx 00000, and at Xxxxx 0, 00 Xxxxxxxxx Xxx., Xxxxxx, Xxxxxxxxxxxx
00000.
WITNESSETH
WHEREAS, a letter of patent of the United States No. 5,153,119 for a
specialized method of speciating and identifying Mycoacterium avium-
inracellulare (MAI) via paraffin slides PAEA/SI.C(tin) was issued to
Xxxxxx Xxxxx on October 6, 1992 along with other U.S. and foreign
patents and patent applications, developed by Infectech and/or Xxxxxx
Xxxxx and Xxxxxxxx Xxxxxx, which are now pending (the foregoing patents
and applications are collectively referred to hereinafter as the
"Patents"); and
WHEREAS, Xxxxxx Xxxxx and Xxxxxxxx Xxxxxx assigned all right, title and
ownership of such letter patents and patent applications, granted or
now pending, to Infectech on October 17, 1992; and
WHEREAS Erie desires to manufacture, use and sell substrates coated
with paraffin on an exclusive worldwide basis.
WHEREAS, the parties have entered into a Consulting Agreement for
Erie's commercial development.
It is therefore agreed
1. Executive license. Infectech hereby grants to Erie the exclusive
right and license, worldwide, to manufacture, use nd sell paraffin
coated slides for use in practicing the invention disclosed and claimed
in the patents (hereinafter referred to as the "Licensed Products").
Erie shall use its best efforts to promote and sell Licensed Product
slides.
2. Royalties. Erie shall pay to Infectech a royalty of 15%
(fifteen percent) of all gross sales ("gross sales" shall mean the
total amount invoiced by Erie for the sale of a licensed Product less
any returns and allowances, sales taxes and foreign taxes except
foreign or United States income taxes, transportation expenses directly
incurred in the shipment of Licensed Product including transportation
insurance) of the Licensed Product when the manufacture, sale, use or
intended use of the Licensed Product would otherwise be an infringement
of at least one valid and enforceable claim of the Patents. No more
than one royalty payment shall be due for each Licensed Product. Erie
shall keep an accurate account of the Licensed Products manufactured,
sold or used under the scope of the license granted hereunder and shall
render a statement in writing to Infectech within 30 days after the end
of each calendar quarter. Infectech shall have the right, at its own
expense and not more often than twice each calendar year, to have the
books and records of Erie examined by a Certified Public Accountant to
verify the royalty statement and royalties due Infectech pursuant to
this Agreement. If the accountant discovers that Erie has underpaid
the royalties owed Infectech by more than five percent (5%) of the
total royalty due, Erie shall reimburse Infectech for the fees paid to
the accountant to examine Erie's books and records. Other than
informing Infectech of the information needed by Infectech to determine
the proper royalty payment and amount of royalties Erie should pay to
Infectech, the accountant shall not disclose and information obtained
from the examination of Erie's book and records. The accountant shall
be required to sign a confidentiality agreement prior to any review.
3. Business Expenses. Erie shall be responsible for payment of all
costs, fees and any other expense incurred by it related to the
development, manufacture, sale marketing and any other expenses
associated with the Licensed Product.
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4. Government Expenses. Erie shall be responsible for payment of all
costs, fees and any other expense related to the regulatory approval by
the U.S. Government and any of it agencies, or any agency or government
or regulatory body which requires approval before, during or after the
sale of the Licensed Product.
5. Indemnification.
a) Erie agrees to defend, indemnify and hold harmless Infectech, it
directors, officers, and employees from and against any liability,
loss, damage, cost or expense (including attorney fees) by reason of
any act or omission by Erie for any matter related to this Agreement.
b) Nothing contained in this Article shall be deemed to create any
rights in any person or entity that is not a party to this Agreement.
6. Quality Assurance. Infectech shall have the right to determining
the suitability and quality of any supplier and/or subcontractor
providing any service related to this Agreement. In the event that
Infectech finds the suitability and/or quality or any supplier and/or
subcontractor to be objectionable, then Infectech shall notify Erie, in
writing, after such determination. Erie shall then have 30
(thirty)days to provide to Infectech written notice of its intent to
cure any such defect. In the event that Erie shall not be able or
willing to cure such defect under the above provisions then this
Agreement, shall, at the sole and exclusive option of Infectech,
terminate in accordance with the provisions of 8(a).
7. Press Releases and Public Announcement. Infectech shall have the
right to approve the timing and content of any press releases or public
announcements of the existence of this Agreement.
8. Term. This Agreement shall terminate upon the expiration of the
last of the Patents to expire or on the date the 1st of the Patents is
declared unenforceable or invalid by a court or other body of competent
jurisdiction and such declaration has become final and binding and
Infectech has ceased to pursue an appeal of the declaration. This
Agreement may also terminate in accordance with the following.
a) Abandonment. If after completion of the clinical trials, which
event shall occur sixty (60) days following the notification, in
writing, by Infectech to Erie that the testing of the slides is
complete, Erie shall abandon the exploitation of the Licensed Product
by failing for a period of one calendar quarter to sell a minimum of
100,000 (one hundred thousand) Licensed Product slide, Infectech may
on 30 days' written notice to Erie terminate this License Agreement and
the license granted hereunder without prejudice, however to the
royalties due to Infectech hereunder. Erie can not sell licensed
Product inventory in its possession in the event of agreement
termination except to Infectech at Infectech's request.
b) Other Termination for Cause. In the event that Erie shall breach
or fail to comply with any provision of this Agreement, for any reason
whatever except for Force Majeure (as described in paragraph 14,
below), and such default shall continue for a period of thirty (30)
days after the giving of written notice thereof by Infectech to the
Erie, specifying the default, or in the event that Erie shall commence
a voluntary bankruptcy case concerning itself, or an involuntary
bankruptcy case is commenced against Erie and the petition is not
controverted within ten (10) days or is not dismissed within sixty (60)
days after the commencement of the case, or a custodian is appointed
for or takes charge of all or substantially all of the property of
Erie, then, and in any one of such events, Infectech shall be entitled
to terminate this Agreement, by giving notice thereof by telex or
telefax, confirmed by registered prepaid mail or courier mail,
addressed to Erie, such termination to be effective upon the giving of
such notice with prejudice, however, to the royalties due to Infectech
hereunder.
9. Arbitration. All disputes, controversies or differences arising
out of or in connection with this agreement shall be finally settled
under the Arbitration Rules of the American Arbitration Association by
one arbitrator appointed in accordance with such Rules. The
arbitration proceedings shall be held in Pittsburgh, Pennsylvania.
10. Assignments. This Agreement shall not be assignable by Erie to
any third party except with the prior written consent of Infectech.
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11. Binding nature. The provisions of this Agreement shall be binding
upon and inure to the benefit of each of the parties hereto and their
respective successors and assigns.
12. Counterparts. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original but all which
together shall constitute one and the same instrument.
13. Entire Agreement. This document is the complete and exclusive
agreement between the parties. It supersedes all oral or written
proposal and all other communications between the parties regarding the
subject of this Agreement.
14. Force Majeure. Neither party shall be liable to the other party
for any failure of or delay in performance of any of its duties
hereunder due to any cause or circumstance which is beyond its control,
including but without limiting the generality of the foregoing any such
failure or delay as is caused by strikes, lockouts, fires explosions,
shipwreck, Act of God or the public enemy, wars, riots, interference by
military authorities and/or compliance with the orders of any relevant
government authority.
15. Governing Law. This Agreement shall be governed by and construed
in accordance with the orders of any relevant government authority.
16. Headings: The headings of the Articles of this Agreement are for
the convenience of reference only and shall not define or limit the
provisions thereof.
17. Joint Venture not Formed by this Agreement. This Agreement does
not constitute an agreement for a partnership or joint venture between
the parties. All expenses and costs incurred by Erie in meetings its
obligations under this Agreement shall be solely those of Erie, and
Infectech shall not be liable for their payment. Erie can make no
commitment with third parties that are binding upon Infectech without
Infectech's written consent and Erie in no way shall hold itself out as
having that power.
18. Confidentiality. Erie, its agents, servants, representatives and
employees shall treat all work product in accordance with the
Confidential Disclosure Agreement previously signed by the parties.
This paragraph shall survive the expiration, termination, or
cancellation of this Agreement.
19. Third party beneficiaries. Except for their proper heirs,
successors, and assigns, the parties hereto intend that no third party
shall have any rights or claims by reason of this contract.
20. Amendments. Amendments or additions to this Agreement shall not
be valid unless made in writing and executed by both parties.
21. Notices. Each notice, request or demand given or required to be
given pursuant to this Agreement shall be in writing and shall be
deemed sufficiently given (a) when mailed if deposited in the United
States mail, certified, return receipt requested and addressed to the
address of the intended recipient set forth on the first page hereof or
to such address as may be specified in writing by the parties hereto or
(b) when actually received if given by other means, whichever is
earlier.
IN WITNESS WHEREOF and intending to be legally bound the parties hereto
have executed this Agreement below.
INFECTECH, INC.
By: Xxxxxxxx X. Xxxxxx, M.D.
Title: Executive V.P. -Infectech, Inc.
Date: 11/12/93
ERIE SCIENTIFIC COMPANY
By: Xxxx X. Xxxxxx
Title: Vice President-Marketing
Date: 11/18/93
