LICENSE AGREEMENT
This Agreement is made effective the 17th day of September, 1996, by
and between ImmuCell Corporation (hereinafter called "ImmuCell"), a corporation
organized and existing under the laws of Delaware, and Clearwater Diagnostic
Company LLC (hereinafter called "CDC"), a limited liability company organized
under the laws of Delaware, together hereinafter called the Parties.
WHEREAS, ImmuCell has developed certain technology as described in the
"LICENSED TECHNOLOGY" section herein, and ImmuCell is willing to grant a
license on the LICENSED TECHNOLOGY to CDC;
NOW, THEREFORE, in consideration of the mutual covenants and agreements
set forth below, the parties covenant and agree as follows:
Section 1: Definitions
1.1 "LICENSED TECHNOLOGY" shall refer to and mean (i) any patent
rights that may issue from U.S. Patent Application No. 08/502,328, filed July
13, 1995, entitled METHODS AND ARTICLES OF MANUFACTURE FOR THE DETECTION OF
CRYPTOSPORIDIUM OOCYSTS, (ii) any patent rights that may issue from foreign
equivalents thereto, and (iii) any other technology and know-how developed
previously by ImmuCell for application in the Field of Use.
1.2. "Field of Use" shall mean only the detection of infectious
disease agents such as Cryptosporidium parvum in water sources including ground
water, surface water, drinking water, sanitary waste water, cooling towers and
water and waste water in all industrial manufacturing and processing segments.
1.3"Products" as used herein shall refer to and mean reagents used in
the immunomagnetic separation and detection steps of the diagnostic
test.
1.4 "Direct Cost" shall mean direct manufacturing costs including
materials, labor,
QA and QC costs, and manufacturing overheads.
1.5 "LLC Agreements" shall mean that certain Limited Liability
Company
Agreement Between Membrex and ImmuCell dated September 17, 1996.
Section 2: Grant
2.1 License: ImmuCell hereby grants to CDC an exclusive worldwide
royalty free license to make, use, distribute, lease and sell kits, reagents,
services and products within the scope of LICENSED TECHNOLOGY in the Field of
Use.
2.2 Sub-licenses. CDC may grant sub-licenses of the LICENSED
TECHNOLOGY in the Field of Use to third parties. Any agreement granting a sub-
license
shall require that the sub-license be subject to the terms and termination of
this License Agreement and the LLC Agreement. CDC's sub-licenses to third
parties do not carry any rights to further sub-license the LICENSED TECHNOLOGY.
CDC shall have the same responsibility for the activities of any sub-licensee
as if the activities were directly those of CDC.
2.3 License Fee. CDC agrees to pay a license fee of $100 within
seven days after the date this Agreement is fully executed by both parties.
2.4 Neither CDC nor any Sub-licensee shall obtain rights of any
kind in the LICENSED TECHNOLOGY other than the rights specifically set forth
herein.
Section 3: Supply Of Product And Disposables
3.1 ImmuCell shall sell to CDC and CDC shall buy from ImmuCell all
of CDC's order requirements for Product for incorporation into its kits,
devices, reagents, parts and services at ImmuCell's Direct Cost. All sales to
CDC by ImmuCell are FOB ImmuCell plant and any shipping cost, insurance, taxes
and other fees are the responsibility of CDC. In the event ImmuCell is
unable or unwilling to sell CDC's requirements for Product, CDC shall have the
right to make or have third parties manufacture such Product.
3.2 CDC shall sell to sub-licensee such Products as may be required
by the sub-licensee for use in the Field of Use and buy such Products from
ImmuCell in accordance with the terms and conditions contained herein.
Section 4: Direct Cost Auditing
ImmuCell shall keep written records of Direct Costs for reasonable
periods of time but in no case for a period longer than two (2) fiscal years.
A maximum of two (2) audits per year can be scheduled by CDC's duly authorized
independent auditor acceptable to ImmuCell. Such records shall be available
for inspection during all reasonable business hours and are subject to the
Confidentiality Agreements signed by ImmuCell and CDC.
Section 5: Certain Warranties of ImmuCell
5.1 ImmuCell warrants that it has no knowledge that would prevent it
from granting the License contemplated by this Agreement. However, nothing in
this Agreement shall be construed as: (i) a warranty or representation by
ImmuCell as to the validity, enforceability or scope of any LICENSED TECHNOLOGY
or as to its effectiveness or as to any results or advantage to be achieved by
its use, (ii) a warranty or representation that anything made, used, sold or
otherwise disposed of or otherwise commercialized under this Agreement or the
License granted in this Agreement will or will not infringe patents or
other rights of any kind of third parties, (iii) an obligation to bring or
prosecute actions or suits against third parties for infringement of LICENSED
TECHNOLOGY, and (iv) an obligation to obtain, maintain, assert, or defend any
intellectual property rights. Notwithstanding the foregoing, CDC agrees to
assist ImmuCell, at no cost to itself, including agreeing to be named as a
party plaintiff in any legal action, in the event that ImmuCell decides to
pursue third party infringers of the LICENSED TECHNOLOGY.
5.2 IMMUCELL MAKES NO REPRESENTATIONS, EXTENDS NO WARRANTIES OF ANY
KIND, EITHER EXPRESS OR IMPLIED, AND ASSUMES NO RESPONSIBILITIES WHATSOEVER
WITH RESPECT TO USE, SALE, OR OTHER DISPOSITION BY CDC, ITS SUBLICENSEES OR ITS
VENDEES OR OTHER TRANSFEREES OF PRODUCTS INCORPORATING OR MADE BY USE OF
LICENSED TECHNOLOGY UNDER THIS AGREEMENT.
5.3 Nothing contained in this Agreement shall be construed to convey
to CDC any ownership rights, proprietary interest or other rights or interest
of any kind, except for the non-transferable License and right to use the
LICENSED TECHNOLOGY in the distribution and sale of Products which is expressly
granted by this Agreement. CDC covenants and agrees that it shall not at any
time during the term of this Agreement challenge or contest the ownership of
the LICENSED TECHNOLOGY, or any trademark or tradename used by ImmuCell
('TRADEMARKS'), including the trademark and tradename "ImmuCell." CDC shall
not challenge the validity or enforceability of any of the Patents and/or
TRADEMARKS associated with this License, nor do anything that in any
way tarnishes them or otherwise impairs their value.
Section 6: Term And Termination
6.1 The term of this License shall begin on the effective date of
this Agreement and continue until the earlier of (i) twenty five (25) years
from the effective date of this Agreement or (ii) the date on which CDC is
dissolved, (iii) the inability to obtain sufficient financing within one (1)
year from the effective date of this Agreement to operate CDC's business for at
least eighteen (18) months, or iv) a petition for bankruptcy is filed by or
against CDC, (v) liquidation or other State proceedings are instituted by or
against CDC.
6.2 CDC may terminate this Agreement at any time by giving at least
thirty (30) days' written notice of such termination to ImmuCell. ImmuCell
may terminate this Agreement by giving at least thirty (30) days' written
notice if Membrex or any of Membrex's affiliates or licensees manufacture or
sell a flat membrane plate Vortex Flow Filtration System for use in the Field
of Use.
6.3 If CDC at any time defaults in the timely payment of any monies
due to
ImmuCell or commits any breach of any other covenant herein contained, and
fails to
remedy such breach within ninety (90) days after written notice thereof by
ImmuCell,
ImmuCell may, at its option, terminate this Agreement by giving written notice
of termination to CDC.
6.4 Upon the termination of this Agreement, CDC shall remain
obligated to pay any outstanding monies owed for Product and Disposables sold
by ImmuCell to CDC and the following sections shall survive termination or
expiration of this Agreement: Sections 5, 8, 9, 10, 12, 15, and 16.
6.5 Upon the termination of this Agreement, all rights to LICENSED
TECHNOLOGY will revert to ImmuCell, the license to CDC and any sub-licensees
shall immediately cease, and ImmuCell shall have no further obligations to sell
Product to CDC or any sub-licensee nor shall CDC have any further rights to
grant sub-licenses. , manufacture or have manufactured the LICENSED TECHNOLOGY.
Upon the occurrence of any of the events in this Section 6, ImmuCell shall
have the right to withdraw from CDC and have returned its Capital Account and
Capital Contribution as defined in the LLC Agreement.
Section 7: Assignability
This Agreement may not be transferred or assigned by CDC except with
the prior written consent of ImmuCell.
Section 8: Patents
8.1 The PATENT and all new patent applications to be submitted, new
patents to be granted and technology relating to the Product shall be owned
exclusively by ImmuCell except as provided herein. Improvements, if
patentable, will be owned as provided herein. The Parties will share the use
of any such Improvements to the Product. During the term of this Agreement,
the Parties hereby grant to each other a royalty-free cross license with
respect to the Improvements. With respect to Improvements that are the result
of joint efforts of CDC and ImmuCell, both parties shall have the right to use
such jointly developed Improvements in perpetuity, subject to the provisions
herein.
Notwithstanding the foregoing provision, the parties hereby acknowledge
and agree that any and all Improvements to the Product made during the term of
this Agreement and for three (3) years thereafter, that can only reasonably be
used with the Product shall be the sole and exclusive property of ImmuCell, and
all Improvements that can also be used in connection with products in addition
to the Product shall be the sole and exclusive property of the respective
inventing party or parties.
8.2. New Technology: ImmuCell and CDC may cooperate in the
development of new technology (i.e., not an Improvement to the Product). The
parties shall negotiate in good faith with respect to the funding of the
development of any such new technology. New
patentable technology which arises from such a cooperation will be owned
jointly by the Parties and for their exclusive use, subject to any mutual
written consent to the contrary.
Section 9: Confidentiality
CDC and ImmuCell acknowledge that during the course of this Agreement,
it may be necessary for either party to disclose its confidential, proprietary
information to the other party. ImmuCell and Membrex have previously entered
into Secrecy Agreements dated October 18th, 1994 and October 24, 1994
(hereinafter the "Secrecy Agreement). The terms of the Secrecy Agreement are
hereby incorporated herein and made binding to CDC as if CDC were a party to
such Secrecy Agreement. CDC and Membrex agree to extend that Secrecy Agreement
effective through December 31, 2001. Notwithstanding the provisions
of that Secrecy Agreement, each party shall have the obligation to identify all
Proprietary Information (defined as "Information" in the Secrecy Agreement)
that it has disclosed to the other party to date. For Proprietary Information
disclosed after the date of execution of this Agreement, the parties shall have
the obligation to designate that information that is Proprietary Information
under the Secrecy Agreement. If Proprietary Information is disclosed orally,
the disclosing party shall have the obligation to identify the information as
Proprietary Information at the time of disclosure and confirm that such
information is Proprietary Information within thirty (30) days after such oral
disclosure.
Section 10: Severability
In the event that any one or more provisions of this Agreement shall be
declared to be illegal or unenforceable under the law, rule or regulation of
any government having jurisdiction over the parties hereto, such illegality or
unenforceability shall not affect the validity or enforceability of the other
provisions hereof, and the parties hereto shall agree upon the modification of
this Agreement with respect to such illegal or unenforceable provisions to
eliminate such illegality or unenforceability.
Section 11: Counterparts
This Agreement may be executed in any number of counterparts, each of which
shall be deemed to be an original, and all of which together shall be deemed to
be one and the same instrument.
Section 12: Product Liability; Conduct of Business
12.1 CDC shall, at all times during the term of this Agreement and
thereafter, indemnify, defend and hold ImmuCell harmless against all claims and
expenses, including legal expenses, and reasonable attorneys fees, arising out
of the death of or injury to any person or persons or out of any damage to
property and against any other claim, proceeding, demand, expense and liability
of any kind whatsoever (other than patent infringement claims) resulting from
the production, manufacture, sale, use, lease, distribution, consumption or
advertisement of products that incorporate Products, arising from any right or
obligation of CDC or any sub-licensee hereunder.
12.2 CDC warrants that it now maintains and will continue to maintain
liability insurance coverage appropriate to the risk involved in engaging in
the activities contemplated by this Agreement, including marketing the products
subject to this Agreement, and that such insurance coverage lists and will
continue to list ImmuCell as additional insured. Upon request, CDC will
present evidence to ImmuCell that the coverage is being maintained. In
addition, CDC shall provide ImmuCell with at least 30 days prior written notice
of any change in or cancellation of the insurance coverage.
Section 13: Use of Names
13.1 CDC and its sub-licensee(s) shall not use ImmuCell's name in
sales promotion, advertising, or any other form of publicity or in any other
way without the prior written approval of ImmuCell except in CDC and sub-
licensee internal corporate documents or to indicate that CDC is a licensee of
ImmuCell. In no event shall CDC's or any sub-licensee's use of ImmuCell's name
suggest any sponsorship by, approval of, or association with ImmuCell other
than as a licensee. ImmuCell agrees that CDC can sell the Product under
its own trade xxxx and/or trade name. CDC also agrees that labels for its
Product will also display the appropriate ImmuCell patent numbers and the
ImmuCell trademark as mutually agreed between the parties.
Section 14: Force Majeure
Neither party shall be liable for damages due to delay or failure to
perform any obligation under this Agreement (other than payment of money) if
such delay or failure results directly or indirectly from circumstances beyond
the reasonable control of such party. Such circumstances shall include but
shall not be limited to acts of God, acts of war, civil commotions, riots,
strikes, lockouts or other labor disturbances, accident, fire, water damage,
flood or other natural catastrophe. Any party affected by a condition of Force
Majeure shall use reasonable efforts to remedy such conditions to enable itself
to resume performance,
except that no party shall be obligated to settle a strike, lockout or other
labor disturbance on terms other than at its complete discretion.
Notwithstanding the foregoing, in the event that ImmuCell fails to
perform any of its obligations under this Agreement for any of the reasons set
forth in this Section, ImmuCell shall immediately notify CDC in writing of
ImmuCell's failure to perform. After such immediate written notification or
after notification by CDC to ImmuCell, whichever is sooner, ImmuCell shall be
entitled to one hundred and eighty (180) days to cure its failure to perform.
In the event that ImmuCell has not cured its failure to perform in this
one hundred and eighty (180) day period, CDC shall then be entitled to exercise
its rights pursuant to Section 3. CDC may begin to manufacture Products if
ImmuCell fails to cure any non-performance by ImmuCell to supply Products
within 180 days when such non-performance begins.
Section 15: Miscellaneous
This Agreement shall be construed in accordance with the laws of the
State of Delaware without reference to its conflicts of laws provisions. If
any provisions of this Agreement are or shall come into conflict with the laws
or regulations of any jurisdiction or any governmental entity having
jurisdiction over the parties or this Agreement, those provisions shall be
deemed automatically deleted, if such deletion is allowed by relevant law,
and the remaining terms and conditions of this Agreement shall remain in full
force and effect. If such a deletion is not so allowed or if such a deletion
leaves terms clearly illogical or inappropriate in effect, the parties agree to
substitute new terms similar in effect to the present terms of this Agreement
as may be allowed under the applicable laws and regulations.
Section 16: Notices
Any notices required to be given pursuant to the provisions of this
Agreement shall be in writing and shall be deemed to have been given at the
earlier of the time when actually received as a consequence of any effective
method of delivery, including but not limited to hand delivery, transmission by
telefax, or delivery by a professional courier service or the time when sent by
certified or registered mail addressed to the party for whom intended at the
address below or at such changed address as the party shall have specified
by written notice, provided that any notice of change of address shall be
effective only upon actual receipt.
(a) Clearwater Diagnostics Company, LLC
Attention: Manager Attention: President
00 Xxxxxxxxx Xxxxx and 000 Xxxxx 00 Xxxx
Xxxxxxxx, Xxxxx 00000 Xxxxxxxxx, XX 00000
(b) ImmuCell Corporation
00 Xxxxxxxxx Xxxxx
Xxxxxxxx, Xxxxx 00000
Section 17: Arbitration
In the event a dispute, claim or controversy shall arise between the
Parties with respect to any provision of this Agreement, or the interpretation
of performance hereof or thereof, and such is declared by written notice from
one party to the other, the Parties agree to negotiate in good faith toward
resolution of the dispute. If such dispute cannot be resolved within a period
of thirty (30) days after such notice is given, either party may submit the
dispute to arbitration. Such dispute shall be settled by arbitration under the
laws of the State of Delaware, in accordance with the Commercial Arbitration
Rules of the American Arbitration Association (the "AAA"). In rendering its
decision, the arbitration tribunal shall apply the substantive laws of the
State of Delaware and interpret this Agreement in accordance with its terms.
The determination of the arbitration tribunal shall be conclusive and binding
upon the Parties hereto. The dispute will be decided by a panel of three
arbitrators to be appointed as provided in Section 13 of the AAA Commercial
Arbitration Rules.
The award of the arbitration tribunal may be, alternatively or cumulatively,
for monetary damages, an order requiring the performance of non-monetary
obligations (including specific performance) or any other appropriate order or
remedy. The arbitrators may issue interim awards and order any provisions or
measures which should be taken to preserve the respective right of either
party. The decision of the arbitrators may be enforced in any tribunal of
competent jurisdiction.
Each party shall bear its own costs and expenses of the arbitration, and the
Parties shall share equally the cost of the arbitrators; provided that any
party instituting a claim or providing a defense under this Section which the
tribunal shall declare to be frivolous shall pay all costs and expenses,
including attorney's fees and costs, incurred in connection with such
arbitration.
The arbitration procedure herein shall be the exclusive remedy available to the
Parties hereunder to resolve any dispute, claim or controversy arising
hereunder.
Section 18: Integration.
This Agreement constitutes the full understanding between the parties
with reference to the subject matter hereof, and no statements or agreements by
or between the parties, whether orally or in writing, except as provided for
elsewhere herein, made prior to or at the signing hereof, shall vary or modify
the written terms of this Agreement. Neither party shall claim any amendment,
modification, or release from any provisions of the Agreement by mutual
agreement, acknowledgment, or otherwise, unless such mutual agreement is in
writing, signed by the other party and specifically states that it is an
amendment to this Agreement.
IN WITNESS THEREOF, the parties hereto have duly executed this Agreement on the
dates indicated below.
Clearwater Diagnostics Company LLC
By: /s/: Xxxxxx X. Xxxxx, /s/: Xxxxxxx X. Xxxx, its Managers.
Date: 9/17/96
ImmuCell Corporation
By: /s/: Xxxxxx X. Xxxxx, its President
Date: 9/17/96
