EXHIBIT-10.3
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EXCLUSIVE LICENSE AGREEMENT
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Agreement made as of this 1st day of November, 1989, by and between
XXXXXX X. XXXXXXX (hereinafter "Licensor") and OCULOKINETICS, INC., a California
corporation, having its principal place of business located at 0000 X. 000xx
Xxxxxx, Xxxxx 000, Xxxxxxxx, Xxxxxxxxxx 00000 (hereinafter "Licensee").
WITNESSETH:
WHEREAS, Licensor is the owner of the "Alcohol & Drug Impairment
Analyzer", the product to be licensed, a computer-based system for the accurate
and objective measure of eye movements and pupil size which has a number of
uses, and is the subject of United States Patent No. 4,815,839, dated March 28,
1989, a copy of which is attached hereto, and Patent Applications filed in
Japan, Xxxxx Xxxxx, Xxxxxx, Xxxxxx, Xxxxxx Xxxxxxx, Xxxxxx and West Germany. The
license granted herein is specifically limited to the knowhow and application of
the product to alcohol and drug impairment analysis and for no other use and is
hereinafter referred to as "Licensed Product", and
WHEREAS, Licensee desires to acquire an exclusive worldwide license to
make, use and sell the Licensed Product, and Licensor is willing to grant the
same under the conditions hereinafter set forth;
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NOW, THEREFORE, the parties agree as follows:
1. EXCLUSIVE LICENSE. The Licensor hereby grants to the Licensee the
exclusive worldwide right and license to enjoy. commercialize, and exploit the
Licensed Product to make, assemble and use apparatus, machinery, auxiliaries and
all devices for carrying the Licensed Product into practice; and all Trademarks
used in connection with the sale and offering for sale of the Licensed Product.
2. APPLICATIONS. Licensor shall provide all necessary information,
drawings, blue prints and all other necessary data and execute all necessary
papers, documents and instruments, to cause to be prepared, filed and
prosecuted, through patent counsel of its choosing, all patent and trademark
applications, whether pending or not, and, insofar as is reasonably possible, on
all improvements hereafter made by the Licensor. Licensee shall promptly
reimburse Licensor for all attorneys fees and costs incurred by Licensor
pursuant to this paragraph. In connection with such applications for the United
States or foreign countries, the Licensor, shall, at the request of the
Licensee, do all acts necessary for obtaining, sustaining, reissuing,
disclaiming or extending said applications.
3. OWNERSHIP OF PATENTS.
a. All patents obtained for the Licensed Product used in
connection therewith shall be the exclusive property of the Licensor, subject to
the exclusive license hereby granted. The Licensor shall, upon demand, execute
and deliver to the Licensee
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such documents as may be deemed necessary or advisable by counsel for the
Licensee for filing in the appropriate patent and trademark offices to evidence
the granting of the exclusive license hereby given.
b. If during the term of this license, Licensor makes any
further improvements in such Licensed Product or the mode of using them, or
becomes the owner of any such improvements either through patents or otherwise,
then it shall communicate such improvements to the Licensee and give Licensee
full information regarding the mode of using them and the Licensee shall be
entitled to use the same with all rights which are hereby granted to the
Licensee with respect to the Licensed Product.
c. If during the term of this license, Licensee, without
assistance or contribution by Licensor, makes any further improvements in such
Licensed Product or the mode of using them, or becomes the owner of any such
improvements either through patents or otherwise, at its sole expense, then
Licensee shall be the owner thereof.
d. If, during the term of the license, Licensee and Licensor
together make any further improvements in such Licensed Product or the mode of
using them, then they shall be joint owners of any such improvements either
through patents or otherwise.
4. TERM. This agreement shall continue through the life of the U.S.
patent and any pending letters, if granted subject to the following:
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(a) The Licensee may, upon (1) year written notice to the
Licensor, terminate this Agreement.
(b) If the Licensee defaults in performing any of the terms of
the Agreement and continues in default for a period of ten (10) days after
written notice thereof; or if the licensee is adjudicated, bankrupt or
insolvent, ceases to do business, or enters into a composition with its
creditors or if a receiver is appointed for it; then the Licensor shall have the
right to terminate this Agreement upon giving notice to the Licensee at least 30
days before the time when such termination is to take effect and thereupon the
agreement shall become void without prejudice to any rights of the Licensor.
(c) Upon termination under subdivisions (a) or (b) of this
paragraph, the Licensee shall duly account to the Licensor and transfer to it
all rights it may have to the patents, inventions, processes and apparatus.
5. PRODUCT DEVELOPMENT. Licensee has presented to Licensor a written
Corporate Business Plan of Licensee, Volume I and Volume II, dated September,
1989, plus Financial Schedule Addendum dated October, 1989. which sets forth
estimates and financial projections for the development, manufacture and sale of
the Licensed Product. Also, Licensor is further aware that alternate courses of
business transactions may be suitable, such as sublicensing, joint ventures,
corporate partnerships, or other business arrangements. And, that Licensee shall
pursue such other courses of business transactions as aforementioned and is
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empowered to enter into any such transaction that Licensor and Licensee jointly
agree is satisfactory. Licensee warrants to Licensor that it will use its best
efforts to meet or exceed all estimates and financial projections set forth
therein.
8. ROYALTY. In consideration of the exclusive license granted herein,
Licensee shall pay to Licensor the following amounts during the term of this
Agreement:
a. License shall pay Licensor within thirty (30) days
subsequent to the end of Licensee's fiscal year, an annual royalty of One
Hundred Dollars ($100.00) in the currency of the United States for each fiscal
year during the life of this Agreement beginning with the fiscal year of 1990.
b. All royalties due shall be paid to Licensor at 0000 Xxxxx
Xxxxxxx Xxxxxx, #0, Xxx Xxxxxxx, Xxxxxxxxxx 00000, in United States dollars
without deductions of any kind.
7. INDEMNIFICATION AND DEFENSE OF INFRINGEMENT CLAIMS.
a. With respect to the exclusive license and rights granted to
Licensee by Licensor, Licensee shall immediately give written notice to Licensor
of any notice of infringement received by Licensee including any existing
products or developments which infringe on the Licensed Product or any patented
or patent pending technology which is known to Licensee as of the date of
execution of this Agreement, or of any claim of infringement, or' of any suit or
suits threatened or brought against it for infringement for any rights licensed
hereunder.
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b. Licensee and Licensor shall mutually cooperate with respect
to any claim of infringement brought against Licensee and/or Licensor with
respect to the rights granted herein. However, notwithstanding the foregoing,
Licensor may refuse to participate in the defense of any claim brought against
Licensee and/or Licensor with respect to the rights granted herein upon advice
of counsel of its own choosing.
8. PROSECUTION OF INFRINGEMENT CLAIMS.
a. In the event that any of the rights granted to Licensee by
Licensor hereunder are infringed by any third party, Licensee shall have the
right, but not the obligation, through counsel of its own choosing, to institute
such suits for patent infringement, trademark infringement, unfair competition,
or an~ other causes of action which may be applicable. Licensee shall control
such action, and pay the attorneys fees and expenses associated with such
action. Licensee shall keep Licensor advised of the status of such action and
Licensor shall have the right to be represented therein by counsel of its own
choosing at Licensor s own expense. Licensor shall have the right to institute
such action if Licensee does not institute such action within thirty (30) days
after written notice from Licensee that it does not intend to pursue the
infringement action.
b. If the party instituting such suit finds it necessary or
desirable to have any other party to this Agreement join the action, such other
party agrees to such joinder. In the event of any recovery in such action,
Licensor and Licensee
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shall, after recovery of all attorneys fees and costs expended by Licensee
and/or Licensor, retain fifty percent (50%) each.
c. In conjunction with such suits, the parties agree to
execute all papers necessary or desirable, and to testify in any suit whenever
requested to do so. The party bringing the action shall reimburse the other
party for any costs associated with providing such assistance.
9. PATENT OFFICE ACTION. Licensor shall have the right, but not the
obligation, to bear the sole cost and expense of prosecuting and/or defending
any claims instituted in any patent office to maintain and protect the rights
granted herein.
10. INDEMNITY AND INSURANCE.
a. Subject to the provisions of subparagraph `b' of this
section, Licensee shall indemnify and hold Licensor harmless against and from
any and all personal injury or property claims by or on behalf of any person,
firm, or corporation arising from the manufacture, labelling, sale, use,
distribution or other disposition of the Licensed Product in any and all
actions, causes of actions in connection therewith or related thereto, or
arising from any accidental injuries sustained by any person, firm or
corporation and from and against all costs, including without limitation,
attorneys' fees, expenses, and liabilities incurred in or about any such claim
or action or proceeding brought against Licensor by reason of any such claim.
Licensee, upon written notice from Licensor, shall resist or defend any such
action or proceeding by counsel reasonably satisfactory to
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Licensor. Licensor shall not be liable to Licensee for any matter as to which
licensee so indemnified Licensor.
b. If licensee itself manufactures, distributes, or sells the
Licensed Product, Licensee shall immediately obtain and maintain in force,
insuring Licensor, at Licensee s sole expense, a policy of insurance providing
product liability, personal injury, and property damage coverage. Said policy
shall name Licensor as named insured and have a minimum aggregate coverage limit
of One Million dollars ($1,000,000.00). License shall, prior to its own
manufacture, distribution or sale of the Licensed Product, provide Licensor with
a certificate of insurance reflecting full compliance with the terms hereof. The
policy obtained shall provide that it may not be cancelled without thirty (30)
days prior written notice to Licensor. Licensee shall immediately provide to
Licensor a copy of any notice of cancellation and immediately obtain substitute
coverage upon like terms within thirty (30) days. If Licensee fails to comply
with this provision at any time during the term of this Agreement, said failure
shall be deemed an event of default of this Agreement.
11. TERMINATION. Unless sooner terminated in accordance with its
terms, this Agreement shall continue until the expiration of the United States
Patent No. 4,815,839, dated March 28, 1989 or any extensions, reissues or
renewals of the same; provided, however, that Licensee shall have the right,
exercisable at the said date of expiration to continue this
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Agreement in full force and effect under either the foreign patents or the
improvement patents which are the subject of this Agreement for such period as
Licensee chooses, subject, however,, to the terms and conditions of this
Agreement. As to the claim of patents which may be expired or as to any claims
held invalid by a court having jurisdiction in a decision which has become
final, unappealable and unreviewable, then, if none of the methods, systems or
apparatus used thereafter by Licensee is covered by other claims of patents
licensed hereunder, Licensee's obligations with respect thereto shall cease.
Licensee shall also cease to exploit any patent or trademark for which a license
has been granted under this Agreement upon termination.
12. DISPOSAL OF INVENTORY AND EQUIPMENT. In the event of the
termination by Licensor pursuant to the provisions of paragraph 4 or 5 hereof,
Licensor shall, if it so elects, have the right to purchase any or all of the
Licensed Products manufactured by the Licensee which are unsold at the time of
the Licensee's receipt of such notice of termination. The price to Licensor
shall be the Licensee's costs without any profit to the Licensee. Licensor may
also in such event buy at depreciated cost, and without profit to the Licensee,
all special equipment applicable to the Licensed Products.
13. SURRENDER OF RIGHTS AND KNOW-HOW. On the termination of the
Agreement, for any reason whatsoever, Licensee shall deliver to Licensor, all
books, notes, drawings, writings and other documents, samples and models
relating to any improvements
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or intentions which are the subject matter of this Agreement; and Licensee shall
also cease to exploit any patent or trademark for which a license has been
granted under this Agreement.
14. NO COMPETITIVE PRODUCTS. Until either party shall give to the
other notice of termination of this Agreement as herein provided, Licensee shall
not directly or indirectly undertake to manufacture, sell or offer for sale
anywhere in the world any equipment or parts competitive with the Licensed
Product.
15. TECHNICAL ASSISTANCE COMMITMENT. Licensor shall assist, consult
and cooperate with Licensee's personnel in the assembly design, engineering,
manufacturing, inspection and servicing of the Licensed Product and components
in the selection of the necessary plant layout, machinery, tools, equipment and
production flow for the economical manufacture of the Licensed Product with all
expenses incurred by Licensor to be paid by Licensee.
16. ASSIGNMENT AND SUBLICENSING. The license herein granted is
non-divisible, non-transferable, non--assignable and without the right to grant
sublicenses except with the written consent of the Licensor, which shall not be
unreasonably withheld. Any such attempt shall be void and of no effect. Licensor
may assign its interest in this Exclusive License Agreement upon ten (10) days
prior written notice to Licensee, provided that any such assignment shall not
relieve Licensor of its obligations hereunder.
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17. EXERCISE OF RIGHTS. Licensee shall abide by all patent and
trademark laws of the countries wherein the Licensed Product is sold and/or
offered for sale.
18. INTERPRETATIONS. The preamble recitals are incorporated in and
made a part of this Agreement. Titles of articles and paragraphs are used for
convenience only and are not a part of the text. All terms used in any one
number or gender shall be construed to include any other number or gender as the
context may require.
19. ENTIRE AGREEMENT. This Agreement constitutes the entire agreement
of the parties and supersedes and integrates all prior negotiations,
commitments, representations and undertakings (written or oral) of the parties
with respect to the subject matter hereof.
20. NON--WAIVER. The failure of Licensor to exercise any right, power
or option given to it hereunder, or to insist upon strict compliance with the
terms hereof by Licensee shall not constitute a waiver of the terms and
conditions of this Agreement with respect to any other or subsequent breach
thereof, nor a waiver by Licensor of its rights at any time thereafter to
require exact and strict compliance with all the terms hereof. The rights or
remedies hereunder are cumulative to any other rights or remedies which may be
granted by law or equity.
22. GOVERNING LAW. This Agreement shall be governed and construed
under and in accordance with the laws of the State of California. Licensee
hereby consents that any disputes between
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it and Licensor shall be adjudicated in the United States District Court for the
Central District of California or the Superior Court of the State of California,
County of Los Angeles, and that said court shall have jurisdiction over
Licensee.
22. COMPLIANCE WITH GOVERNMENT REGULATIONS. Anything herein to the
contrary notwithstanding, Licensee shall conduct its business in a lawful
manner, and shall faithfully comply with all applicable laws or regulations of
all duly constituted public bodies having jurisdiction over the conduct of its
business hereunder. Licensee, at its own cost and expense, shall obtain all
necessary permits from governmental bodies necessary for the conduct of its
business hereunder.
23. SEVERABILITY. If any clause, provisions or paragraph of this
Agreement is held invalid by arbitration or court decree, such findings shall
not invalidate the remainder of this Agreement.
24. NOTICES.
a. All notices to Licensor shall be in writing and shall be
delivered or sent by facsimile, telex or cable, all charges prepaid (with copy
thereof to immediately follow by registered or certified mail, postage fully
prepaid), addressed to Licensor at:
Xxxxxx X. Xxxxxxx
c/o Anker, Xxxxxx & Hymes
00000 Xxxxxxx Xxxxxxxxx
Xxxxx 0000
Xxxxxx, Xxxxxxxxxx 00000
Attention: Xxxxx X. Xxxxx, Esq.
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b. All notices to Licensee shall be in writing and shall be
sent by facsimile, telex or cable, all charges prepaid (with a copy thereof to
immediately follow by registered or certified mail, postage prepaid) addressed
to Licensee at:
OculoKinetics, Inc.
0000 X. 000xx Xxxxxx
Xxxxx 000
Xxxxxxxx, Xxxxxxxxxx 00000
25. MODIFICATION. This Agreement may only be modified or amended by a
written instrument signed or acknowledged by Licensor and a duly authorized
officer of Licensee.
26. ATTORNEY'S FEES. If an action is brought to enforce the provisions
of this Agreement, the prevailing party shall recover his costs and reasonable
attorney's fees from the losing party.
27. EXECUTION OF DOCUMENTS. This Agreement shall be binding upon and
inure to the benefit of the parties, their heirs, executors, personal
representatives, directors, officers, shareholders, successors and assigns.
Licensor and Licensee agree to execute any and all documents necessary and/or
reasonable to effectuate the covenants, terms and obligations on its part to be
performed.
IN WITNESS WHEREOF, this Agreement is entered into as of the day and
year first above written.
"Licensee" "Licensor"
OCULOKINETICS, INC.
By: /s/ Xxxxxxx X. Xxxxxxxx By: /s/ Xxxxxx X. Xxxxxxx
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XXXXXXX X. XXXXXXXX, PRES. XXXXXX X. XXXXXXX
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AMENDMENT TO EXCLUSIVE LICENSE AGREEMENT
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Amendment made as of this 15th day of January, 1992, by and between
XXXXXX X. XXXXXXX (hereinafter `Licensor") and OCULOKINETICS, INC., a California
corporation, having its principal place of business located at 0000 X. 000xx
xxxxxx, Xxxxx 000, Xxxxxxxx, Xxxxxxxxxx 00000 (hereinafter "Licensee").
WITNESSETH:
WHEREAS, Licensor entered into an EXCLUSIVE LICENSE AGREEMENT with
Licensee on November 1, 1989 with respect to stated rights for knowhow,
application and use of product which is the subject of U.S. Patent No.
4,815,839, dated March 26, 1989, and;
WHEREAS, Licensor and Licensee both desire to amend such Exclusive
License Agreement as of the date first set forth above;
NOW, THEREFORE, the parties agree as follows:
1. To amend the Exclusive License Agreement of November 1, 1989 by
granting to Licensee exclusive worldwide rights to all knowhow, and unlimited
applications and use of U.S. Patent No. 4,815,839, and;
2. By this amendment to remove all restrictions and limitations for
use of technology and knowhow imposed by the Exclusive License Agreement of
November 1, 1989, and;
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3. Agree that all other terms and conditions of the Exclusive License
Agreement shall remain unchanged and in force, notwithstanding this Amendment.
IN WITNESS WHEREOF, this Amendment to the Exclusive License Agreement
is entered into as of the day and year first above written.
"Licensee" "Licensor"
OCULOKINETICS, INC.
By: /s/ Xxxxxxx X. Xxxxxxxx By: /s/ Xxxxxx X. Xxxxxxx
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XXXXXXX X. XXXXXXXX, PRES. XXXXXX X. XXXXXXX
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