Exhibit 10.2
EXECUTION VERSION
PATENT AND TECHNOLOGY SUB-LICENSE AGREEMENT
This Agreement is made as of July 15, 2005 by and among PHARLO IP, LLC, a
Florida limited liability company ("Licensor"), XXXXXX CAPITAL CORP., a Nevada
corporation ("Xxxxxx"), and XXXXXX PRODUCTS IP HOLDINGS CORP., a Delaware
corporation and wholly-owned subsidiary of Xxxxxx ("Xxxxxx Products").
RECITALS
A. Pursuant to that certain License Agreement by and between Xxxxx Xxxxxxx
("Cummins") and Licensor, dated July 15, 2005 and effective as of March
18, 2005 (the "Base License"), Licensor is the exclusive licensee under
certain Intellectual Property listed and described on the attached
Schedule A;
X. Xxxxxx Products and its affiliates desire to exploit the Intellectual
Property as set forth herein;
X. Xxxxxx has previously conveyed consideration to various affiliates of
Licensor in exchange for the right to exploit the Intellectual Property in
certain Fields of Use;
D. Licensor desires to grant a royalty free license to Xxxxxx Products on the
terms and conditions set forth herein to enable Xxxxxx Products and its
affiliates to exploit the Intellectual Property in the Fields of Use and
in the manner specified herein;
E. Licensor desires to get back a royalty free license from Xxxxxx Products
under certain other intellectual property rights identified herein for
uses outside the Fields of Use contemplated by this Agreement; and
F. Licensor desires to use Xxxxxx as a licensed source of supply for certain
products to be used outside the Fields of Use in the manner specified
herein.
NOW, THEREFORE, in consideration of the premises, and for other good and
valuable consideration, the receipt of which is hereby acknowledged by the
Parties, the Parties hereto agree as follows:
AGREEMENT
1. Definitions.
1.1 "Asset Purchase Agreement" shall mean an Asset Purchase Agreement
dated as of July 15, 2005 by and among Xxxxxx, Xxxxxx Products,
Indian River Labs, L.L.C., Pharlo Citrus Technologies, Inc.
("PCTI"), Pharlo Citrus Properties Partnership, LLLP, and Coast to
Coast Laboratories, LLC.
1.2 "Effective Time" shall mean the Effective Time which is specified in
the Asset Purchase Agreement.
1.3 "Field of Use" shall mean the fields of use set forth on Schedule B
attached hereto. ----------
1.4 "Improvements" shall mean any additions, enhancements, improvements,
or further developments made by or on behalf of, or acquired by, or
under the control of Licensor relating to the Technology on or after
the Effective Time having application in the Field of Use.
1.5 "Intellectual Property" shall mean the Patents and Know How,
including without limitation that which is described on Schedule A.
1.6 "Know How" shall mean the know how, trade secrets and other
proprietary information now known to and hereafter developed by or
on behalf of Licensor relating to the Technology in the Field of
Use.
1.7 "Knowledge of the Licensor" shall mean the actual knowledge of any
individual serving as an officer or manager of the Licensor.
1.8 "Party" or "Parties" shall mean Licensor, Xxxxxx and Xxxxxx
Products.
1.9 "Patents" shall mean the patents and reissue application listed on
Schedule A, and any patents obtained by Licensor on an Improvement
in the Field of Use, whether or not listed on Schedule A.
1.10 "PCTI Transferred Patents" shall mean the patent applications which
are transferred by PCTI to Xxxxxx Products pursuant to the Asset
Purchase Agreement, together with any patent resulting therefrom,
including any continuation, continuation-in-part, divisional,
reexamination, or reissue that claim subject matter outside the
Field of Use.
1.11 "Products" shall mean products, compounds and devices embodying the
Technology provided in the Field of Use.
1.12 "Services" shall mean services that embody the Technology provided
in the Field of Use.
1.13 "Technology" shall mean a certain anti-microbial compound disclosed
and claimed in the Patents, and methods, processes, and equipment
for making and using such anti-microbial compound for end use in the
Field of Use. In order to further clarify the understanding of the
Parties to this Agreement, the Technology includes by way of
example, and without limitation, (i) a concentrate which results
from the combination of an acid with an ammonium compound in
accordance with the manufacturing processes disclosed in the Patents
("Base Concentrate"), and (ii) blends and end products derived from
the Base Concentrate ("Derivative Products").
1.14 "Territory" shall mean the world.
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1.15 "Third Party Transaction" shall mean a transaction involving
Licensor and an unaffiliated third party (other than Xxxxxx, Xxxxxx
Products or any of their affiliates) pursuant to which the relevant
third party would acquire rights under, in or related to the Patents
outside the Field of Use.
1.16 "Xxxx Xxxxx Agreement" shall mean the Exclusive Field of Use License
Agreement and Product Sale Agreement made effective as of September
16, 2004, as amended, by and between Xxxxxx, Xxxx Xxxxx Special
Products, LLC, PCTI, Indian River Labs, LLC and Licensor, as in
effect on the date hereof.
2. Grant of License to Xxxxxx Products.
2.1 Licensor hereby grants to Xxxxxx Products a royalty free exclusive
(even as to Licensor), right and license under the Intellectual
Property in the Territory to import, export, make, have made,
manufacture, use, offer for sale and sell Products in the Field of
Use and offer to provide and provide Services in the Field of Use.
2.2 Xxxxxx Products shall have the unqualified right, at its sole
discretion, to sublicense and to assign to third parties all or any
portion of the rights and licenses granted to it by Licensor in this
Agreement. Such third parties include subsidiaries and affiliates of
Xxxxxx Products as well as entities having no affiliation to Xxxxxx
Products. All such assignees and sublicensees shall have the same
rights and obligations as Xxxxxx Products hereunder.
2.3 Except as specifically set forth in Section 10 hereof, Xxxxxx
Products has no other obligation to import, export, make, have made,
manufacture, use, offer for sale or sell Products, or to offer to
provide or provide Services.
2.4 Upon reasonable request from Licensor, Xxxxxx Products will report
to Licensor regarding its activities with respect to its use of the
Technology, Products or Services.
3. Improvements.
3.1 Licensor agrees that all Improvements having application in the
Field of Use made on or after the Effective Time shall become a part
of the Intellectual Property and shall be automatically and
immediately licensed to Xxxxxx Products pursuant to this Agreement
without further act or writing required.
3.2 Licensor agrees to disclose in writing all Improvements to Xxxxxx
Products promptly upon discovery or development thereof in such
full, clear and complete terms as to enable Xxxxxx Products to make
and use the same in the Field of Use. Such disclosure shall include
without limitation conveying to Xxxxxx Products any and all
pertinent documentation and data in written and electronic form.
3.3 None of Xxxxxx or Xxxxxx Products shall have any obligation to
provide further consideration, payment or compensation of any kind
to Licensor (or its affiliates, successors or assigns) in exchange
for licensing Improvements as provided herein.
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3.4 All such Improvements shall be entered by the Parties hereto on
Schedule A, but it is understood that a failure to so list an
Improvement shall not be construed to mean that such Improvement is
not a part of this Agreement and not a part of the Intellectual
Property.
4. Patents on Improvements.
4.1 Licensor shall have the right, but not the obligation, to pursue
timely patent protection for any and all Improvements within the
Field of Use, in which case Licensor shall bear all costs and fees
of prosecuting and maintaining such patent protection.
4.2 Licensor shall have ninety (90) days from the development of an
Improvement in which to decide to pursue patent protection for that
Improvement. In the event that Licensor elects not to pursue patent
protection for that Improvement in any country or jurisdiction,
Licensor shall notify Xxxxxx Products promptly in writing of its
decision.
4.3 Xxxxxx Products shall have the right, but not the obligation, to
pursue any patent on an Improvement in any country or jurisdiction
upon being notified that Licensor has elected not to pursue patent
protection in such country or jurisdiction, in which case Xxxxxx
Products shall bear all costs and fees of prosecuting and
maintaining such patent protection.
4.4 Each Party shall provide assistance and cooperation to the other to
the extent necessary to prosecute and maintain patent protection as
provided herein, including without limitation providing the
signatures of inventors and providing necessary data and
documentation.
5. Right of First Refusal.
5.1 If Licensor, from time to time desires to enter into a Third Party
Transaction it shall first deliver to Xxxxxx Products written notice
of such intent describing in detail the terms of the proposed Third
Party Transaction ("Licensor's Notice").
5.2 Xxxxxx Products may, within fifteen (15) calendar days after receipt
of any Licensor's Notice, elect to enter into a transaction with
Licensor for the same consideration and on the terms set forth in
the Licensor's Notice. Such election shall be evidenced by a writing
signed by Xxxxxx Products and delivered to Licensor within such
fifteen (15) calendar day period and shall be binding on Xxxxxx
Products. A closing of the transaction between Licensor and Xxxxxx
Products shall take place at a mutually agreed location as promptly
as is possible in the circumstances.
5.3 In the event that Xxxxxx Products does not elect to enter into a
transaction with Licensor on the terms of Licensor's Notice within
fifteen (15) calendar days after Xxxxxx Products' receipt of such
Licensor's Notice, Licensor may enter into the Third Party
Transaction with the applicable third party free of the rights of
first refusal set forth in this Section 5 within ninety (90)
--------- calendar days after the expiration of such 15-day period,
on terms no more favorable to the third party licensee than those
described in the Licensor's Notice. In the event that the Third
Party Transaction is not consummated within such 90-day period, any
subsequent attempt to enter into such a transaction shall be subject
to this Section 5. ---------
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6. Research and Development Assistance to Xxxxxx and Xxxxxx Products.
Licensor shall supply research and development assistance to Xxxxxx and
Xxxxxx Products pursuant to the following terms and conditions:
6.1 Licensor shall promptly provide to Xxxxxx and Xxxxxx Products all
technical assistance reasonably able to be provided by Licensor to
implement, refine and exploit the Intellectual Property in the Field
of Use.
6.2 Such assistance shall include such planning, administration, and
management of research and development activities in the Field of
Use as the Parties hereto may agree upon and all reasonably
necessary training, documentation and data that Licensor is
reasonably able to provide.
6.3 Such assistance shall also include Licensor promptly (but no later
than ten (10) business days following a request by Xxxxxx) providing
qualified personnel, including without limitation Xxxxx Xxxxxxx,
Xxxxx Xxxxxxx, and/or Xxxxx Xxxxxxxxx (to the extent they are
available) to facilities designated by Xxxxxx ("On-Site
Assistance"), provided however that Licensor shall not be obligated
to provide more than thirty (30) man-hours of On-Site Assistance by
its personnel in any calendar month pursuant to this Section 6.
6.4 Xxxxxx and Xxxxxx Products shall pay Licensor a fee ("R&D Fees") in
quarterly installments commencing at the Effective Time and
terminating upon the earlier to occur of (a) the later of the
Termination Date (as defined in Section 16 hereunder) or the date
this Agreement is no longer in force or effect pursuant to Section
16 hereunder or, (b) the termination of this Agreement pursuant to
Section 9.3 hereunder. R&D Fees will be paid by Xxxxxx and Xxxxxx
Products to Licensor in advance, prior to the calendar quarter for
which they are payable. The R&D Fees will be as follows:
-------------- ---------- ---------- ---------- ---------- ---------- -----------------
For 2005 For 2006 For 2007 For 2008 For 2009 For Calendar
Years after 2009
-------------- ---------- ---------- ---------- ---------- ---------- ----------------
First -- $ 75,000 $ 250,000 $1,000,000 $2,000,000 $2,000,000
Calendar
Quarter
-------------- ---------- ---------- ---------- ---------- ---------- ----------------
Second -- $ 75,000 $ 250,000 $1,000,000 $2,000,000 $2,000,000
Calendar
Quarter
-------------- ---------- ---------- ---------- ---------- ---------- ----------------
Third $ 25,000 $ 100,000 $ 500,000 $1,000,000 $2,000,000 $2,000,000
Calendar
Quarter
-------------- ---------- ---------- ---------- ---------- ---------- ----------------
Fourth $ 75,000 $ 100,000 $ 500,000 $1,000,000 $2,000,000 $2,000,000
Calendar
Quarter
-------------- ---------- ---------- ---------- ---------- ---------- ----------------
6.5 In addition, Xxxxxx and Xxxxxx Products shall reimburse Licensor on
a monthly basis for reasonable travel expenses and any other
out-of-pocket costs associated with providing the research and
development assistance pursuant to this Section 6, subject to
Xxxxxx'x reasonable approval of Licensor's substantiation of the
same.
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7. Infringement.
7.1 In the event that any Patent is infringed by an unauthorized party
and such infringement occurs outside the Field of Use, Licensor
shall have the right but not the obligation to enforce its rights
under that Patent, including without limitation the bringing of a
lawsuit for infringement of that Patent. In such event:
(a) Xxxxxx and Xxxxxx Products shall cooperate to the extent
reasonably necessary, including without limitation making
records and personnel pertinent to the Patent, the Product and
the Intellectual Property available to Licensor.
(b) Licensor shall bear all costs and retain all monetary recovery
resulting from any such litigation or other action to enforce
that Patent.
(c) Xxxxxx Products shall have the right to participate in
negotiating the terms of any settlement reached in the event
that the settlement would affect the rights of Xxxxxx Products
in the Field of Use.
7.2 In the event that any Patent is infringed by an unauthorized party
and such infringement occurs within the Field of Use, Xxxxxx
Products shall have the right but not the obligation to enforce the
rights of Licensor under that Patent, including without limitation
the bringing of a lawsuit for infringement of that Patent. In such
event:
(a) Licensor shall cooperate to the extent reasonably necessary,
including without limitation allowing suit to be brought in
its name, making records and personnel pertinent to the
Patent, the Product and the Intellectual Property available to
Xxxxxx Products.
(b) Licensor may elect to participate in the enforcement in which
case (i) Licensor and Xxxxxx Products shall share all costs
thereof evenly between them and (ii) Licensor and Xxxxxx
Products shall divide all monetary recovery resulting from any
such litigation or other action to enforce that Patent (A)
first so that Licensor and Xxxxxx Products are fully
reimbursed for their costs and expenses relating to such
litigation, (B) next, from any remaining amounts, until
Licensor and Xxxxxx Products recover the actual damages
incurred by Licensor and Xxxxxx Products as a result of such
infringement and (C) any remaining recovery to be split evenly
between Licensor and Xxxxxx Products. If Licensor elects not
to participate in the enforcement, then Xxxxxx Products shall
bear all costs and retain all monetary recovery resulting from
any such litigation or other action to enforce that Patent.
(c) Licensor shall have the right to participate in negotiating
the terms of any settlement reached in the event that the
settlement would affect the rights of Licensor outside the
Field of Use.
7.3 In the event that any Patent is infringed by an unauthorized party,
such infringement occurs within the Field of Use and if and only if
Xxxxxx Products elects not to take action to enjoin such
infringement, Xxxxxx Products shall so notify Licensor and Licensor
shall have the right but not the obligation to enforce that Patent,
including without limitation the bringing of a lawsuit for
infringement of that Patent. In such event:
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(a) Xxxxxx Products shall cooperate to the extent reasonably
necessary, including without limitation allowing suit to be
brought in its name, making records and personnel pertinent to
the Patent, the Product and the Intellectual Property
available to Licensor.
(b) Licensor shall bear all costs and expenses of such litigation.
(c) Licensor shall receive all monetary recovery from any such
action or litigation.
(d) Licensor shall control all aspects of any such litigation,
except that Xxxxxx Products shall have the right to
participate in negotiating the terms of any settlement reached
in the event that the settlement would affect the rights of
Xxxxxx Products in the Field of Use.
8. Royalty. The licenses exchanged between Licensor, on the one hand, and
Xxxxxx or Xxxxxx Products, on the other hand, hereunder are both royalty
free.
9. Cummins Base Patent License.
9.1 The Parties acknowledge and agree that (i) Licensor is obligated to
make certain royalty payments to Cummins pursuant to the Base
License (the "Base License Royalty Payments"), (ii) that a failure
by Licensor to make such Base License Royalty Payments can lead to a
termination of the Base License, and (iii) that a termination of the
Base License would materially adversely affect Xxxxxx Products.
9.2 Upon delivery by Cummins of any notice to Licensor pursuant to
Section 3 ("Defaults") of the Base License, Cummins shall
simultaneously deliver a copy of such notice to Xxxxxx Products.
9.3 Prior to any termination of the Base License, (i) Licensor shall
assign (and Cummins shall consent to the assignment of) that portion
of the Base License representing all of the rights sublicensed to
Xxxxxx Products hereunder (such that Xxxxxx Products receives a
direct license of all of its rights hereunder from Cummins), and
(ii) thereafter, Xxxxxx and Xxxxxx Products shall pay to Cummins the
royalties provided to be paid by Licensor to Cummins under the Base
License (calculated assuming this Agreement had remained in effect
and that Licensor had received from Xxxxxx and Xxxxxx Products all
amounts required to be paid under Sections 6 and 11 hereof). Upon
the establishment of the direct license from Cummins to Xxxxxx
Products contemplated herein, all of Xxxxxx'x and Xxxxxx Products'
obligations under this Agreement shall terminate, with the exception
of Sections 7.1 - 7.3, 9.1 - 9.3, 12.1 - 12.2, 14.1, 15.1 - 15.4,
17, and 18.1 - 18.8 hereunder.
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10. Supply Agreement.
10.1 For a period of twelve months from this date of this Agreement (the
"Manufacturing Period"), Xxxxxx will supply Licensor with up to one
hundred gallons per month of Base Concentrate and/or Derivative
Products for use outside the Field of Use at no cost to Licensor
(other than costs associated with delivery). To facilitate this,
Licensor, and to the extent necessary Xxxxxx Products, hereby grants
Xxxxxx a worldwide non-exclusive royalty free license to manufacture
Base Concentrate and Derivative Products solely for Licensor's use
outside the Field of Use.
10.2 From time to time during the Manufacturing Period , Licensor will
issue purchase orders for Base Concentrate and/or Derivative
Products setting forth specific quantities (subject to the monthly
maximum set forth above) and indicating the location of delivery
(which may be F.O.B Xxxxxx'x manufacturing plant) and desired
delivery dates. Licensor shall issue orders in advance of desired
delivery dates and Xxxxxx shall use commercially reasonable efforts
to supply and ship the Base Concentrate and/or Derivative Products
consistent with such orders. Licensor shall be responsible for all
costs associated with delivery of the Base Concentrate and/or
Derivative Products.
10.3 Nothing herein shall restrict Licensor's rights to obtain Base
Concentrate and/or Derivative Products from a supplier other than
Xxxxxx for use outside the Field of Use.
11. Xxxx Xxxxx Agreement.
11.1 Beginning within thirty days after December 31, 2005 and within
thirty days after each March 31, June 30, September 30 and December
31 thereafter: (i) Licensor agrees to pay over to Xxxxxx that amount
of any royalties which are actually received by Licensor from Xxxx
Xxxxx pursuant to Section 4(c) of the Xxxx Xxxxx Agreement ("Xxxx
Xxxxx Royalties") during the preceding calendar quarter up to and
not to exceed the amount of any R&D Fees actually paid by Xxxxxx and
Xxxxxx Products to Licensor pursuant to Section 6 hereunder during
that same preceding calendar quarter, and (ii) to the extent that
any Xxxx Xxxxx Royalties which are actually received by Licensor
during the preceding calendar quarter exceed the R&D Fees actually
paid by Xxxxxx and Xxxxxx Products to Licensor pursuant to Section 6
hereunder during that same preceding calendar quarter, Licensor
agrees to pay over to Xxxxxx one-third of the amount by which said
Xxxx Xxxxx Royalties exceeded the R&D Fees actually paid by Xxxxxx
and Xxxxxx Products to Licensor pursuant to Section 6 hereunder
during that same calendar quarter.
11.2 Notwithstanding the provisions of Section 11.1, in the event that,
Licensor ceases to receive royalty payments in respect of sales by
Xxxx Xxxxx (or any affiliate thereof or successor to any thereof) of
products used in post-harvesting processing aids for the poultry
industry based on technology licensed by Licensor to Xxxxxx
Products, Xxxxxx Products hereby agrees that it will pay, or cause
to be paid, to Licensor cash amounts equal to the royalties which
Licensor is entitled to receive under Section 4(c) of the Xxxx Xxxxx
Agreement with respect to such sales and which Licensor would not be
required to pay over to Xxxxxx pursuant to Section 11.1, and no such
amount shall be required to be paid over to Xxxxxx pursuant to
Section 11.1.
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12. Grant Back of License Under PCTI Transferred Patents.
12.1 Xxxxxx Products hereby grants back to Licensor a worldwide
exclusive, even as to Xxxxxx Products, royalty-free, right and
license to import, export, make, have made, manufacture, use, offer
for sale and sell any inventions outside the Field of Use which are
disclosed and claimed in the PCTI Transferred Patents. Xxxxxx
Products disclaims all representations and warranties, express or
implied, with respect to such PCTI Transferred Patents.
12.2 Subject to the limitations of Section 18.5 hereunder, Licensor shall
have the right, to sublicense and to assign to third parties all or
any portion of the rights and licenses granted to it by Xxxxxx
Products in Section 12.1, hereunder. Such third parties include
subsidiaries and affiliates of Licensor as well as entities having
no affiliation to Licensor. All such assignees and sub-licensees
shall have the same rights and obligations as Licensor hereunder.
13. Warranties and Representations.
13.1 Warranties and Representations of Licensor. Licensor warrants and
represents that:
(a) Licensor has the necessary limited liability company authority
and authorization to grant the licenses as set forth herein
and to enter into this Agreement.
(b) The Patents are owned by Xxxxx X. Xxxxxxx. Licensor holds an
exclusive license under the Patents from Xxxxx X. Xxxxxxx and
can grant the licenses set forth herein under the terms
thereof.
(c) Except as provided herein, there are no outstanding options,
licenses, agreements, claims, encumbrances or shared ownership
of interests of any kind relating to the Intellectual Property
in the Field of Use, with the exception of the Xxxx Xxxxx
Agreement.
(d) To the Knowledge of the Licensor, the Patents are valid and
enforceable.
(e) Licensor makes no warranty or representation that the use of
the Intellectual Property by Xxxxxx, Xxxxxx Products or any of
their affiliates as provided herein will not infringe a
patent, or similar type of intellectual property in any
country, owned by, or claimed to be owned by, any third party.
(f) Licensor makes no warranty or representation that the use of
the Intellectual Property by Xxxxxx, Xxxxxx Products or any of
their affiliates as provided herein does not infringe any
copyrights or trade secret rights of any third party.
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13.2 Warranty and Representation of Xxxxxx. Xxxxxx warrants and
represents that it has the necessary corporate authority and
authorization to enter into this Agreement.
13.3 Warranty and Representation of Xxxxxx Products. Xxxxxx Products
warrants and represents that it has the necessary corporate
authority and authorization to enter into this Agreement.
14. Indemnification.
14.1 Xxxxxx and Xxxxxx Products, jointly and severally, shall indemnify,
defend and hold Licensor, its affiliates, members, officers,
employees and agents harmless from and against any and all claims,
causes of action, proceedings and litigation, whether or not
credible or well-founded, that a Product or Service sold by Xxxxxx,
Xxxxxx Products or any of their affiliates has violated a statute,
regulation or law of any jurisdiction. In addition, Xxxxxx and
Xxxxxx Products, jointly and severally, shall indemnify, defend and
hold Licensor, its affiliates, members, officers, employees and
agents harmless from and against any and all claims, proceedings,
causes of action and litigation, whether or not credible or
well-founded, that relate to or arise out of any allegation that:
(a) The use by Xxxxxx, Xxxxxx Products or any of their affiliates
of the Intellectual Property infringes any claim of any patent
or similar intellectual property in any country allegedly
owned by a third party; or
(b) The use by Xxxxxx, Xxxxxx Products or any of their affiliates
of the Intellectual Property infringes any copyrights or trade
secret rights allegedly owned by any third party.
14.2 Licensor shall indemnify, defend and hold Xxxxxx, Xxxxxx Products,
and their respective affiliates, officers, employees and agents
harmless from and against any and all claims, causes of action,
proceedings and litigation, whether or not credible or well-founded,
that a Base Concentrate or Derivative Products made, used, offered
for sale, sold, imported, or exported by Licensor has violated a
statute, regulation or law of any jurisdiction. In addition,
Licensor shall indemnify, defend and hold Xxxxxx, Xxxxxx Products,
and their respective affiliates, officers, employees and agents
harmless from and against any and all claims, proceedings, causes of
action and litigation, whether or not credible or well-founded, that
relate to or arise out of any allegation that:
(a) The use by Licensor of the Base Concentrate or any Derivative
Products infringes any claim of any patent or similar
intellectual property in any country allegedly owned by a
third party; or
(b) The use by Licensor of the Base Concentrate or Derivative
Products infringes any copyrights or trade secret rights
allegedly owned by any third party.
15. Confidentiality. The following Confidentiality provisions shall apply
during the term of this Agreement.
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15.1 Each Party may provide the other Parties with access to Confidential
Information (as such term is defined in Section 15.2, below). Each
Party understands and agrees that the Party providing -------------
such Confidential Information (the "Providing Party") owns all such
Confidential Information and that the Providing Party desires to
protect the confidential and proprietary nature of that Confidential
Information. As a condition to receiving such information, each
Party agrees on behalf of itself and its Representatives (as such
term is defined in Section 15.3, below) to ------------- keep
confidential all Confidential Information of the other Parties.
Except as contemplated by the terms of this Agreement, no Party
receiving Confidential Information (the "Receiving Party") will
copy, distribute, furnish or otherwise disclose any Confidential
Information of the Providing Party to any persons who are not the
Receiving Party's Representatives without the specific written
permission of the Providing Party.
15.2 As used herein, "Confidential Information" means any and all trade
secrets and other private, confidential or proprietary information
that is owned or controlled by the Providing Party and/or its
customers or licensors and that has not been publicly disclosed or
has not otherwise become common or public knowledge, including such
information of third parties in the possession of the Providing
Party that the Providing Party is under an obligation to keep
confidential. Confidential Information may be in intangible form,
such as unrecorded knowledge, ideas, conceptions or information
communicated orally or by visual observation, or may be embodied in
tangible form, such as documents, notes, memoranda, reports, lists,
records, drawings, sketches, formulae, models, training materials,
specifications, photographs, graphic representations or other
information recorded or communicated by electronic, magnetic,
optical or other media.
15.3 Each Party agrees that now and at all times in the future all
Confidential Information shall be held in strict confidence and
disclosed only to those directors, officers, members, employees,
agents, affiliates, advisors, accountants and attorneys of such
Party (each of the foregoing, a "Representative") whose duties
reasonably require access to such information, and that each Party
shall use Confidential Information only in connection with its
performance under this Agreement. Each Party shall protect
Confidential Information using the same degree of care, but no less
than a reasonable degree of care, to prevent the unauthorized use,
disclosure or duplication of such Confidential Information as such
Party uses to protect its own confidential information. Confidential
Information shall be returned to the Providing Party or destroyed
upon the Providing Party's request upon termination of this
Agreement.
15.4 No Receiving Party shall be obligated hereunder to hold in
confidence any Confidential Information of the Providing Party that:
(i) is or becomes generally available to the public other than as a
result of disclosure by the Receiving Party or its Representative(s)
in breach of this Agreement; (ii) the Receiving Party can
demonstrate was obtained by it from a non-confidential source prior
to the receipt of such information from the Providing Party or the
Representative(s) thereof; (iii) is properly received by the
Receiving Party on a non-confidential basis from any third party who
is not prohibited from transmitting the information by a
contractual, legal or fiduciary obligation; (iv) the Providing Party
agrees in writing is free of restrictions on disclosure; (v) is
independently developed by the Receiving Party or its licensees
without breach of this Agreement or (vi) is required to be disclosed
by applicable law, judicial or other legally binding administrative
decree, provided that the Party so required shall (to the extent
permitted by law), provide advance notice to the Providing Party of
such mandatory disclosure and that the Providing Party is given an
opportunity to object to any such disclosure.
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16. Term. This Agreement and the licenses granted herein shall terminate
automatically on the expiration date of the last to expire of the Patents
(the "Termination Date"). However, in the event of the grant of a Patent
Term Extension of any Patents, this Agreement shall stay in force and
effect after the Termination Date only with respect to a product that was
subject to a regulatory review period upon which any such Patent Term
Extension was based, but shall otherwise have no force and effect with
respect to other products after the Termination Date.
17. Notice. All notices, requests, claims, demands and other communications
hereunder shall be in writing and shall be given (and shall be deemed to
have been duly given upon receipt) by delivery in person, by overnight
courier or by facsimile (which is confirmed) to the respective Parties at
the following address or fax number (or at such other address for a Party
as shall be specified by like notice).
If to Xxxxxx or Xxxxxx Products: Chief Financial Officer
Xxxxxx Capital Corp.
00 Xxx Xxxxxxxxx Xxxx, Xxxxx 00
Xxxxxxx, XX 00000-0000
Facsimile: 203.546.3427
If to Licensor: Pharlo IP, LLC
00 Xxxxxxx Xxxxxx
Xxxxx 000
Xxxxx, XX 00000
Facsimile: 321.639.0488
Attention: Xxxxx Xxxxxxxxx
Such notices shall be deemed to have been received five (5) business days after
mailing if forwarded by mail or on the day of receipt if delivered by hand. The
address of any Party may be changed by giving notice to the other Parties in
accordance with the foregoing.
18. Miscellaneous.
18.1 Governing Law; Dispute Resolution. This Agreement shall be governed
by and construed in accordance with the law of the state of New
York, without regard to the conflict of laws principles thereof. All
controversies arising from or relating to this Agreement or the
performance or breach thereof shall be finally resolved through
arbitration in New York City, New York, under and subject to the
commercial Arbitration Rules of the American Arbitration Association
("AAA") then in effect, and shall be conducted in the English
language. The arbitration shall be before a panel of three (3)
arbitrators, chosen according to the rules of the AAA from among its
Panel of Commercial Arbitrators within two (2) weeks of the first
filing before the AAA, each of whom shall be and remain independent
of the Parties. Licensor shall appoint one arbitrator, Xxxxxx and
Xxxxxx Products shall appoint one arbitrator, and the two appointed
arbitrators shall choose the third arbitrator who will act as the
chairperson of the arbitration. If the two arbitrators appointed by
the Parties are not able to agree on the third arbitrator within
thirty (30) calendar days from the date that the last such
arbitrator was appointed, the third arbitrator shall be appointed by
the AAA.
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18.2 Independent Contractor. The relationship between the Parties shall
be that of independent contractors. Nothing in this Agreement shall
create, or be deemed to imply the creation of, any partnership,
joint venture or other relationship. No Party shall have the
authority to incur any obligation, contractual or otherwise, in the
name or on behalf of another Party except as contemplated herein.
18.3 Counterparts. This Agreement may be executed by the Parties in
separate counterparts, each of which when so executed and delivered
shall be deemed to be an original, but all such counterparts shall
together constitute one and the same instrument.
18.4 Entire Agreement; Binding Effect. This Agreement, the Asset Purchase
Agreement and the documents executed in connection therewith,
constitute the entire agreement between the Parties as to the
subject matter contained herein and supersedes all other agreements
between the Parties concerning such subject matter.
18.5 Assignment; No Third-Party Beneficiaries. This Agreement shall be
binding on any successors of the Parties. Licensor shall have the
right to assign its interests in this Agreement (including the grant
of sub-licenses by Licensor hereunder) to any other party who is not
a competitor of Xxxxxx within the Field of Use. Licensor shall not
have the right to assign its interests in this Agreement (including
the grant of sub-licenses by Licensor hereunder) to any other party
who is a competitor of Xxxxxx within the Field of Use, unless the
prior written consent of Xxxxxx is obtained, which consent will not
be unreasonably withheld. Xxxxxx and Xxxxxx Products shall have the
right to assign their respective interests in this Agreement
(including the grant of sub-licenses by Xxxxxx Products hereunder)
to any other party who is not a competitor of Licensor outside the
Field of Use. None of Xxxxxx or Xxxxxx Products shall have the right
to assign its interests in this Agreement (including the grant of
sub-licenses by Xxxxxx Products hereunder) to any other party who is
a competitor of Licensor outside the Field of Use, unless the prior
written consent of Licensor is obtained, which consent will not be
unreasonably withheld. This Agreement is not intended to, and shall
not, confer upon anyone other than the Parties and their lawful
successors, assigns, and sub-licensees any legal or equitable
rights, benefits, claims or remedies of any nature.
18.6 Amendment and Waiver. This Agreement shall not be modified except by
a written agreement dated subsequent to the Effective Time and
signed on behalf of the Parties. No waiver of any breach of any
provisions of this Agreement shall constitute a waiver of any prior,
concurrent or subsequent breach of the same or any other provisions
hereof, and no waiver shall be effective unless made in writing and
signed by the Party to be charged.
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18.7 Severability. If any term or other provision of this Agreement is
held by a court of competent jurisdiction or other authority to be
invalid, illegal or incapable of being enforced by any rule of law
or public policy, all other conditions and provisions of this
Agreement shall nevertheless remain in full force and effect. Upon
such determination by a court of competent jurisdiction or other
authority that any term or other provision is invalid, illegal or
incapable of being enforced, the Parties shall negotiate in good
faith to modify this Agreement so as to effect the original intent
of the Parties as closely as possible in an acceptable manner to the
end that the transactions contemplated hereby are fulfilled to the
fullest extent possible.
18.8 Termination of Agreement. Without limiting Section 18.4, upon the
Effective Time, all of Xxxxxx'x obligations under any and all
license agreements with Licensor or PCTI (other than the Xxxx Xxxxx
Agreement, but including the Exclusive Field of Use License
Agreement dated as of September 16, 2004, as amended, by and among
PCTI, Licensor and Xxxxxx (the "September 16, 2004 License
Agreement") and the Exclusive Field of Use License Agreement dated
as of September 20, 2004, as amended, by and among PCTI, Licensor,
and Xxxxxx (the "September 20, 2004 License Agreement")) and all
agreements between Licensor and any of its affiliates with respect
to the subject matter hereof shall terminate and be of no further
force or effect, except that (i) the sections of the September 16,
2004 License Agreement and Xxxxxx'x obligations under the September
16, 2004 License Agreement contemplated to survive termination
thereof in Section 8.04 thereof, will remain in full force and
effect, and (ii) the sections of the September 20, 2004 License
Agreement and Xxxxxx'x obligations under the September 20, 2004
License Agreement contemplated to survive termination thereof in
Section 8.04 thereof, will remain in full force and effect.
[Signature page to follow]
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IN WITNESS WHEREOF, the Parties have executed this Agreement as of
the date set forth above to be effective as of the Effective Time.
XXXXXX CAPITAL CORP. PHARLO IP, LLC
By ________________ By ___________________
Its ________________ Its ___________________
XXXXXX PRODUCTS IP HOLDING CORP.
By ________________
Its ________________
Acknowledged and agreed with respect to Sections 9.2 and 9.3 only:
-------------------------
Xxxxx Xxxxxxx
Acknowledged and agreed with respect to Section 18.8 only:
Pharlo Citrus Technologies, Inc.
By:_______________________
Name:_____________________
Title:______________________
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SCHEDULE A
1. U.S. No. 5,989,595
2. U.S. No. 6,242,011
3. Reissue application of 6,242,011
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SCHEDULE B
Field of Use
1. Pre-harvest food processing and safety applications, including
treatment for plants and animals
2. Post-harvest food processing and safety applications, including
treatment for plants and animals, including the following:
a. antimicrobial processing aide and food additive including specific
seafood applications, and
b. antimicrobial for airborne contaminants on cooked food
3. Breath and mouthwash applications
4. Hangover and alcohol abatement applications
5. Topical palliative for dermatological disorders, including skin
moisturizing applications, anti-wrinkle applications and burn
treatment applications
6. Pet product applications
7. Antimicrobial water treatment applications
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