EXHIBIT 10.33
LICENSE AND OPTION AGREEMENT
This Agreement is effective June 27, 1997 ("the EFFECTIVE
DATE") by and between H.C. Implants B.V., a corporation duly organized and
existing under the laws of the Netherlands, having its registered office at
Xxxxxxxxxxxx 0 (0000XX) Xxxxxx, xxx Xxxxxxxxxxx, (hereinafter referred to as
"LICENSOR"), and Matrix Medical Holding B.V., a corporation duly organized and
existing under the laws of the Netherlands having its registered office at
Professor Bronkhorsvlaan, Building 57 (3723MB) Bilthoven, the Netherlands,
(hereinafter referred to as "LICENSEE"),
WHEREAS
o LICENSOR is the owner or licensee of the patents rights and
applications set forth in Appendix A hereto;
o LICENSEE has expressed the desire to obtain an exclusive license with
respect to the invention set forth by the PATENTS (as defined
hereinafter), the manufacture, use, sale and distribution of the
invention set forth by the PATENTS and/or any other form of
exploitation of the PATENTS, and a license to TECHNOLOGY (as defined
hereinafter); o LICENSOR has expressed the intent to grant such a
license to LICENSEE and, furthermore, to grant LICENSEE an option to
purchase the PATENTS; NOW THEREFORE in consideration of the mutual
promises and other good and valuable consideration, the parties agree
as follows:
E-20
SECTION 1 - Definitions.
The terms used in this Agreement have the following meaning:
1.1 The term "AFFILIATE" as applied to LICENSEE, shall mean any company
or other legal entity other than LICENSEE, in whatever country organized,
controlling or controlled by LICENSEE. The term "control" means possession, of
the power to direct or cause the direction of the management and policies
whether through the ownership of voting securities, by contract or otherwise.
1.2 The term "FIRST COMMERCIAL SALE" shall mean in each country the
first sale of any PRODUCT by LICENSEE, its AFFILIATES or SUBLICENSEES, following
approval of its marketing by the appropriate governmental agency for the country
in which the sale is to be made and when governmental approval is not required,
the first sale in that country.
1.3 The term "NET SALES VALUE" shall mean the invoiced sales value of
the PRODUCTS sold by LICENSEE or its sublicensees after deduction of:
1.3.1 the normal trade discounts actually granted;
1.3.2 any credits actually given by the LICENSEE for defective
goods
1.3.3 any costs of packing, insurance, damage and freight and any
applicable sales tax and in the case of export orders any import
duties or similar applicable governmental levies or export insurance
costs in each case to the extent separately invoiced.
1.4 The term "PATENTS" shall mean all valid and enforceable claims of
patents and patent applications owned by or controlled by LICENSOR, which are
filed prior to the EFFECTIVE DATE, including any addition, continuation,
continuation in-part or division thereof or any substitute application therefor,
any patent issued with respect to such patent application; any reissue or
extension of any such
patent, and any confirmation patent or registration patent or patent of an
addition based on any such patent. The patents, patent applications, and short
particulars of which shall be described in Appendix A hereto.
1.5 The term "PRODUCTS" shall mean any and all products manufactured by the
use of all or some of the PATENTS and/or TECHNOLOGY.
1.6 The term "TECHNOLOGY" shall mean the information, test reports,
operating and testing procedures, data, files, studies, practices and know-how
and the like, in any way related to and/or concerning the manufacture and
distribution of the invention(s) set forth by the PATENTS and all information
connected therewith, which exists as of the EFFECTIVE DATE and being provided by
LICENSOR to LICENSEE,
1.7 The term "TERRITORY" shall mean all countries of the world.
1.8 The use herein of the plural shall include the singular, and the use of
the masculine shall include the feminine.
SECTION 2 - Grants of License and Option.
2.1 (a) Subject to Section 2.1(b), LICENSOR hereby grants to LICENSEE and
LICENSEE hereby accepts from LICENSOR an exclusive royalty bearing license for
the TERRITORY under PATENTS and TECHNOLOGY to make, have made, use, import,
sell, offer to sell or have sold on its behalf PRODUCT, including the right to
sublicense third parties. LICENSEE shall have the right to extend such license
to its AFFILIATES.
(b) LICENSOR retains the rights to use the TECHNOLOGY and PATENTS in
connection with the following products: Shuttle Stop, Middle Ear Ventilation
Tubes, and TAM. In the event LICENSOR elects not to sell any of the foregoing
products, LICENSOR shall grant to LICENSEE a right of
E-22
first negotiation for an agreement under which LICENSEE will manufacture and
sell such products. After receipt of a written notice to LICENSEE that LICENSOR
does not intend to manufacture and sell such products, the parties will, in good
faith, negotiate the terms of an agreement during the next ninety (90) days. If
the parties are not able to agree during that period, LICENSEE shall have no
further rights with respect to such products and LICENSOR shall be free to enter
into an agreement with other parties.
(c) To the extent that any PATENTS, TECHNOLOGY and PRODUCTS are covered by
the agreement between LICENSOR and Stichting Voor de Technische Wetenschappen of
December 20, 1989 and any supplements and amendments thereto (the "STW
Agreement"), this Agreement shall be subject to the terms, conditions and
obligations of such STW Agreement and LICENSEE shall be bound by such terms,
conditions and obligations.
2.2 (a) Prior to exercising of the Purchase Option, no sublicense shall be
granted without the consent of LICENSOR, which consent shall not be unreasonably
withheld.
(b) LICENSEE agrees to forward to LICENSOR a copy of any and all fully
executed sublicense agreements.
(c) Each sublicense shall terminate upon termination of the license under
this Agreement.
2.3 So long as LICENSEE is not in default of any provisions of the
Agreement, from three (3) years and until six (6) years after the EFFECTIVE DATE
of this Agreement, LICENSEE will have the option to purchase the PATENTS (the
"Purchase Option") for a purchase price equal to an initial payment of NLG
4,000,000 (four million Dutch Guilders) ("Initial Payment") and a deferred
payment equal to the running royalties set forth in section 6.1. Such Purchase
Option shall be exercised by written notice given by LICENSEE to the LICENSOR
and payment of the Initial Payment set forth herein. Upon payment by the
E-23
LICENSEE to the LICENSOR of NLG 4,000,000 Dutch Guilders, LICENSOR shall execute
a patent assignment agreement in the form set forth in Appendix B, attached
hereto and made a part hereof.
2.4 If the LICENSEE does not exercise the Purchase Option, the License
under this Agreement shall remain in full force and effect pursuant to the terms
of this Agreement. Upon exercise of the Purchase Option and payment of the
Initial Payment all terms and conditions of this Agreement other than those
specifically related to the License shall continue in full force and effect.
2.5 (a) LICENSEE shall exert best efforts to research, develop and then
commercialize PRODUCTS. The efforts of a SUBLICENSEE and/or an AFFILIATE and/or
a collaborator of LICENSEE shall be considered as efforts of LICENSEE.
(b) If LICENSEE fails to exert best efforts as required by paragraph 2.5(a)
or fails to achieve any of the three milestones set forth below, LICENSOR shall
have the right to convert the exclusive license granted under paragraph 2.1(a)
to a non-exclusive license which shall take effect sixty (60) days after written
notice to LICENSEE unless LICENSEE cures such failure prior to expiration of
such sixty (60) day period. The three milestones are as follows:
(i) during the first three years after the EFFECTIVE DATE,
LICENSEE shall spend at least NLG 1.0 Million per annum
on the development of PRODUCTS covered by the PATENTS,
(ii) the first full clinical trial of a PRODUCT that is
covered by PATENTS shall be initiated before the third
anniversary of the EFFECTIVE DATE,
(iii)a PRODUCT shall be marketed by the sixth anniversary
of the EFFECTIVE DATE.
E-24
(c) LICENSEE shall provide LICENSOR with semi-annual reports
due within thirty (30) days after the end of each calendar half year with
respect to the efforts exerted under this Section 2.5 and with respect to
progress towards and achievement of the milestones of Section 2.5(b).
SECTION 3 - Rights and Obligations of the Parties under the Agreement:
3.1 LICENSOR will not be required to perform any additional work or
functions in connection with the granting of the license except to turn over the
TECHNOLOGY.
3.2 Within 30 (thirty) days after the EFFECTIVE DATE, LICENSOR will supply
LICENSEE with all TECHNOLOGY in its possession (that has not previously been
disclosed) and that is reasonably necessary or desirable to enable LICENSEE to
work the TECHNOLOGY and PATENTS on a commercial scale.
3.3 LICENSEE shall not represent that LICENSEE is an agent of LICENSOR or
vice versa.
3.4 LICENSEE agrees to comply with all laws, rules, regulations and
reasonable standards of LICENSOR with respect to the PATENTS and with respect to
development, manufacture, use and sale of PRODUCTS.
SECTION 4- Confidentiality.
4.1 During the term of this Agreement, it is contemplated that each party
will disclose to the other proprietary and confidential technology, inventions,
technical information, biological materials and the like which are owned or
controlled by the party providing such information or which that party is
obligated to maintain in confidence and which is designated by the party
providing such information as confidential ("Confidential Information"). Each
party agrees to retain the other party's Confidential Information in
E-25
confidence and not to disclose any such Confidential Information to a third
party without the prior written consent of the party providing such information
and to use the other party's Confidential Information only for the purposes of
this Agreement.
4.2 The obligations of confidentiality will not apply to Confidential
Information which:
(i) was known to the receiving party or generally known to
the public prior to its disclosure hereunder; or
(ii) subsequently becomes known to the public by some means
other than a breach of this Agreement;
(iii)is subsequently disclosed to the receiving party by a
third party having a lawful right to make such
disclosure;
(iv) is required by law or bona fide legal process to be
disclosed, provided that the party required to make the
disclosure takes all reasonable steps to restrict and
maintain confidentiality of such disclosure and
provides reasonable notice to the party providing the
Confidential Information; or
(v) is approved for release by the parties, or
(vi) is independently developed by the employees or agents
of either party without any knowledge of the
Confidential Information provided by the other party.
SECTION 5 - PATENTS.
5.1 Until the PATENTS are purchased by LICENSEE, LICENSOR shall file,
prosecute and maintain PATENTS, and LICENSEE shall bear all the reasonable costs
and expenses for the filing, prosecution and maintenance of such PATENTS.
E-26
5.2 With respect to any PATENTS, each patent application, office action,
response to office action, request for terminal disclaimer, and request for
reissue or reexamination of any patent issuing from such application shall be
provided to LICENSEE sufficiently prior to the filing of such application,
response or request to allow for review and comment by LICENSEE. LICENSOR shall
have the right to take any action that in its judgement is necessary to preserve
such PATENTS.
5.3 Upon exercise of the Purchase Option and payment of the purchase fee,
LICENSEE shall be responsible for filing, prosecution and maintenance of
PATENTS.
SECTION 6 - Compensation.
6.1 (a) In consideration for the License granted under this Agreement,
LICENSEE agrees to pay to LICENSOR an up front License Fee of NLG 1,000,000 (one
million Dutch Guilders). Such License Fee shall be paid in accordance with the
following payment schedule:
(i) NLG 500,000 (five hundred thousand Dutch Guilders) on
the EFFECTIVE DATE.
(ii) NLG 250,000 (two hundred fifty thousand Dutch Guilders)
on the first anniversary of the EFFECTIVE DATE; and
(iii)NLG 250,000 (two hundred fifth thousand Dutch
Guilders) on the second anniversary of the EFFECTIVE
DATE.
In the event any payment is not paid or this Agreement is terminated, then
any unpaid portion of the NLG 1,000,000 shall be immediately due and payable.
(b) LICENSEE shall pay to LICENSOR the following running royalty:
(i) Until exercise of the Purchase Option, a royalty equal
to five percent (5%) of the NET SALES VALUE of all
PRODUCTS sold by LICENSEE, its AFFILIATES or
SUBLICENSEE. After exercise of the Purchase Option such
royalty shall be reduced to two percent (2%).
E-27
(ii) Beginning in year three of this Agreement, the minimum
royalty shall be NLG 10,000 per year until the Purchase
Option is exercised. Accordingly, the minimum royalty
shall be paid on July 1, 2000 and each July 1
thereafter until the Purchase Option is exercised. The
minimum royalty payment of NLG 10,000 for each year
shall be credited until exhausted, but only against
royalties due for the next four calendar quarters
beginning with the July 1st quarter.
(iii)Upon exercise of the Purchase Option, LICENSEE shall
receive a one time credit of NLG 400,000 (four-hundred
thousand Dutch Guilders) with respect to the two
percent (2%) running royalty. In addition, upon
exercise of the Purchase Option, LICENSEE shall be
obligated to pay the royalties due under the STW
agreement.
(c) The royalty term on a PRODUCT by PRODUCT and country by country basis
shall be for ten (10) years from FIRST COMMERCIAL SALE of a PRODUCT in a
country. If at the end of such ten (10) years a PRODUCT is covered by a PATENT,
the royalty shall continue until the PRODUCT is not covered by a PATENT.
6.2 LICENSEE shall keep, and shall cause each of its AFFILIATES and
SUBLICENSEES to keep, full and accurate books of account containing all
particulars that may be necessary for the purpose of calculating all royalties
payable to LICENSOR. Such books of account shall be kept at their principal
place of business and, with all necessary supporting data shall, for the three
(3) years next following the end of the calendar year to which each shall
pertain be open for inspection by an independent certified accountant reasonably
acceptable to LICENSEE upon reasonable notice during normal business hours at
LICENSOR's
E-28
expense for the sole purpose of verifying royalty statements or compliance with
this Agreement, but in no event more than once in each calendar year. All
information and data offered shall be used only for the purpose of verifying
royalties and shall be treated as LICENSEE Confidential Information subject to
the obligations of this Agreement. All royalty underpayments shall be
immediately due and payable. In the event that such inspection shall indicate
that in any calendar year that the royalties which should have been paid by
LICENSEE are at least five percent (5%) greater than those which were actually
paid by LICENSEE, then LICENSEE shall pay the cost of such inspection.
6.3 With each quarterly payment, LICENSEE shall deliver to LICENSOR a full
and accurate accounting to include at least the following information:
(a) Quantity of each PRODUCT subject to royalty sold (by country) by
LICENSEE, and its AFFILIATES and sublicensees;
(b) Total invoiced sales for each PRODUCT subject to royalty (by country);
(c) Deductions permitted against invoiced sales for calculating NET SALES
VALUE,
(d) Total royalties payable to LICENSOR.
(e) Any other information reasonably requested by LICENSOR for determining
royalties due to LICENSOR.
6.4 In each year the amount of royalty due shall be calculated quarterly as
of March 31, June 30, September 30 and December 31 (each as being the last day
of an "Accounting Period") and shall be paid quarterly within the thirty days
next following such date, every such payment shall be supported by the
accounting prescribed in Paragraph 6.3 and shall be made in Dutch Guilders.
Whenever royalty conversion from any foreign currency shall be required, such
conversion shall be calculated at the average rate of exchange for the calendar
quarter based on the daily rate of exchange for the calendar quarter.
E-29
6.5 Any tax required to be withheld by LICENSEE under the laws of any
foreign country for the account of LICENSOR, shall be promptly paid by LICENSEE
for and on behalf of LICENSOR to the appropriate governmental authority, and
LICENSEE shall furnish LICENSOR with proof of payment of such tax. Any such tax
actually paid on LICENSOR's behalf shall be deducted from royalty payments due
LICENSOR.
SECTION 7 - Infringement
7.1 If any of the PATENTS under which LICENSEE is licensed hereunder is
infringed by a third party, LICENSEE shall have the right and option but not the
obligation to bring an action for infringement, at its sole expense, against
such third party in the name of LICENSOR and/or in the name of LICENSEE, and to
join LICENSOR as a party plaintiff if required. LICENSEE shall promptly notify
LICENSOR of any such infringement and shall keep LICENSOR informed as to the
prosecution of any action for such infringement. No settlement, consent judgment
or other voluntary final disposition of the suit which adversely affects PATENTS
may be entered into without the consent of LICENSOR, which consent shall not
unreasonably be withheld. LICENSEE agrees to indemnify and hold LICENSOR
harmless from any and all damages, costs and expenses which arise out of or
result from any action brought by LICENSEE under 7.1(a).
7.2 In the event that LICENSEE does not pursue an action for
infringement, upon within xxxxx (30) days after notice that an unlicensed third
party is an infringer of PATENTS licensed to LICENSEE, LICENSOR shall have the
right and option, but not the obligation at its cost and expense to initiate
infringement litigation and to retain any recovered damages.
E-30
7.3 In the event that litigation against LICENSEE or LICENSOR is
initiated by a third-party charging infringement of a patent of the third party
as a result of the manufacture, use or sale by LICENSEE of PRODUCT covered by
PATENTS, LICENSEE shall promptly notify LICENSOR in writing thereof and shall
defend the parties hereto. LICENSEE shall bear all costs as to any such defense.
SECTION 8 - Warranties.
8.1 Each of LICENSOR and LICENSEE warrants and represents to the other that
it has the full right and authority to enter into this Agreement, and that it is
not aware of any impediment which would inhibit its ability to perform the terms
and conditions imposed on it by this Agreement.
8.2 EXCEPT AS OTHERWISE EXPRESSLY SET FORTH IN THIS AGREEMENT LICENSOR
MAKES NO REPRESENTATIONS OR EXTENDS ANY WARRANTIES OF ANY KIND, EITHER EXPRESS
OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, WARRANTIES OF MERCHANTABILITY,
FITNESS FOR A PARTICULAR PURPOSE, NON-INFRINGEMENT OR VALIDITY OF ANY PATENT OR
OTHER INTELLECTUAL PROPERTY RIGHTS. LICENSOR SHALL NOT BE LIABLE FOR ANY DAMAGES
ARISING AS A RESULT OF THIS AGREEMENT, INCLUDING, BUT NOT LIMITED TO, SPECIAL,
CONSEQUENTIAL, PUNITIVE, INDIRECT DAMAGES OR INJURIES AND/OR LOSS OF PROFITS OR
REVENUES OF LICENSEE OR ANY THIRD PARTY.
SECTION 9 - Indemnification.
9.1 (a) LICENSEE agrees to indemnify and hold harmless LICENSOR, its
directors, officers, employees, and agents, against any and all actions, claims
(specifically including, but not limited to,
E-31
any damages based on product liability claims), suits, losses, demands,
judgments, and other liabilities (including attorney's fees until LICENSEE
assumes the defense as described below) asserted by third parties, government
and non-government, resulting from or arising out of this Agreement or as a
result of the manufacture, use or sale of PRODUCTS and/or any alleged
infringement by the PATENTS or other statutory or common law intellectual
property rights of a third party or any alleged passing off at common law or act
of unfair competition against a third party or deception or confusion of the
public related thereto. If any such claims or actions are made, LICENSOR shall
be defended at LICENSEE's sole expense by counsel selected by LICENSEE and
reasonably acceptable to LICENSOR. In the event that LICENSEE does not provide
acceptable counsel, LICENSOR shall have the right to select counsel and LICENSEE
shall pay the cost and expense thereof.
(b) LICENSOR shall notify LICENSEE promptly of any claim or threatened
claim under this Section and shall fully cooperate with all reasonable requests
of LICENSEE with respect thereto.
(c) The provisions of Section 9.1(a) shall be applicable whether or not a
claim is rightfully brought.
SECTION 10- Assignment; Successors.
10.1 This Agreement shall not be assignable by LICENSEE without the prior
written consent of LICENSOR.
10.2 Subject to the limitations on assignment herein, this Agreement shall
be binding upon and inure to the benefit of said successors in interest and
assigns of LICENSEE and LICENSOR. Any such successor or assignee of a party's
interest shall expressly assume in writing the performance of all the terms
E-32
and conditions of this Agreement to be performed by said party and such
Assignment shall not relieve the Assignor of any of its obligations under this
Agreement.
SECTION 11 - Termination.
11.1 Except as otherwise specifically provided herein and unless sooner
terminated pursuant to Paragraph 11.2 or 11.3 of this Agreement, this Agreement
and the licenses and rights granted thereunder shall remain in full force and
effect until the expiration of LICENSEE'S obligations to pay royalties
hereunder, at which time LICENSEE shall have a fully paid-up, non-cancelable
license.
11.2 Except as provided in Section 2.5, upon breach of any material
provisions of this Agreement by LICENSEE, in the event the breach is not cured
within sixty (60) days after written notice to the LICENSEE, in addition to any
other remedy it may have, LICENSOR at its sole option may terminate this
Agreement.
11.3 LICENSOR may terminate this Agreement by giving thirty (30) days'
written notice to LICENSEE, if LICENSEE files for bankruptcy or bankruptcy of
LICENSEE is sought by a third party, or if the business of LICENSEE is placed in
the possession of a receiver or a government or government agency or LICENSEE
becomes insolvent.
11.4 Upon any termination of this Agreement LICENSEE, at its option, shall
be entitled to finish any work-in-progress which is completed within six (6)
months of termination of this Agreement and to sell any completed inventory of a
PRODUCT covered by this Agreement which remains on hand as of the date of the
termination, so long as LICENSEE pays to LICENSOR the royalties applicable to
said subsequent sales in accordance with the same terms and conditions as set
forth in this Agreement.
E-33
11.5 In the event that this Agreement and/or the rights and licenses granted
under this Agreement to LICENSEE are terminated, any sublicense granted under
this Agreement shall remain in full force and effect as a direct license between
LICENSOR and the SUBLICENSEE under the terms and conditions of the sublicense
agreement, subject to the SUBLICENSEE agreeing to be bound to LICENSOR under
such terms and conditions within thirty (30) days after LICENSOR provides
written notice to the SUBLICENSEE of the termination of LICENSEE's rights and
licenses under this Agreement. At the request of LICENSEE, LICENSOR will
acknowledge to a SUBLICENSEE LICENSOR's obligations to the SUBLICENSEE under
this paragraph.
11.6 The obligations of Sections 4, 6.1, 8.2, 9, 11.4, 11.5, 11.6, 11.7,
11.8, 12.2 and 12.4 of this Agreement shall survive any termination of this
Agreement.
11.7 In the event that the Agreement is terminated or the license granted
to LICENSEE becomes non-exclusive, LICENSEE hereby grants to LICENSOR a
royalty-bearing, non-exclusive license to all patents and patent applications
owned by LICENSEE which cover PRODUCTS as well as to the technical information
directed thereto. A reasonable royalty shall be agreed to by the parties.
11.8 Upon termination of this Agreement for any reason, nothing herein
shall be construed to release either party from any obligation that matured
prior to the effective date of such termination.
SECTION 12 - General Provisions.
12.1 The relationship between LICENSOR and LICENSEE is that of independent
contractors. LICENSOR and LICENSEE are not joint venturers, partners, principal
and agent, master and servant, employer or employee, and have no relationship
other than as independent contracting parties. LICENSOR
E-34
shall have no power to bind or obligate LICENSEE in any manner. Likewise,
LICENSEE shall have no power to bind or obligate LICENSOR in any manner.
12.2 Any matter or disagreement or claim under this Agreement, including
interlocutory or preliminary measures, shall be solely and exclusively referred
to and resolved by the competent court in Amsterdam, the Netherlands, unless
mandatory provisions of the laws of the Netherlands prescribe otherwise.
12.3 This Agreement sets forth the entire agreement and understanding
between the parties as to the subject matter thereof and supersedes all prior
agreements in this respect. There shall be no amendments or modifications to
this Agreement, except by a written document which is signed by both parties.
12.4 This Agreement shall be construed and enforced in accordance with the
laws of the Netherlands without reference to its choice of law principles.
12.5 The headings in this Agreement have been inserted for the convenience
of reference only and are not intended to limit or expand on the meaning of the
language contained in the particular article or section.
12.6 Any delay in enforcing a party's rights under this Agreement or any
waiver as to a particular default or other matter shall not constitute a waiver
of a party's right to the future enforcement of its rights under this Agreement,
excepting only as to an expressed written and signed waiver as to a particular
matter for a particular period of time.
12.7 Notices. Any notices given pursuant to this Agreement shall be in
writing and shall be deemed to have been given and delivered upon the earlier of
(i) when received at the address set forth below, or (ii) three (3) business
days after mailed by certified or registered mail postage prepaid and properly
E-35
addressed, with return receipt requested, or (iii) on the day when sent by
facsimile as confirmed by certified or registered mail. Notices shall be
delivered to the respective parties as indicated:
To LICENSOR: H.C. Implants B.V.
Zernikedreef 6
(2333GK) Leiden, the Netherlands
Copy to: Carella, Byrne, Bain, Gilfillan,
Xxxxxx, Xxxxxxx & Xxxxxxx
0 Xxxxxx Xxxx Xxxx
Xxxxxxxx, Xxx Xxxxxx 00000
Fax no.(000)000-0000
Attn: Xxxxxx X. Xxxxxxx, Esq.
To LICENSEE: Matrix Medical Holding B.V.
Professor Bronkhorsvlaan, Building 57
(3723MB) Bilthoven, The Netherlands
cc:
12.8 Only if required by law and/or regulations, the PRODUCTS manufactured
by or through LICENSEE will be marked legibly with a statement that it is made
under a license from LICENSOR and containing a reference to the PATENTS as may
be relevant.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the
date set forth above.
/s/ XXXXXXX X. XXXXXXXX /s/ XXXXXXX VAN BLITTERSWIJK
----------------------- ----------------------------
H.C. Implants, B.V. Matrix Medical Holding B.V.
Date: June 18, 1997 Date: June 25, 1997
By: Xxxxxxx Xxxxxxxx By: Xxxxxxx van Blitterswijk
E-36
PATENTS
------------------------------------------------------------------------------------------------------------------------------------
Master Name Serial No. Status Your File Country
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Tissue Adhesion (Barrier); Method for preventing tissue adhesion 08/279,811 5,480,436 525400-99 USA
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Tissue Adhesion (Barrier); Method for preventing tissue adhesion 08/078,350 5,508,306 525400-84 USA
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Tissue Adhesion (Barrier); Method for preventing tissue adhesion P9:4011 Pending 000000-000 Xxxxxx
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Tissue Adhesion (Barrier); Method for preventing tissue adhesion 939108098 Pending 525400-127 Europe
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Tissue Adhesion (Barrier); Method for preventing tissue adhesion 70382394 Pending 525400-129 S. Korea
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Tissue Adhesion (Barrier); Method for preventing tissue adhesion 5-519441 Pending 000000-000 Xxxxx
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Tissue Adhesion (Barrier); Method for preventing tissue adhesion 5155493 Pending 525400-131 Australia
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Tissue Adhesion (Barrier); Method for preventing tissue adhesion 21:8520 Pending 525400-132 Canada
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Artificial Skin 574654 5,147,401 525400-151 USA
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Substrate for treating skin defect (Second PolyActive
artificial skin) 08/298,411 Xxxxxxx 000000-000 XXX
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Artificial Skin 79107321 48126 525400-77 Taiwan
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Artificial Skin 902023472 0416702 525400-76 Europe
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Artificial Skin 9014038 Pending 525400-75 S. Korea
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Prosthetic Devices formed from materials having
bone-bonding properties and uses 08/389,303 Xxxxxxx 000000-000 XXX
therefor.
Devices of method?
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Prosthetic Devices formed from materials having bone-bonding
properties and uses 08/089,857 Xxxxxxx 000000-00 XXX
therefor.
Devices of method?
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Prosthetic Devices formed from materials having bone-bonding
properties and uses 892020226.0 357155 525400-69 Europe
therefor
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Prosthetic Devices formed from materials having bone-bonding
properties and uses 12421/1989 Pending 525400-78 S. Korea
therefor
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Prosthetic Devices formed from materials having bone-bonding
properties and uses 576657 Pending 000000-000 Xxxxxx
therefor
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Prosthetic Devices formed from materials having bone-bonding
properties and uses 78106788 47733 525400-79 Taiwan
therefor
------------------------------------------------------------------------------------------------------------------------------------
------------------------------------------------------------------------------------------------------------------------------------
Polyester ester copolymers as drug delivery matrices 08/699,896 Xxxxxxx 000000-000 XXX
------------------------------------------------------------------------------------------------------------------------------------
E-37
APPENDIX B
PATENT ASSIGNMENT
This Assignment, effective as of the _____ day of __________, 199_,
W I T N E S S E T H:
WHEREAS, H.C. Implants, B.V., organized and existing under the laws of the
Netherlands, having a place of business at Leiden, the Netherlands (hereinafter
"Assignor"), is the owner of all right, title and interest in and to the Patents
and Patent Applications and their foreign counterparts, identified on Appendix A
attached hereto, and the inventions claimed in said identified patents, patent
applications and certificates of inventions (hereinafter, "the Property"); and
WHEREAS, Matrix Medical Holding, B.V., organized and existing under the
laws of the Netherlands, having a place of business at Bilthoven, the
Netherlands (hereinafter, "Assignee"), is desirous of acquiring the entire
right, title and interest in and to the Property.
NOW, THEREFORE, for the consideration as set forth in the License and
Option Agreement dated as of __________________, 1997 between Assignor and
Assignee, and for other good and valuable consideration, the receipt and
sufficiency of which is hereby acknowledged, Assignor does hereby assign, sell,
transfer, convey and grant Assignee, its successors and assigns, the entire
right, title and interest in and to the Property, including the right to apply
for, Letters Patent and certificates of invention in Assignee's name for the
aforesaid inventions in the United States and all countries foreign thereto, and
all reissues, extensions, renewals, reexaminations, divisions and continuations
with respect to the Property, from the date hereof to the full end of the term
or terms for which the Property may be issued, the same to be held
E-38
and enjoyed by Assignee, its successors and assigns to the same extent that it
would have been held and enjoyed by Assignor if this Assignment had not been
made.
Assignor authorizes and requests the Office of Patents and Trademarks of
the Netherlands and the corresponding offices of countries foreign to the
Netherlands to issue all Letters Patent which may issue on a patent application
included in the Property to Assignee, its successors and assigns, in accordance
with this Patent Assignment.
Assignor binds itself, as well as its successors, assigns and legal
representatives to execute and deliver to Assignee, its successors and assigns,
any further documents or instruments and do any and all further acts that may be
necessary to vest in Assignee, its successors and assigns, the title herein
conveyed, or intended so to be, and to the extent possible to enable such title
to be recorded in the Dutch Patent Office and in the corresponding offices of
countries foreign to the Netherlands.
Assignor further covenants, and agrees that it will at any time upon
request communicate to Assignee, its successors and assigns, any facts pertinent
to the validity or enforceability of the Property and the history thereof, known
to Assignor or to its successors and assigns.
E-39
IN WITNESS WHEREOF, the Assignor has caused these presents to be executed
by a duly authorized corporate officer this ______ day of _______________, 1997.
ATTEST: H.C. IMPLANTS, B.V. (Assignor)
________________________ By:______________________________
DATE: __________________ Title:____________________________
COUNTRY OF :
: SS
COUNTY OF :
Before me this ________ day of ______________, 1997, personally
appeared the above-named _________________ to me known, who being by me duly
sworn according to law, on his oath, stated that he is the ___________________
of H.C. Implants, B.V. and acknowledged that he signed, sealed and delivered the
foregoing instrument as the free and voluntary act and deed of said corporation.
------------------------------
Notary Public
My commission expires ______________
E-40
