EXCLUSIVE LICENSE AGREEMENT
EXCLUSIVE LICENSE AGREEMENT, effective as of August 20, 1998,
is by and between TLC THE LASER CENTER PATENTS INC., a Canadian corporation
having an address of 0000 Xxxxxxxx Xxxxx, Xxxxx 000, Xxxxxxxxxxx, Xxxxxxx,
Xxxxxx (hereinafter referred to as "TLC") and LASERSIGHT TECHNOLOGIES, INC., a
Delaware corporation, having an address of 0000 Xxxxxxxxxx Xxxxxxxxx, Xxxxx 000,
Xxxxxxx, Xxxxxxx 00000 (hereinafter referred to as "LASERSIGHT")
BACKGROUND:
A. TLC owns certain rights in a patent related to ophthalmological surgery;
and
B. LASERSIGHT desires to acquire, and TLC desires to grant, an exclusive
license to all rights in the aforementioned patent.
The parties hereto agree as follows:
ARTICLE I. DEFINITIONS
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As used above and throughout this Exclusive License Agreement,
the definitions of the following terms have the meanings set forth below:
(a) "Affiliated Company" shall mean any person or entity
controlling, controlled by or under common control with another person. For
purposes of this definition, "control" (including, with correlative meaning, the
terms "controlled by" and "under common control with"), as used with respect to
any person or entity, shall mean the possession, directly or indirectly, of the
power to direct and cause the direction of the management and policies of such
person or entity, whether through the ownership of voting securities, by
contract or otherwise.
(b) "Agreement" shall mean this Exclusive License Agreement.
(c) "Effective Date" shall mean the date set forth in the first
paragraph of this Agreement.
(d) "LASERSIGHT Patents" shall mean those patents and patent
applications listed in Exhibit A attached hereto together with all reissues,
reexaminations, divisions, continuations, continuations-in-part, renewals,
extensions of, and additions thereto.
(e) "Licensed Patents" shall mean those patents and patent
applications listed in Exhibit B attached hereto together with all reissues,
reexaminations, divisions, continuations, continuations-in-part, renewals,
extensions of, and additions thereto and any patent obtained in a country other
than the United States that is based on an application that claims a priority,
in whole or in part, based on the filing date of U.S. Patent No. 5,630,810.
(f) "Licensed Procedure" shall mean any method or procedure that
would, except for this Agreement, infringe a claim in a Licensed Patent.
(g) "Licensed Product" shall mean any apparatus that is capable of
performing a Licensed Procedure and that would, except for this Agreement,
infringe a claim in a Licensed Patent, either directly or contributorily, or
which would induce infringement of a Licensed Patent, and all additional
apparatus which is associated therewith wherein the sale of such additional
apparatus is normally anticipated with the sale of the Licensed Product.
(h) "Net Recovery" shall mean the excess of all amounts received by
LASERSIGHT pursuant to an action for infringement of the Licensed Patents
against an unrelated third party over the sum of (a) all direct and indirect
costs and expenses incurred by LASERSIGHT to recover the damages for
infringement of the Licensed Patents, plus (b) all litigation, arbitration or
other dispute resolution costs and expenses, including attorney fees, expert
fees and court related expenses incurred by LASERSIGHT in connection with
pursuing the recovery of damages for infringement of the Licensed Patents.
(i) "Net Royalties" shall mean the excess of all royalties received
by a licensor pursuant to a license agreement over the sum of (a) all direct and
indirect costs and expenses incurred by the licensor following the Effective
Date to obtain, maintain or enforce the applicable patent, plus, (b) all
litigation, arbitration or other dispute resolution costs and expenses,
including attorney fees, expert fees and court related expenses incurred by the
licensor following the Effective Date in connection with the enforcement of the
applicable patent, plus, (c) all taxes withheld on such royalties plus (d) all
fees payable to licensing agents in connection with the licensing of the
applicable patent, plus, (e) all direct and indirect costs and expenses incurred
in connection with the licensing of the applicable patent, including but not
limited to costs of any licensing program, fees and expenses of consultants or
other professionals, and salary and related expenses of employees involved in
licensing or marketing the applicable patent. In determining the amount of Net
Royalties under this Agreement, LASERSIGHT shall not deduct its internal salary
and benefit expenses incurred to pay its own employees to the extent those
expenses exceed 2% of the aggregate gross royalties received by LASERSIGHT
during any applicable period.
ARTICLE II. WARRANTY
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2.01. TLC warrants that it is the sole owner of the entire right, title
and interest in the Licensed Patents, free and clear of all liens, security
interests, charges, encumbrances, equities and other adverse claims, and it has
the unencumbered right to grant the exclusive license to the Licensed Patents
provided in this Agreement to LASERSIGHT.
2.02. TLC warrants that it has not previously granted and will not grant
any rights to any third party that are inconsistent with the rights granted to
LASERSIGHT herein and that TLC has full power, right and authority to enter into
and carry out its obligations under this Agreement.
2.03. TLC warrants that, except for situations where public policy
considerations in a country may limit the enforceability of patent claims for
medical procedures, it is not aware of any reason why any of the Licensed
Patents is invalid or unenforceable and it has disclosed to representatives of
LASERSIGHT each assertion by another person at any time prior to the execution
of this Agreement that any of the Licensed Patents is invalid, unenforceable or
not infringed.
2.04. TLC warrants that it has taken all reasonable and customary action
to maintain and protect the Licensed Patents and that all fees to maintain TLC's
rights in the Licensed Patents, including without limitation, registration and
prosecution fees and all professional fees in connection therewith pertaining to
the Licensed Patents, have been paid.
2.05. With respect to each of Licensed Patents, TLC warrants that:
(a) the Licensed Patent is not, nor has it ever been, subject to any
injunction, judgment, order, decree, ruling or charge; and
(b) to the knowledge of TLC and each of its employees or agents with
responsibility for intellectual property matters, no action, suit, proceeding,
hearing, investigation, charge, complaint, claim or demand (collectively, an
"Action") is or ever has been pending or is threatened which challenges the
legality, validity, enforceability, or ownership of the Licensed Patent; and
(c) to the knowledge of TLC and each of its employees and agents
with responsibility for intellectual property matters, there is no basis for any
such Action and TLC has received no notice asserting that any proposed
development, manufacturing, use, sale, license or disposition of products
covered by the Licensed Patent or any performance of a Licensed Procedure
infringes or would infringe the rights of any other party, and
(d) to the knowledge of TLC and each of its employees and agents
with responsibility for intellectual property matters, no person has made a
written or oral assertion that challenges the legality, validity,
enforceability, or ownership of the Licensed Patent during any license
negotiation or otherwise.
2.06. TLC warrants that it has full power, right and authority to enter
into and carry out its obligations under this Agreement and that this Agreement
constitutes the valid and legally binding obligation of TLC, enforceable in
accordance with its terms and conditions.
2.07. TLC warrants that prior to the date of the execution of this
Agreement, no license, agreement or other permission has been granted to any
third party with respect to the Licensed Patents.
2.08. TLC warrants that the execution and delivery of this Agreement and
the licensing of the Licensed Patents pursuant to this Agreement by TLC does not
and will not (i) conflict with or violate any law, rule or regulation, or (ii)
result in the creation of any lien or other encumbrance on any of the Licensed
Patents or result in any material breach of or constitute a material default (or
event which with notice or lapse of time, or both, would become a material
default) under any agreement or other instrument related to the Licensed
Patents.
2.09. LASERSIGHT warrants that it has full power, right and authority to
enter into and carry out its obligations under this Agreement and that this
Agreement constitutes the valid and legally binding obligations of LASERSIGHT,
enforceable in accordance with its terms and conditions.
ARTICLE III. DISCLOSURE
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3.01. The parties understand and agree that no license or other right is
granted herein to either party, directly or by implication, estoppel or
otherwise, with respect to any trade secrets or know-how, and that no such
license or other right shall arise from the consummation of this Agreement or
from any acts, statements or dealings leading to such consummation. Except as
specifically provided herein, neither party is required hereunder to furnish or
to disclose to the other any technical or other information.
ARTICLE IV. CONFIDENTIALITY
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4.01. LASERSIGHT and TLC realize that some information received by one
party from the other pursuant to this Agreement may be confidential. It is
therefore agreed that any information received by one party from the other, and
clearly designated in writing as "CONFIDENTIAL", shall not be disclosed by the
receiving party to any third party and shall not be used by the receiving party
for purposes other than those contemplated by this Agreement for a period of
three (3) years from the date this Agreement is terminated for any reason,
unless or until:
(a) such information shall become publicly known through no fault of
the receiving party, or
(b) such information was already in the receiving party's possession
by lawful means prior to the disclosure of such information to the receiving
party, or
(c) such information shall be subsequently disclosed to the
receiving party by a third party who is not under any obligation of
confidentiality to the disclosing party, or (d) such information is
independently developed by the receiving party, or (e) the receiving party has
been advised by its counsel that disclosure is
required by applicable law.
4.02. It is to be understood that specific information which has been
disclosed to the receiving party shall not be deemed to be available to the
public or in the receiving party's prior possession merely because it was
embraced by more general information available to the public or in the prior
possession of the receiving party.
ARTICLE X. XXXXX OF LICENSE TO LASERSIGHT IN THE LICENSED FIELD
----------------------------------------------------
5.01. TLC grants to LASERSIGHT and its Affiliated Companies an exclusive
license under the Licensed Patents to:
(a) make, have made, import, use, lease, offer to sell, sell, and/or
otherwise dispose of Licensed Products;
(b) perform and/or have performed Licensed Procedures;
(c) enforce the Licensed Patents including but not limited to,
initiating legal proceedings against unrelated third parties for infringement of
the Licensed Patents; and
(d) recover damages for infringement of the Licensed Patents by
unrelated third parties occurring before or after the Effective Date.
5.02. TLC further grants to LASERSIGHT and its Affiliated Companies the
right to sublicense to unrelated third parties under the exclusive license
granted hereunder. The granting of sublicenses by LASERSIGHT and its Affiliated
Companies shall be at the discretion of LASERSIGHT and its Affiliated Companies
and they shall have the sole power to determine whether or not to grant
sublicenses, the identity of the sublicensee, and the terms and conditions of
such sublicenses.
5.03. TLC grants to the users of Licensed Products leased, sold and/or
otherwise transferred by LASERSIGHT, its Affiliated Companies and their
sublicensees an immunity from suit under the Licensed Patents for the
performance of Licensed Procedures which involve the use of the Licensed
Products.
ARTICLE VI. CONSIDERATION
-------------
6.01. In consideration for the rights granted under Article V of this
Agreement, LASERSIGHT shall pay to TLC an amount equal to the product of twenty
percent (20%) times the sum of (A) the aggregate Net Royalties received during
the term of this Agreement by LASERSIGHT or its Affiliated Companies from any
present or future licensee under any of the LASERSIGHT Patents (listed in
Exhibit A) or the Licensed Patents payable on sales made or procedures
undertaken during the term of this Agreement, plus, (B) the aggregate Net
Royalties received during the term of this Agreement by LASERSIGHT or its
Affiliated Companies from any present or future licensee under United States
Patent No. 4,784,135 or United States Patent No. 4,925,523 (collectively the
"Xxxx/Brarren Patents") in excess of Two Million Five Hundred Thousand Dollars
($2,500,000) during any year beginning on the Effective Date or each anniversary
of the Effective Date, plus, (C) the aggregate Net Royalties received during the
term of this Agreement by LASERSIGHT or its Affiliated Companies from any
present or future licensee under any patent issued subsequent to the Effective
Date of this Agreement that is invented or acquired by LASERSIGHT in order to
replace the inventions claimed in the LASERSIGHT Patents or the Licensed Patents
("Replacement Patents") payable on sales made or procedures undertaken during
the Term of this Agreement, plus, (D) the aggregate Net Royalties received
during the Term of this Agreement by LASERSIGHT, its Affiliated Companies or any
successor to LASERSIGHT or its Affiliated Companies pursuant to a currently
existing patent license between Summit Technology, Inc. and TLC, plus, (E) the
Net Recovery of damages received during the Term of this Agreement by LASERSIGHT
pursuant to any action based on infringement (including infringement prior to
the Effective Date) of the Licensed Patents brought by LASERSIGHT pursuant to
Section 5.01 (c) or (d).
6.02. LASERSIGHT shall pay all amounts due hereunder in United States
dollars. All amounts due for an accounting period computed in other currencies
shall be converted into United States dollars at the exchange rate for bank
transfers from such currency to United States dollars as quoted by the head
office of Citibank N.A., New York, at the close of banking on the last day of
such accounting period (or the business day thereafter if such last day shall be
a non-business day).
6.03. A semiannual accounting period shall end on the last day of each
June and December during the term of this Agreement. Within sixty (60) days
after the end of each such period, LASERSIGHT shall furnish to TLC a written
report containing the information specified in Section 6.04 below and shall pay
to TLC all unpaid amounts accrued hereunder to the end of each such period.
6.04. LASERSIGHT shall keep records in sufficient detail to permit the
determination of amounts payable hereunder and at the request and expense of TLC
will permit an independent auditor selected by TLC, or any other person
acceptable to both TLC and LASERSIGHT to examine, during ordinary business hours
once in each calendar year, such records and other materials as may be required
by the auditor or other person to verify or determine the amounts paid or
payable under this Agreement. Such auditor or other person shall be instructed
to report to TLC only the amount due and payable. If no request for examination
of such records and materials for a particular semiannual accounting period has
been made by TLC within two (2) years after the end of said period, the right to
examine such records and materials for said period, and the obligation to keep
such records and materials for said period shall terminate.
ARTICLE VII. TREATMENT OF LICENSE RIGHTS UNDER BANKRUPTCY CODE; BREACH OF
AGREEMENT -----------------------------------------------------------------
---------
7.01. All rights and licenses granted under this Agreement by either party
to the other including the license itself, are, for purposes of section 365 of
the Bankruptcy Code, licenses to "intellectual property" as defined under the
Bankruptcy Code. The parties agree that both parties shall retain and may
exercise any of their rights under the Bankruptcy Code in the event of a
bankruptcy filing by or against LASERSIGHT or TLC, as the case may be.
7.02. If either party is in breach of any obligation hereunder (other than
an obligation under Article IV), the nonbreaching party shall be entitled solely
to money damages plus costs of recovery and collection (including but not
limited to attorney fees) plus interest at the rate of 8% per annum from the
date such payment was due and payable until paid. Except with respect to a
breach under Article IV, both parties expressly waive all rights for injunctive
and other equitable relief, including but not limited to the right to bring a
claim for patent infringement.
ARTICLE VIII. PATENT MAINTENANCE
------------------
8.01. TLC shall be obligated to pay all fees and costs necessary to
maintain the Licensed Patents for the respective full term of the Licensed
Patents; provided however, LASERSIGHT shall monitor the payment of all fees and
costs related to the Licensed Patents and shall advance on TLC's behalf, all
such fees and costs, which aggregate amount advanced by LASERSIGHT shall be
deducted from the amounts due to TLC under Article VI. If TLC is unwilling at
any time to reimburse LASERSIGHT fully for all fees and costs advanced by
LASERSIGHT necessary to maintain the Licensed Patents, LASERSIGHT shall have an
option to pay such costs on its own behalf. If LASERSIGHT exercises its option
to make such payments on its own behalf, TLC agrees to assign to LASERSIGHT all
of TLC's right, title and interest in the Licensed Patents.
8.02. In the event any of the Licensed Patents is subject to a legal or an
administrative proceeding concerning patent validity, patentability,
enforceability or a related issue, each party to this Agreement shall inform the
other party of such a proceeding and keep the other party regularly apprised of
such proceedings. If feasible in connection with any proceeding, each party
shall, at its own expense, be entitled to submit its comments on the other
party's submission; provided, however, that submission of such comments by the
party not directly involved in the proceeding shall not interfere with the party
directly participating in the proceedings.
ARTICLE IX. PATENT ENFORCEMENT
------------------
9.01. Enforcement. Upon learning of the infringement of any of the
Licensed Patents by third parties, each party shall inform the other in writing
of that fact, and shall supply the other with any evidence available pertaining
to the infringement. Pursuant to the rights granted under Section 5.01(c),
LASERSIGHT may, at its own discretion and at its own expense, take whatever
steps are necessary to stop the infringement of such Licensed Patent and, with
respect to such Licensed Patent which LASERSIGHT is enforcing, LASERSIGHT shall
have the sole right to recover damages and/or settlement proceeds from the
resolution of such an infringement claim; provided, however, that
notwithstanding anything to the contrary herein that in any enforcement action
brought by LASERSIGHT involving its rights under this Agreement, TLC shall, in
its sole discretion, be entitled to enter such action as a third party solely in
order to defend any counterclaim, cross claim or other claim against TLC. If TLC
elects to enter such action, TLC shall pay all of its legal costs and expenses,
including attorneys' fees and costs and experts' fees. Prior to the assignment
of the Licensed Patents to LASERSIGHT pursuant to Section 8.01, LASERSIGHT will
not compromise or settle any claim, action or proceeding involving the Licensed
Patents, where such action would impact the validity or enforceability of the
Licensed Patents, without the approval of TLC, which approval shall not be
unreasonably withheld. This Section 9.01 shall survive expiration or other
termination, for any reason, of this Agreement.
9.02. TLC as Party. In the event of the initiation of legal proceedings
under either Sections 5.01(c), 6.01(c) and/or Section 9.01, TLC or TLC's
assignee of the applicable Licensed Patent, at LASERSIGHT's request and at
LASERSIGHT's expense, shall agree to become a named party in such litigation if,
in LASERSIGHT's sole discretion and opinion, TLC's or TLC's assignee's
appearance in such action is necessary and prudent to adjudicate the disputed
rights in such action. In the event TLC or TLC's assignee appears in such action
pursuant to this Section 9.02, LASERSIGHT shall indemnify TLC and TLC's assignee
for its participation and shall reimburse TLC or TLC's assignee for all
reasonable attorney fees paid by TLC or TLC's assignee provided however, that
LASERSIGHT shall be entitled, at its sole cost and expense to prosecute, contest
or defend the action on behalf of TLC or TLC's permitted assignee with counsel
of LASERSIGHT's choosing and TLC or TLC's permitted assignee shall not admit any
liability with respect thereto or settle, compromise or discharge the action
without the prior written consent of LASERSIGHT so long as LASERSIGHT is
prosecuting, contesting or defending the action in good faith and TLC or TLC's
permitted assignee shall cooperate with LASERSIGHT in the action and shall
accept any settlement thereof recommended by LASERSIGHT so long as TLC is fully
indemnified by LASERSIGHT.
ARTICLE X. GOVERNING LAW; DISPUTE RESOLUTION
---------------------------------
All parties to this Agreement, including the undersigned parties, their
successors and permitted assigns and all others who may hereafter become bound
by this Agreement by assuming it or otherwise (all collectively, the "Parties")
do hereby reciprocally and irrevocably agree to the following matters, all of
which shall also apply fully to anyone else who has or asserts any rights under
this Agreement as third party beneficiary or otherwise (all of whom are also
"Parties" as used herein):
(a) Choice of Law. This Agreement shall in all respects be construed
and enforced in accordance with the law of the State of Delaware.
(b) Claims as to Subject Matter to be Determined in Delaware Courts.
All judicial cases or proceedings involving Parties and involving subject matter
that includes any claims, demands or disputes that now exist or may hereafter
arise (all collectively called "Claims" herein) arising from or relating to any
aspect of, (1) the negotiation or execution of this Agreement, (2) any question
as to the validity or effect of this Agreement, (3) anything done by anyone in
the performance of this Agreement, (4) any alleged breach of this Agreement, or
(5) any alleged modification, extension or continuation of this Agreement (all
collectively called the "Subject Matter" herein), shall, whether or not such
proceedings or cases also involve other parties or matters, proceed and be
determined only in the state and/or federal courts located in New Castle County,
State of Delaware (all collectively, "Delaware Courts") and in the courts having
appellate jurisdiction over them, and not elsewhere.
(c) Claims as to Subject Matter to be Determined by Superior Court
in Summary Proceedings if they Qualify. All Claims arising from or relating to
the Subject Matter (whether or not such Claims also involve other matters or
parties), which by their nature and by the amount in controversy qualify as a
matter of right to be determined in the Superior Court of the State of Delaware
in and for New Castle County (the "Superior Court") under its Rules governing
Summary Proceedings for Commercial Disputes (the "Rules" as to "Summary
Proceedings"), shall proceed and be determined in such Summary Proceedings only.
As to all such Claims which may be determined in such Summary Proceedings only
in the discretion of the Superior Court, if any party applies for such
discretionary Summary Proceedings all Parties shall support, and no Party shall
oppose, such application. In either case, all Parties hereby agree to submit to
the Superior Court's jurisdiction for Summary Proceedings, and all Parties do
hereby submit to such jurisdiction. Any such Claims which cannot be determined
in such Summary Proceedings as a matter of right, or as to which discretionary
Summary Proceedings are not sought or are denied, shall proceed and be
determined in whichever Delaware Court has jurisdiction of such Claims.
(d) No Proceedings Elsewhere. No Party shall initiate or pursue any
case or proceeding of any kind against any other Party as to any Claim arising
from or relating to any aspect of the Subject Matter, in any forum other than a
Delaware Court. No Party shall initiate or pursue any case or proceeding seeking
damages against any Party in any forum other than the Superior Court, as to any
Claim which, by its nature and by the amount in controversy, qualifies to be
determined as a matter of right by the Superior Court in Summary Proceedings,
nor as to any Claim for which discretionary Summary Proceedings are permitted by
the Superior Court's Rules, where any Party has applied for such discretionary
Summary Proceedings and the Superior Court has granted them, or has not yet
refused to grant them.
(e) Waiver of Objections to Forum; Waiver of Change of Forum
Remedies. All Parties hereby reciprocally and irrevocably waive in advance any
and all objections to the Delaware Courts as forums based upon any of: venue,
the doctrine of forum non conveniens, the present or future pendency of any
other case or proceeding elsewhere, any compulsory counterclaim rule, or any
other doctrine, statute, rule, practice or fact. No such case or proceeding that
is pending in a Delaware Court shall be dismissed, stayed or delayed based on
any such objection to the forum, nor transferred nor removed to any other forum
on any ground, including without limitation removal from any state Delaware
Court to a federal court. All Parties reciprocally and irrevocably waive in
advance all rights they might otherwise have to cause or seek any such
dismissal, stay, delay, transfer or removal, and also waive all rights they
might otherwise have to assert in any forum that any Party's right to proceed in
any Delaware Court under this Agreement is subject to any such objection,
dismissal, stay, delay, transfer or removal.
(f) Submission to In Personam Jurisdiction; Service of Process. For
purposes of all actions or proceedings that involve Claims arising from or
relating to the Subject Matter (whether or not they also involve other matters
or parties), all Parties do hereby irrevocably submit themselves to the personal
jurisdiction of each and all of said Delaware Courts, and do hereby irrevocably
agree for purposes of all such actions or proceedings that service of such
Delaware Courts' process upon them may be duly perfected by any of the following
three methods, each of which, in itself, shall constitute due and sufficient
service of such process:
(1) Hand delivery to a Party at its address stated in the first
paragraph of this Agreement.
(2) Effective immediately Delaware Corporate Organizers, Inc., and
its successors (the "Registered Agent") is hereby irrevocably appointed as the
registered agent of all Parties to receive service of process under this
Agreement in Delaware. LASERSIGHT shall promptly make appropriate arrangements
with the Registered Agent and shall pay its fees on a timely and regular basis,
so there will be no break in its service as such Registered Agent for all
Parties. If due to non-payment or for any other reason the Registered Agent does
not serve as such, or ceases to do so, and no successor has been appointed,
anyone desiring to serve process on a Party hereunder by serving such Registered
Agent may pay its fees, and may take any other reasonable steps to obtain its
commencement or resumption of service as such Registered Agent for the Parties,
whereupon any Party may then be served with process by service upon such
Registered Agent, as fully as if such Registered Agent had duly served as such
without interruption from the date of this Agreement. Alternatively, any Party
may appoint for all Parties a new Registered Agent in New Castle County,
Delaware, and shall within three business days of such appointment give written
notice of such appointment to all Parties at the addresses stated in subsection
(f)(1), above. Regardless of any defect in such notice or any failure to give
it, service on such new Registered Agent shall be valid if the Party thus served
receives actual notice of such service within three business days of such
service.
(3) By any other lawful method.
ARTICLE XI. ASSIGNMENT
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Neither this Agreement nor any interest hereunder shall be
assignable by any party by operation of law or otherwise without the prior
written consent or agreement of the other party, except LASERSIGHT may assign
all of its interests under this Agreement in connection with a sale or transfer
of all or substantially all of its business and assets to which this Agreement
relates. This Agreement shall inure to the benefit of and shall be binding upon
the parties and their successors and permitted assigns, and the name of a party
appearing herein shall be deemed to include the names of such party's successors
and permitted assigns to the extent necessary to carry out the intent of this
Agreement.
ARTICLE XII. INVENTION DOCUMENTATION
-----------------------
12.01. Upon LASERSIGHT's request at any time, including but not limited
to, if it becomes a party to litigation in which the validity or enforceability
of any of the Licensed Patents is challenged, TLC shall provide to LASERSIGHT
all files and records related to the applicable Licensed Patent in its
possession, custody or control and further agrees to fully exercise, on behalf
of LASERSIGHT, (1) TLC's rights to obtain all files and records in Xxxxxxx X.
Xxxxxx'x possession at such time pertaining to the conception and reduction to
practice of the inventions claimed in the Licensed Patents, and (2) TLC's rights
to obtain access to any inventors who are employees of TLC at such time.
LASERSIGHT shall reimburse TLC and Xxxxxxx X. Xxxxxx for any reasonable
out-of-pocket expenses associated with the actions taken pursuant to this
section.
12.02. TLC shall give LASERSIGHT prompt written notice of its information
of any intention by any party to destroy any records pertaining to the
conception and reduction to practice of the inventions claimed in the Licensed
Patents, and, in the event TLC chooses not to exercise its rights to take
possession of such records, LASERSIGHT shall then have the right to take
possession of such records. In the event TLC does exercise its rights to obtain
such records, TLC shall provide a copy of such records to LASERSIGHT at
LASERSIGHT's expense and subject to any applicable confidentiality restrictions.
ARTICLE XIII. MISCELLANEOUS
-------------
13.01. TLC agrees that there shall be no public disclosures, including but
not limited to, press releases, concerning this Agreement or activities
occurring pursuant to this Agreement without LASERSIGHT's prior written
approval.
13.02. No variation or amendment of this Agreement shall bind either party
unless made in writing and agreed to in writing by duly authorized officers of
TLC and LASERSIGHT.
13.03. If any of the provisions of this Agreement are held void or
unenforceable, the remaining provisions shall nevertheless be effective, the
intent being to effectuate this Agreement to the fullest extent possible.
13.04. If either party fails to fulfill its obligations (other than any
payment obligation) hereunder, when such failure is due to an act of God, or
other event such as fire, flood, civil commotion, riot, war (declared and
undeclared), revolution, action by government including delays in obtaining
governmental approvals, embargoes, then said failure shall be excused for the
duration of said event. This provision shall not apply where the failure to
fulfill an obligation results solely from the action or inaction of a party. If
either party fails to fulfill a payment obligation hereunder, the other party's
exclusive remedy will be to seek monetary damages directly caused by the delay
of payment.
13.05. The headings in this Agreement are for convenience only and are not
intended to have any legal effect.
13.06. A failure by any party hereto to exercise or enforce any rights
conferred upon it by this Agreement shall not be deemed to be a waiver of any
such rights or operate so as to bar the exercise or enforcement thereof at any
subsequent time or times.
13.07. Nothing in this Agreement is intended or shall be deemed to
constitute a partnership, agency, employer-employee or joint venture
relationship between the parties. All activities by the parties hereunder shall
be performed by them as independent contractors. No party shall incur any debts
or make any commitments for or on behalf of the other party, unless specifically
authorized in writing by TLC or by an officer of LASERSIGHT.
13.08. Unless otherwise terminated hereunder, the term of this Agreement
shall expire simultaneously with the last to expire of the Licensed Patents,
provided however that LASERSIGHT shall have the unilateral right to terminate
this Agreement on thirty (30) days advance written notice.
13.09. This Agreement constitutes the entire agreement between the parties
as to the subject matter hereof, and all prior negotiations, representations,
agreements and understandings are merged into, extinguished by and completely
expressed by this Agreement.
IN WITNESS WHEREOF, the parties have executed this Agreement
as of the 20th day of August, 1998.
LASERSIGHT TECHNOLOGIES, INC.
a Delaware corporation
/s/Xxxxxxx X. Xxxxxx
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Xxxxxxx X. Xxxxxx
Chief Executive Officer
TLC The Laser Center Patents Inc.
By:/s/X.X. Xxxxx
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Name: Xxxxxx X. Xxxxx
Title: General Counsel
