PATENT LICENSE AGREEMENT
This Agreement made and entered into as of the 17th day of January 2007, by and
between:
1. Xxxxxxxxx Filters, Inc., having its registered office in Timberlake, North
Carolina, USA, a Delaware Corporation, having its principle place of
business at 000 Xxxxxx Xxxxxx, Xxxxx 000-00, Xxxxxx Xxxx, Xxxxx Xxxxxxxx,
00000, XXX, hereinafter referred to as: XXXXXXXXX;
And
2. Glycanex BV, having its registered office in Hilversum, The Netherlands, a
Dutch corporation, having its principle place of business at Xxxxxxxxxxxxx
00-00, 0000 XX Xxxxxxxxx, The Netherlands, hereinafter referred to as:
GLYCANEX;
WHEREAS:
GLYCANEX is a Dutch corporation with commercial interest and activities in the
field of carbohydrate derivatives and materials and products derived therefrom;
XXXXXXXXX has licensed and further developed a technology for the purpose of
removing substances from cigarette smoke from Xxxxxx Consulting Corporation,712
Xxxxxxxxx Xxxx Xxxxxxxx, XX 00000 pursuant to the license agreement between
XXXXXXXXX and Xxxxxx Consulting Corporation (hereinafter referred to as CCC)
dated September 14, 1999.
GLYCANEX desires to obtain an exclusive license under the patent rights of
XXXXXXXXX licensed from Xxxxxx Consulting Corporation;
XXXXXXXXX is willing to grant GLYCANEX such license on the terms and conditions
herein set forth.
NOW, THEREFORE, IT IS AGREED AS FOLLOWS:
1 DEFINITIONS
The following words or phrases shall have the meaning indicated when used in
this Agreement:
1.1 "Effective Date" and "Effective Date of this Agreement" shall mean the date
filled in above.
1.2 "Parties" shall mean XXXXXXXXX and GLYCANEX (in singular or plural usage,
as indicated by the context).
1.3 "XXXXXXXXX Patent Rights" shall mean all patents or applications thereto of
any country or region, owned or controlled by XXXXXXXXX on the Effective
Date of this Agreement or during the term of this Agreement, as listed in
Exhibit 1, where the making, having made, using or selling of Licensed
Products would constitute an infringement thereof, as well as any
divisionals, continuations, continuations-in-part, extensions or reissues
thereof, any patents granted on any of the foregoing and any foreign
patents or applications corresponding to any of the foregoing.
1.4 "Licensed Products" shall mean any products produced by Glycanex, its
Affiliates and/or sublicensees, the manufacture or use of any of which are
covered by XXXXXXXXX Patent Rights.
1.5 "Field of Use" shall mean any use of the XXXXXXXXX Patent Rights in
Licensed Products.
1.6 "Licensed Territory" shall mean all territories as specified in Exhibit 1.
1.7 "Net Sales" shall mean the gross amount invoiced in respect to sales of
Licensed Products in the Field of Use for the Licensed Territory less (a)
discounts actually allowed, (b) credits for claims, allowances, retroactive
price reductions or returned goods, (c) prepaid freights, (d) sales taxes
or other governmental charges actually paid in connection with the sale
(but excluding what is commonly known as income taxes) and (e) commissions
paid to unaffiliated others in connection with sales of Licensed Products.
1.8 "Affiliate" shall mean any corporation, firm, partnership or other entity
which directly or indirectly is owned by or is under common ownership to
the extent of at least fifty percent of the equity having the power to vote
on or direct the affairs of the entity and any person, firm, partnership,
corporation or other entity actually controlled by, controlled, or under
common control with a party to this Agreement.
1.9 "Valid and Unexpired Claim(s)" shall mean one or more issued patent claims
which has not been disclaimed or abandoned, which has not expired in the
country of issue and which has not been declared invalid or unenforceable
by the final judgment of a court of competent jurisdiction from which no
appeal can be or has been taken.
2 GRANT OF RIGHTS
2.1 XXXXXXXXX hereby grants to GLYCANEX an exclusive license under XXXXXXXXX
Patent Rights in the Licensed Territory for Licensed Products in the Field
of Use.
2.2 GLYCANEX may grant sublicense(s) to its Affiliates and/or third parties for
the rights described in paragraph .
2.3 GLYCANEX shall alone or in conjunction with Affiliates and/or third parties
described in 2.2, engage in studies of and certification of performance of
the Licensed Products. Upon signing this Agreement, and on an as needed
basis throughout the duration of this Agreement, XXXXXXXXX will provide all
data, trade secrets, know-how, formulations, manufacturing techniques and
other information to GLYCANEX to support GLYCANEX as fully as possible in
achieving maximum commercial exploitation of XXXXXXXXX Patent Rights.
2.4 GLYCANEX accepts the rights granted herein.
3 ROYALTIES
3.1 In consideration of the rights granted to GLYCANEX, GLYCANEX shall pay
XXXXXXXXX a royalty on Net Sales equal to three percent (3 %) to be
initiated after reaching a sales royalty threshold of 500 000 EUR of Net
Sales by GLYCANEX. For the sake of calculating the sales royalty threshold,
net sales by GLYCANEX to other sublicensees of XXXXXXXXX in the USA will be
included. However, future sales by GLYCANEX to sublicensees of XXXXXXXXX in
the USA will not be subjected to the royalty requirements indicated above.
XXXXXXXXX and GLYCANEX will work together in good faith, and as quickly as
possible, to reach the above stated sales royalty threshold.
4 PAYMENTS
4.1 Licensed Products shall be considered as sold when invoiced to the
customer.
4.2 Upon reaching the sales royalty threshold in 3.1, GLYCANEX will reimburse
XXXXXXXXX all approved costs, occurring on or after the date of reaching
the sales royalty threshold in 3.1, resulting directly from the prosecution
and maintenance of XXXXXXXXX Patent Rights hereunder. Until the sales
royalty threshold in 3.1 is reached, all costs for maintaining the
XXXXXXXXX Patent Rights will be for the account of XXXXXXXXX, as further
described in 7.3 below.
4.3 All payments and royalties due to XXXXXXXXX shall be paid to XXXXXXXXX on a
net base.
4.4 All royalties and other payments due hereunder shall be payable in US
Dollars making reference to "Patent License Agreement XXXXXXXXX".
4.5 Within thirty (30) days after the end of six (6) month period, GLYCANEX
shall pay the royalties due in those six (6) months and as specified in
statements made by GLYCANEX, setting forth the Licensed Products sold, the
Net Sales Price and the royalties due. All other amounts due to XXXXXXXXX
shall be affected by GLYCANEX within thirty (30) days from the invoice
date. GLYCANEX shall pay statutory interest as well as the costs of
collection if GLYCANEX exceeds such thirty (30) days term of payment. All
payments shall be based on an average of the preceding twenty (20)
reporting days using the exchange rate of such bank for foreign currencies
to Euros.
4.6 Payment of royalties shall accompany the statements to be submitted in
accordance with Paragraph 4.7 above.
5 REPORTS, BOOKS OF ACCOUNT, EXAMINATION
5.1 GLYCANEX shall keep accurate records containing all information required
for the computation and verification of the royalties to be paid hereunder.
5.2 Further to paragraph within sixty (60) days of the end of each calendar
year GLYCANEX shall submit to XXXXXXXXX a statement showing the total sales
of Licensed Products by GLYCANEX, its Affiliates and its sublicensees
during that year on a country-by-country basis and the royalties due to
XXXXXXXXX and the basis for calculating such royalties. Such statements
shall be certified by a chartered public accountant.
5.3 GLYCANEX shall permit XXXXXXXXX or its authorized chartered public
accountant to inspect such records from time to time during the term of
this Agreement, and for six (6) months thereafter, to the extent necessary
to verify the royalty reports and payments required by this Agreement. If
XXXXXXXXX finds discrepancies to its disadvantage, GLYCANEX agrees to pay
the auditing costs incurred by XXXXXXXXX.
5.4 If at any time the payments due to XXXXXXXXX hereunder are blocked or
penalized by authority of any government, whether by law, decree or
otherwise, then such payments, as the same become due and payable, shall be
deposited in the local currency in a local bank or other depository
designated by XXXXXXXXX to its order. A receipt for such deposit shall then
accompany each yearly report in lieu of the payment as required herein.
6 DEVELOPING AND MARKETING EFFORTS
6.1 GLYCANEX, its Affiliates and/or sublicensees shall be under a commercially
reasonable efforts obligation in determining the manner and extent to which
it shall develop Licensed Products or create, promote or maintain a market
for sales of such.
6.2 GLYCANEX shall not make any use of the name of XXXXXXXXX in connection with
the use by GLYCANEX of Licensed Products in any advertising, promotional or
sales literature without the prior written consent of XXXXXXXXX. XXXXXXXXX
shall not unduly restrict or prevent GLYCANEX's use of the name of
XXXXXXXXX whenever or wherever required by Federal, State or local law or
regulation, either domestically or internationally.
6.3 GLYCANEX, its Affiliates and/or sublicensees, shall be responsible for the
compliance of Licensed Products sold hereunder with all applicable laws and
regulations. Without limiting the foregoing, all Licensed Products sold by
GLYCANEX, its Affiliates and/or sublicensees hereunder shall be labelled
with such legends and statements as may be required by applicable laws or
regulations.
7 WARRANTIES; LIABILITY, INFRINGEMENT, INDEMNIFICATION
7.1 XXXXXXXXX warrants and represents to GLYCANEX that it has the entire right,
title and interest in and to XXXXXXXXX Patent Rights, and XXXXXXXXX has the
right to license the same as provided hereunder. XXXXXXXXX warrants and
represents to GLYCANEX that it will not grant any license or otherwise
encumber XXXXXXXXX Patent Rights in any manner, directly or indirectly,
during the duration of this Agreement.
7.2 Nothing herein shall be construed as a warranty or representation by
XXXXXXXXX as to the scope or validity of the above patent application or
any patent issuing thereon.
7.3 All required actions and decisions related to the execution and maintenance
of XXXXXXXXX Patent Rights will be taken by XXXXXXXXX in good time and in
complete consultation with GLYCANEX. Until the sales royalty threshold of
3.1 is reached by GLYCANEX, XXXXXXXXX is responsible for all costs to
execute and maintain the XXXXXXXXX Patent Rights. Once the sales royalty
threshold of 3.1 is reached by GLYCANEX, GLYCANEX will be responsible for
all costs to execute and maintain the XXXXXXXXX Patent Rights.
7.4 If prior to the date of reaching the sales royalty threshold in 3.1
XXXXXXXXX is not able to, or chooses not to, continue supporting the costs
for one or more patents or patent applications in a specific territory or
country within the XXXXXXXXX Patent Rights, it will inform GLYCANEX in a
timely fashion and GLYCANEX will have the option to (1) assume and pay said
costs for that patent or patent application using the patent attorney of
XXXXXXXXX, (2) assume the title to the patent or patent application in
question and secure legal representation for the patent or patent
application from a patent attorney chosen by GLYCANEX or (3) allow the
patent or patent application to lapse. If GLYCANEX executes option 1 or 2,
then no future royalties will be due from GLYCANEX for Net Sales in said
territory or country for the specific patent or patent application from
that date forward. If option 2 is chosen, then XXXXXXXXX will promptly
terminate its license rights to this patent and or patent application with
CCC and CCC will simultaneously transfer title to GLYCANEX, pursuant to a
separate agreement between all three parties. If GLYCANEX choses option 3,
then XXXXXXXXX has no further obligation to maintain said patent or patent
application in the specific territory or country in question. Exhibit 1
will be updated from time to time by Parties throughout the duration of
this Agreement.
7.5 If at any time GLYCANEX chooses not to continue supporting a specific
patent or patent application contained within XXXXXXXXX Patent Rights in a
specific territory or country, then GLYCANEX forfeits its license to the
specific territory or country from that date forward.
7.6 If in GLYCANEX's opinion any XXXXXXXXX Patent Rights have been infringed by
the making, having made, using or selling of a product of a third party,
then GLYCANEX shall give notice to XXXXXXXXX of such alleged infringement,
whereupon GLYCANEX may at its discretion initiate suit or settlement of
such infringement at its own expense and to use XXXXXXXXX'x name in
connection therewith. If in XXXXXXXXX'x opinion any XXXXXXXXX Patent Rights
have been infringed by the making, having made, using or selling of a
product of a third party, XXXXXXXXX shall give notice to GLYCANEX whereupon
GLYCANEX shall have 60 days to elect to initiate suit or settlement of such
infringement at its own expense and to use XXXXXXXXX'x name in connection
therewith. If GLYCANEX does not so elect within 60 days of such notice,
XXXXXXXXX may elect to initiate suit or settlement of such infringement at
its own expense.
7.7 In any such litigation brought by either party under 7.6, the other party
shall have the right to join the action at its own expense. If either party
joins an action initiated by the other party, its expenses shall be
reimbursed by the party initiating the action. The parties shall divide the
entitlements to all damages or settlements received as a result of
infringing sales occurring before such damage award or settlement. Any
proceeds of a sublicense (approved by GLYCANEX) resulting from the suit or
settlement for infringing sales occurring after the damage award or
settlement shall be shared between GLYCANEX and XXXXXXXXX as set forth for
royalties in paragraph .
7.8 Except for the warranty and representation of paragraph or gross
negligence by XXXXXXXXX, GLYCANEX shall not hold XXXXXXXXX liable for any
damage suffered by GLYCANEX or third parties as a consequence of the use,
application or exploitation of GLYCANEX 's Licensed Products and/or the
XXXXXXXXX Patent Rights under this Agreement and GLYCANEX hereby
indemnifies and holds harmless XXXXXXXXX against any and all claims of
third parties arising from damages suffered by those third parties in
connection with the use, application or exploitation of Licensed Products
and/or the XXXXXXXXX Patent Rights sold or used by GLYCANEX or its
sublicensees hereunder.
8 CONFIDENTIALITY
8.1 Parties agree that the contents of this Agreement are confidential and
shall not be divulged to third parties without the written consent of both
Parties. No public announcement shall be made related to this Agreement
without the consent of both Parties. GLYCANEX shall maintain in strict
confidence any and all information, material and know-how disclosed under
this Agreement and shall use it only for the purpose intended by this
Agreement. GLYCANEX agrees to limit access to the information, material and
know-how to those employees who have a need to know in order to carry out
the terms of this Agreement.
8.2 Upon the expiration of this Agreement at the end of the normal term, or
upon termination of this Agreement prior to the end of the normal term,
GLYCANEX agrees that it will make no further use of the information,
material and know-how and will immediately deliver to XXXXXXXXX all copies
in GLYCANEX's possession.
8.3 The obligations mentioned in and shall not apply to any information,
material and know-how disclosed hereunder of which GLYCANEX can show in
writing:
a) was known to GLYCANEX at the time of disclosure by XXXXXXXXX;
b) is or becomes generally available to the public without GLYCANEX
being responsible therefore; or
c) is subsequently disclosed to GLYCANEX by a third party having a bona
fide right to disclose the same.
8.4 No item of information, material and know-how shall be deemed to fall
within any of the above exceptions merely because such item is embraced by
some general information that falls within one of the above exceptions. The
obligations concerning the treatment of information, material and know-how
shall survive any expiration or termination of this Agreement.
8.5 Furthermore, the obligations under this paragraph hereof shall not hinder
the receiving party to forward to the competent authorities any information
the disclosure of which will be reasonably useful in connection with the
registration, sale and use of Licensed Products.
9 DURATION AND TERMINATION
9.1 Unless and until sooner terminated as hereinafter provided, this Agreement
shall commence as of the Effective Date and shall continue in full force
and effect until expiration of XXXXXXXXX Patent Rights. Following
expiration, the licenses of paragraphs and shall continue in full force
and effect but be paid up and royalty-free.
9.2 Either party may terminate this Agreement at any time if the other party
fails to perform any material covenant, condition, or limitation herein,
provided such other party shall not have remedied (or taken reasonable
steps to remedy) its failure within (30) days after receipt of written
notice of such failure.
9.3 GLYCANEX may terminate this agreement for any reason or no reason upon six
(6) months written notice.
9.4 This Agreement shall be binding not only upon the Parties hereto, but also
upon, and without limitation thereto, their assignees, successors, heirs,
officers, directors and employees.
9.5 If performance of this Agreement or any part hereof by either party shall
be rendered unenforceable or impossible under, or in conflict with, any
law, regulation, or official action by any government agency having
jurisdiction over such party, then such party shall not be considered in
default by reason of failure to perform and the validity of all remaining
provisions hereof shall not be affected by such result.
9.6 Upon termination of this Agreement for whatever reason:
a) The licence granted to GLYCANEX herein shall cease as of the date of
termination;
b) All sublicenses granted by GLYCANEX shall cease as of the date of
termination;
c) Nothing herein shall be construed to release either party of any
obligations prior to the effective date of termination.
9.7 GLYCANEX may, after the effective date of termination, sell any Licensed
Products that it may have manufactured prior to the date of termination,
provided GLYCANEX pays the royalties due thereon to XXXXXXXXX as provided
for herein.
10 MISCELLANEOUS
10.1If performance of this Agreement is hindered or prevented by act of God,
actions of the elements, fire, labour disturbances, failure or lack of
transportation facilities, shortage of labour, material or supplies,
inability to obtain equipment or parts, breakdown of equipment,
interruption of power or water, war, invasion, civil disturbance, enactment
of legislation or issuance of governmental order or regulation beyond
either Party's control, non-performance by either Party hereunder to the
extent so hindered or prevented, shall be excused.
10.2Any notice to be given under this Agreement shall be sent in writing in
English and shall be effective when either served by personal delivery, or
deposited, postage prepaid, first class airmail registered or certified
mail addressed to the Parties at their respective addresses set forth
hereunder:
If to XXXXXXXXX:
Xxxxxxxxx Filters, Inc.
000 Xxxxxx Xxxxxx, Xxxxx 000-00
Xxxxxx Xxxx, XX 00000
XXX
Attention: Xxxxxxxx Hand
if to GLYCANEX:
Glycanex BV
Xxxxxxxxxxxxx 00-00
0000 XX Xxxxxxxxx
The Netherlands
Attention: Xxxx Xxxxxxxx
10.3Should any part or provision of this Agreement be or become invalid or held
unenforceable or in conflict with the law of any jurisdiction, then the
parties hereto shall substitute such provisions by valid ones, which in
their economic effect come close to the unenforceable provisions that it
can be reasonably assumed that the parties would have contracted this
Agreement also with those new provisions. In case such new provisions
cannot be found, the invalidity or unenforceability of one or more
provisions of this Agreement shall not affect the validity of the Agreement
as a whole, unless the invalid or unenforceable provisions are of such
essential importance for this Agreement that it is to be reasonably assumed
that the parties would not have contracted this Agreement without them.
10.4No waiver by either Party, whether express or implied, of any provision of
this Agreement or of any breach or default of either Party, shall
constitute a continuing waiver of such provisions or a waiver of any other
provision of this Agreement.
10.5Headings and titles in this Agreement are for convenience purposes only and
not in any way influence the construction, performance and enforcement of
its provisions.
10.6This Agreement shall be interpreted and construed, and the legal relation
created herein shall be determined, in accordance with the laws of The
Netherlands.
10.7With respect to any controversy arising out of or relating to this
Agreement, such controversy shall be finally submitted to the competent
court in The Hague, The Netherlands.
IN WITNESS WHEREOF, the duly authorized representatives of the parties hereto
have executed this Agreement in two (2) original counterparts as of the date
first written above.
XXXXXXXXX FILTERS, Inc. GLYCANEX B.V.
Signature:/s/Learned Xxxxxxxx Hand Signature:/s/Xxxxxxx X. Xxxxxxxx
------------------------ ----------------------
Name: Learned Xxxxxxxx Hand Name: Xxxxxxx X. Xxxxxxxx
Title: CEO Title: Managing Director
EXHIBIT 1. XXXXXXXXX PATENT RIGHTS - VERSION JANUARY 17, 2007
Europe - Patent Application EP 00941705.6 - entering National Phase in January
2007
China - Patent CN1271960C
Canada - Patent Application CA2414377
Mexico - Patent Application MXPA03000125
Japan - Patent Application JP2004500901T
Brazil - Patent Application BR0017258
PCT - Patent Application WO0200046
