* PORTIONS OF THIS DOCUMENT HAVE BEEN OMITTED PURSUANT TO A REQUEST FOR
CONFIDENTIAL TREATMENT
LICENSE AGREEMENT
This License Agreement (the "License Agreement") is entered into effective
as of February 15, 1995 (the "Effective Date"), by and between Metra Biosystems,
Inc., a California corporation at 000 Xxxxx Xxxxxxx Xxxx, Xxxxxxxx Xxxx,
Xxxxxxxxxx 00000 ("Metra") and BioQuant, Inc., a Michigan corporation at 0000
Xxxxx Xxxx, Xxx Xxxxx, Xxxxxxxx 00000 ("BioQuant").
1. Background.
1.1 Metra has developed or has licensed proprietary antibody technology useful
in the quantitative measurement of pyridinium crosslinks in all body fluids.
1.2 BioQuant has developed or has licensed proprietary sweat patch technology
which is useful for the collection of perspiration samples. BioQuant has also
developed or has licensed a proprietary immunoassay technology that is useful
for the measurement of pyridinium crosslinks in perspiration samples.
1.3 BioQuant desires to acquire and Metra agrees to grant BioQuant a worldwide
license, expressly excluding Japan, its territories and holdings, under which
BioQuant will have the exclusive right to use Metra's antipyridinium antibody
technology to research and develop a sweat patch assay for the quantitative
determination of pyridinium crosslinks in perspiration samples which
incorporates such antipyridinium antibody technology, and to make, have made and
sell or otherwise distribute a sweat patch assay for the quantitative
determination of pyridinium crosslinks in perspiration samples which
incorporates such antipyridinium antibody technology.
1.4 Metra agrees to use its reasonable commercial effort to introduce BioQuant
to Metra's Japanese licensee, and to recommend that such licensee grant a
sublicense under Metra Technology within Japan.
2. Definitions.
2.1 "Improvement" shall mean (i) any unpatentable improvement or modification to
Know-How made by or on behalf of BioQuant during the term of this Agreement, and
(ii) any novel antibody first identified by BioQuant during the term of this
Agreement, which antibody is covered by a claim in one or more of the Patent
Rights as of the date of such identification. "Improvement" shall not, however,
include any assay system developed by or on behalf of BioQuant.
2.2 "Know-How" shall mean at any time during the term of this License Agreement
Metra trade secrets and other confidential information relating to
antipyridinium crosslinks antibody technology useful for the quantitative
determination of pyridinium crosslinks in perspiration samples, including,
without limitation, design data and information, formulations, specifications,
developments, techniques, methods, processes,, apparatus, products and other
information and data, whether or not patentable, and shall expressly exclude any
subject matter which Metra is precluded from revealing to BioQuant by reason of
a contractual obligation to a third party to hold such subject matter
confidential. "Know-How" shall include regulatory filings made by Metra to the
United States Food and Drug Administration and its foreign equivalents deemed by
Metra to be relevant to the subject matter of this License Agreement.
2.3 "Manufacturing Costs" shall mean Metra's fully-absorbed costs of
manufacturing a Product, including the direct cost of labor, materials,
manufacturing overheads allocated to production on the basis of the direct labor
method, all calculated in accordance with generally accepted accounting
procedures.
2.4 "Metra Technology" shall mean the total of Patent Rights and Know-How.
2.5 "Patent Rights" shall mean all patents owned by Metra, and all applications
owned by Metra and all United States and foreign patents issuing from such
applications, including any additions, continuations or continuations-in-part,
divisions, reissues or extensions which relate to antipyridinium crosslinks
antibody technology useful for the quantitative determination of pyridinium
crosslinks in perspiration samples.
2.6 "Patient Report" shall mean assay results obtained for an individual patient
using the Product. The number of assays performed (single, duplicate, repeat,
etc.) in order to obtain such assay results for an individual patient at one
point in time may vary but shall be determined solely by BioQuant and shall
constitute one Patient Report.
2.7 "Product" shall mean BioQuant's immunoassay technology for the quantitative
determination of pyridinium crosslinks from perspiration samples which
incorporates Metra Technology.
2.8 "Research and Development-Related Costs" shall mean direct labor and
materials costs as well as fully-burdened overhead associated with (i) persons
working essentially exclusively on research, product development and regulatory
compliance activities, (ii) necessary research and development third parties
contracts, and (iii) consulting contracts related to the conduct of this License
Agreement.
2
* Omitted pursuant to a request for confidential treatment.
2.9 "Territory" shall mean the entire world, expressly excluding Japan, its
territories and holdings.
3. License.
3.1 Grant to BioQuant by Metra of Metra Technology. Metra hereby grants to
BioQuant an exclusive license throughout Territory under Metra Technology, to
use Metra Technology to research and develop Products and to use, make, have
made and sell or otherwise distribute Products which incorporate, in whole or in
part, Metra Technology (the "BioQuant License").
3.2 Grant to Metra by BioQuant of Improvements to Metra Technology.
(a) BioQuant hereby grants to Metra an irrevocable, nonexclusive,
fully-paid up, worldwide, royalty-free license, with right to sublicense, under
any Improvements within Section 2.1(i) to use such portion of Improvements to
research and develop products or services other than Products, and to make, have
made and sell or otherwise distribute such products or services.
(b) BioQuant hereby grants to Metra an irrevocable, nonexclusive,
fully-paid up, worldwide license, with right to sublicense, under any
Improvements within Section 2.1(ii) to use such portion of Improvements to
research and develop products or services other than Products, and to make, have
made, use and sell or otherwise distribute such products or services; provided,
however, that Metra shall pay to BioQuant a mutually-agreeable and
commercially-reasonable royalty on commercial sales of such products or services
which incorporate, in whole or in part, Improvements to Metra Technology
described in Section 2.1(ii).
3.3 Documentation. BioQuant shall inform Metra of and document (and shall make
such documentation available to Metra from time to time during regular business
hours and with reasonable notice) all inventions included within the Improvement
license granted under Section 3.2 BioQuant makes at the time of invention and
shall retain such documentation throughout the term of this License Agreement
and for three (3) years after the termination of this Agreement in order to
facilitate the administration of Section 3.2.
4. License Fee.
4.1 BioQuant shall pay to Metra [ * ] as a fee to license Metra Technology under
this Agreement. Such amount shall be paid to Metra as follows:
3
* Omitted pursuant to a request for confidential treatment.
(i) [ * ] within three (3) days following, the execution of this Agreement;
(ii) [ * ] upon the earlier of (i) the initiation of any clinical trial of
Product designed and conducted in compliance with the United States Food and
Drug Administration's or any equivalent international regulatory agency's
regulatory approval process, or (ii) the date seven months from the Effective
Date; and
(iii) [ * ] upon the earlier of (i) BioQuant's consummation after October
1, 1994 of capital financing(s) in the aggregate of not less than [ * ], or (ii)
the date sixteen months from the Effective Date.
5. Royalty.
5.1 Subject to Section 5.2 and Section 5.3, BioQuant shall pay to Metra a
royalty calculated at a rate of [ * ] (the "Royalty Rate") per Patient Report,
but expressly excluding any Patient Report made in conjunction with (i) a
clinical trial being conducted in any country within Territory prior to BioQuant
having received regulatory approval from the United States Food and Drug
Administration, or from an equivalent regulatory agency within such country, to
market Product within such country, (ii) a commercially-reasonable number of
free promotional Product not to exceed [ * ] of total Product sold in each of
the first two years only after the first commercial sale, and (iii) commencing
in the third (3rd) year after the first commercial sale of Product and for each
of the remaining years of the term of this License Agreement, a commercially
reasonable number of free Product intended for use by indigent patients not to
exceed [ * ] of total Product sold in any such year ("the Royalty Base").
5.2 In the event that during the period of time in which Section 5.4 is
effective Metra sells Metra's proprietary urine pyridinium crosslinks test kit
(40 per kit using 96 well microliter plate) to any third party reference
laboratory at a wholesale price less than [ * ] per test kit, in essentially the
same or lesser quantity as the Royalty Base reported during that same quarter
pursuant to Section 5.4 herein, Metra shall reduce the Royalty Rate during such
quarter by a percentage calculated as [the difference between [ * ] and the
actual wholesale price paid by such third party reference laboratory.] For
example, in the event that Metra sells Metra's test kit for [sixty dollars
($60.00)] Royalty Base shall be reduced during the relevant quarter by [ * ].
4
5.3 In the event that the BioQuant License converts to a nonexclusive license
pursuant to Section 15.2 herein and Metra thereafter enters into a licensing
arrangement with one or more third parties which conveys rights to all or a
substantial part of the subject matter of the BioQuant License and such third
party licensing arrangement includes a royalty rate more favorable than Royalty
Rate, Metra shall notify BioQuant of such event and the Royalty Rate shall be
adjusted commensurate with such royalty rate.
5.4 Royalty Reports. Within 45 days after the end of each of BioQuant's fiscal
quarters in which BioQuant, its representatives and distributors sell Products,
BioQuant shall deliver to Metra a report, signed by the President of BioQuant,
setting forth the Royalty Base and calculating the royalty payable to Metra with
respect to such quarter.
5.5 Payment. Concurrently with the making of each report required by Section
5.4, BioQuant shall pay to Metra the royalty payable for the quarter covered by
such report. All payments by BioQuant to Metra hereunder shall be in United
States dollars. A late fee of the lesser of (i) one and one-half percent (1.5%),
or (ii) the highest legal rate of interest of the amount due shall be assessed
per month on any amount not paid within 15 days of being due.
5.6 Records. BioQuant shall keep, and shall require its representatives and its
distributors to keep, complete, true and accurate books of account and records
in sufficient detail to properly determine the amounts payable to Metra under
this Agreement for at least three years following the end of the calendar
quarter to which they pertain. BioQuant shall make available, and shall require
its representatives and its distributors to make available, such books and
records for inspection, during business hours and upon reasonable notice, during
such three-year period by an independent accounting firm in accordance with the
provisions of Section 5.7.
5.7 Audit Rights. Metra shall have the right, upon reasonable notice and not
more frequently than annually, to have an independent accounting firm of its
choice, subject to BioQuant's approval and such approval shall not be
unreasonably withheld, and after such accounting firm and the employees of such
accounting firm intending to conduct such audit have signed BioQuant's standard
confidentiality agreement, audit the books and records of BioQuant relating to
Royalty Base and the calculation of royalties payable. The report to Metra of
such audit shall include only the determination that BioQuant's books and
records are accurate, or a report of the dollar amount of a detected inaccuracy.
In no event shall information proprietary to BioQuant be disclosed by the
auditors to Metra. In the event that, as a result of the audit, there is any
adjustments to royalties payable during the period covered by the audit, an
5
amount equal to the difference between the royalties previously paid by BioQuant
to Metra with respect to royalties payable during the period covered by the
audit for such period shall (i) be credited against future royalties if the
adjustment results in a decrease in royalties payable during the period or (ii)
be paid by BioQuant to Metra if the adjustment results in an increase in
royalties payable during the period. The expenses of such audit shall be borne
by Metra; provided, however, that if the audit results in an adjustment to
actual royalties payable during the period of 10% or more, then the expenses of
such audit shall be borne by BioQuant.
6. Ownership of Inventions.
6.1 Inventions by BioQuant. Any invention and all intellectual property rights
therein, made by or for BioQuant, whether by BioQuant employees or third parties
on BioQuant's behalf, during the term of this Agreement, shall be owned by
BioQuant.
7. Proprietary Rights.
7.1 Except as expressly set forth in this License Agreement, (i) BioQuant shall
have no right, title and interest in and to the Metra Technology and (ii) Metra
shall have no right, title and interest in and to the Improvements to Metra
Technology.
8. Patent Issues.
8.1 Notice of Intent to File Patent Applications. During the term of this
Agreement and for a period of one (1) year thereafter, BioQuant shall notify
Metra in writing thirty (30) days prior to the filing of any patent application
which claims subject matter relating to antipyridinium antibody technology.
Metra shall provide, upon BioQuant's request and no more frequently than once
per quarter, a general good faith overview and update regarding the status of
any patent applications owned by Metra which relate to the subject matter of the
BioQuant License.
8.2 Metra Technology. Metra shall prosecute, in its sole discretion and at its
sole expense, patent applications within Metra Technology and BioQuant agrees to
cooperate fully, and at Metra's expense, in such prosecution. Metra shall
implement such procedures and undertake such actions as it deems necessary to
protect the Metra Technology against infringers and BioQuant agrees to cooperate
to the extent reasonable, and at Metra's expense, in such actions.
8.3 Right of BioQuant to Pursue Prosecution of Third Party Infringers.
Notwithstanding Section 8.2 herein, BioQuant may prosecute a claim alleging
infringement by a third party of Metra Technology in the event Metra fails to
commence the prosecution of such claim within thirty (30) days of receipt of
written
6
notice by BioQuant requesting such prosecution. Any final judgment or any
settlement of a suit claiming third party infringement of Metra Technology
brought by BioQuant shall be the property of BioQuant. Any settlement of any
suit claiming third party infringement of Metra Technology shall require Metra's
consent, such consent not to be unreasonably withheld.
8.4 Improvements to Metra Technology. BioQuant shall prosecute, in its sole
discretion and at its sole expense, patent applications within Improvements to
Metra Technology. BioQuant shall implement such procedures and undertake such
actions as it deems necessary to protect the Improvements to Metra Technology
against infringers. In the event BioQuant fails to prosecute any patent
application or to maintain or to defend any patent within Improvements to Metra
Technology, Metra may assume such prosecution, maintenance or defense and
BioQuant agrees to take all steps reasonably necessary to assure Metra's ability
to assume such prosecution, maintenance or defense.
9. Publications
9.1 The parties each agree to allow the other party twenty (20) days to review
any publication, abstract or poster which includes any subject matter related to
Metra Technology, in the case of a Metra review, or Improvements to Metra
Technology, in the case of a BioQuant review, prior to the proposed submission
of any such publication or abstract, or presentation of any such poster, to
permit the filing of a patent application(s) or deletion of confidential
information. The reviewing party shall within such twenty (20) day period
provide the submitting (or presenting) party written notice of the specific
subject matter, if any, deemed by the reviewing party to be confidential to such
reviewing party, and the submitting (or presenting) party agrees to remove such
confidential subject matter from the proposed publication, abstract or poster
prior to publication if requested to do so by the reviewing party.
10. BioQuant's Use of Metra Regulatory Filings.
10.1 At BioQuant's request, Metra shall disclose to BioQuant and permit BioQuant
to reference in BioQuant's regulatory filings, Metra's United States and foreign
regulatory filings (i) which relate to the subject matter of the BioQuant
License hereunder, and (ii) access to which is reasonably required by BioQuant
to support its efforts to obtain regulatory approval of Products throughout the
Territory. Except as reasonably required in order to make regulatory filings in
support of Products, or as otherwise required by law, BioQuant may review
Metra's regulatory filings only at Metra premises and shall not make any copy or
other transcription thereof. Metra shall not be obligated to disclose to
BioQuant any such data which Metra is precluded from revealing by reason of a
contractual obligation existing as of the Effective Date; provided, however,
that any such
7
obligation(s) existing as of the Effective Date are described on Exhibit A
attached hereto. Any disclosures made by Metra pursuant to this Section 10 shall
be deemed to constitute Confidential Information pursuant to Section 14 herein.
11. Warranty.
11.1 Metra represents and warrants that (i) it has full right, power and
authority to enter into this License Agreement and to grant the rights granted
to BioQuant hereunder, and (ii) it has not entered into, and during the term of
this License Agreement will not enter into, any agreement with any third party
that would conflict with the license granted to BioQuant herein.
11.2 BioQuant represents and warrants that (i) it has full right, power and
authority to enter into this License Agreement and to grant the rights granted
to Metra hereunder, and (ii) it has not entered into, and during the term of
this License Agreement will not enter into, any agreement with any third party
that would conflict with the license granted to Metra herein.
12. Intellectual Property Indemnity.
12.1 Intellectual Property Indemnity by Metra.
(i) No indemnity is provided hereunder for any third party claim of
infringement based on any use of Metra Technology granted under the BioQuant
License, or on any manufacture or distribution of products incorporating Metra
Technology granted under the BioQuant License.
(ii) THE FOREGOING STATES THE ENTIRE LIABILITY AND OBLIGATION OF METRA WITH
RESPECT TO INFRINGEMENT, OR CLAIMS OF INFRINGEMENT, BY METRA TECHNOLOGY OF ANY
THIRD PARTY INTELLECTUAL PROPERTY RIGHTS.
13. Limitation of Liability
13.1 IN NO EVENT SHALL EITHER PARTY TO THIS AGREEMENT BE LIABLE TO THE OTHER
PARTY TO THIS AGREEMENT FOR ANY LOSS OF BUSINESS PROFITS, INTERRUPTION OF
BUSINESS OR ANY SPECIAL, INDIRECT, OR CONSEQUENTIAL DAMAGES ARISING IN ANY WAY
OUT OF THIS AGREEMENT. THESE LIMITATIONS WILL APPLY NOTWITHSTANDING THE FAILURE
OF THE ESSENTIAL PURPOSE OF ANY LIMITED REMEDY.
14. Confidential Information.
14.1 Confidential Information. "Confidential Information" shall mean any
proprietary information, expressly including Know-How, which is specifically
designated as such, which is disclosed by either party to the other in any form
in connection with this License Agreement. Each party shall treat as
confidential all Confidential Information provided by the other party, shall not
8
use such Confidential Information except as expressly set forth herein or
otherwise authorized in writing, shall implement reasonable procedures to
prohibit the disclosure, unauthorized duplication, misuse or removal of the
Confidential Information and shall not disclose such Confidential Information to
any third party. Without limiting the foregoing, each of the parties shall use
at least the same procedures and degree of care to prevent the disclosure of
Confidential Information as it uses to prevent the disclosure of its own
confidential information of like importance, and shall in any event use no less
than reasonable procedures and a reasonable degree of care.
14.2 Exceptions. Notwithstanding the above, neither party shall have liability
to the other with regard to any Confidential Information received from the other
party that:
(i) was generally known and available in the public domain at the time it
was disclosed, or becomes generally known and available in the public domain
through no fault of the receiver;
(ii) was known to the receiver at the time of disclosure as shown by the
files of the receiver in existence at the time of disclosure;
(iii) is disclosed with the prior written approval of the discloser;
(iv) was independently developed by the receiver without any use of the
Confidential Information and by employees or other agents of the receiver who
have not been exposed to the Confidential Information, provided that the
receiver can demonstrate such independent development by documented evidence
prepared contemporaneously with such independent development;
(v) becomes known to the receiver from a source other than the discloser
without breach of this License Agreement by the receiver and in a manner which
is otherwise not in violation of the discloser's rights;
(vi) is disclosed pursuant to the order or requirement of a court,
administrative agency, or other governmental body; provided, that the receiver
shall provide reasonable advance notice thereof to enable the discloser to seek
a protective order or otherwise prevent such disclosure.
14.3 Disclosure of Confidential Information to Third Parties. Notwithstanding
the foregoing, either party may disclose Confidential Information of the other
party to third parties with whom the disclosing party has entered or proposes to
enter into a business relationship, or as reasonably necessary in order to
secure regulatory and any other government approvals required in order to market
Products, provided that any such disclosure is made pursuant to a written
confidentiality agreement
9
substantially similar to the provisions of this Section 14 and provided further
that the disclosing party promptly informs the other party of the nature of such
disclosure or potential disclosure.
15. Term, Termination.
15.1 This License Agreement shall become effective as of the Effective Date and
shall continue in force, unless earlier terminated in accordance with this
Section 15, until the expiration of the last to expire of the Patent Rights.
15.2 BioQuant License. The BioQuant License shall convert to a non-exclusive
license under Metra Technology upon the earlier of (i) seven (7) years from the
first commercial sale of Products, or (ii) ten (10) years from the Effective
Date. Prior to such conversion from such exclusive license to a non-exclusive
license and upon the request of either party, the parties shall negotiate in
good faith the terms and conditions of an extension of BioQuant's exclusive
license. If, despite such good faith negotiations, the parties are unable to
reach a mutually acceptable agreement within sixty (60) days following request
for negotiations under this Section 15.2, the BioQuant License shall become
non-exclusive. Metra may enter into negotiations with third parties prior to or
concurrent with such good faith negotiations with BioQuant.
15.3 Termination for Cause. This License Agreement may be terminated by either
party upon written notice if the other party (a) materially breaches any
material term or condition of this License Agreement and fails to remedy the
breach within thirty (30) days after being given written notice thereof, or (b)
is dissolved or liquidated or if the assets and/or business of such other party
are placed in the hands of a trustee, receiver or assignee for the benefit of
creditors, unless such act is reversed within fifteen (15) days.
15.4 Termination by Metra of the BioQuant License for BioQuant's Failure to
Exploit Metra Technology. The BioQuant License may be terminated by Metra
immediately upon written notice to BioQuant in the event of either of the
following:
15.4(a) BioQuant fails to invest at least one hundred thousand dollars
($100,000) annually into Research and Development-Related Costs directly related
to Metra Technology during the period of time between the Effective Date and
such time as BioQuant files a submission seeking regulatory approval from the
United States Food and Drug Administration to market Product ("Regulatory
Approval"); or
15.4(b) BioQuant fails to invest at least forty thousand dollars ($40,000)
annually into Research and Development-Related Costs directly related to Metra
Technology during the period of
10
time between a submission pursuant to Section 15.4(a) and approval of such
submission; or
Any compensation made by BioQuant to a third party for Research and
Development-Related Costs in the form of BioQuant capital stock shall be valued
for the purposes of calculating the investments required of BioQuant under
Sections 15.4(a) and 15.4(b) herein at the fair market value at the time of such
payment.
15.4 Records. BioQuant shall keep complete, true and accurate books of account
and records in sufficient detail to properly determine the dollar amounts
invested into Research and Development-Related Costs directly related to Metra
Technology under this License Agreement for at least three years following the
end of the calendar quarter to which they pertain.
15.5 Audit Rights. Metra shall have the right, upon reasonable notice and not
more frequent than annually, to have an independent accounting firm of its
choice, subject to BioQuant's approval and such approval shall not be
unreasonably withheld, audit the books and records of BioQuant relating to
investment in Research and Development-Related Costs directly related to Metra
Technology under this License Agreement, provided that each of the auditors sign
BioQuant's standard confidentiality agreement. The accounting records relating
to any given accounting period may be audited no more than one time, except in
the event the initial audit report results in a downward adjustment reducing the
amount BioQuant invested in Research and Development-Related Costs directly
related to Metra Technology under this License Agreement in which case a second
audit relating to the same accounting period may be conducted but only by an
independent accounting firm. The expenses of such second audit shall be borne by
Metra; provided, however, that if an audit conducted by an independent
accounting firm results in an adjustment reducing the amount of Research and
Development-Related Costs directly related to Metra Technology under this
License Agreement during the accounting period of 5% or more, then the expenses
of such audit shall be borne by BioQuant.
15.6 Return of Materials. Within ten (10) days after the expiration or
termination of this License Agreement, each party shall return any Confidential
Information received from the other party.
15.7 Effect of Termination. The provisions of sections 2, 3.2, 3.3, 5.4, 5.5,
5.6, 5.7, 6, 7, 8, 9, 11, 12, 13, 14 and 19 shall survive the termination or
expiration of this License Agreement.
11
* Omitted pursuant to a request for confidential treatment.
16. BioQuant Disparagement of Metra Products.
16.1 BioQuant, its agents and sublicensees, shall not promote or market Products
through the disparagement of other products developed or sold by Metra, or by
direct comparison of the negative characteristics of such products with
Products. In the event that Metra believes that at any time during the term of
this Agreement such disparagement or such comparison has occurred, Metra shall
notify BioQuant in writing of the nature of such alleged disparagement or
comparison. Metra shall in such notice propose a method(s) by which BioQuant may
cure such alleged disparagement or comparison satisfactory to Metra, such
proposed cure not to include direct monetary damages to Metra. In the event the
parties are unable to agree upon such a cure, or BioQuant is unable or unwilling
to effect such a cure, then either party may institute dispute resolution
mechanisms pursuant to Section 19.1 herein. Nothing in this Section 16.1 shall
be construed to limit BioQuant's ability to make product comparisons for
purposes of securing regulatory approvals in the United States or elsewhere, or
to promote and market a Product by reference to a label approved by the United
States Food and Drug Administration or its foreign counterparts.
17. Supply of Materials by Metra to BioQuant
17.1 Metra shall use its best efforts to supply certain agreed upon reagents to
BioQuant solely to support BioQuant's product development and Product
manufacturing efforts, at a cost to BioQuant computed as Metra's fully-burdened
Manufacturing Costs plus [ * ]. Metra shall use its best efforts to place a
quantity of Metra's polyclonal rabbit antipyridinium crosslinks antibody
sufficient to insure BioQuant a three (3) year supply of such reagent under the
control of a mutually-agreeable third party at BioQuant's request and expense.
BioQuant and Metra shall jointly contract with such third party and such third
party shall be authorized to release control of such reagent to BioQuant only
with Metra's written authorization which may be withheld only in the event that
(i) BioQuant is not current in regards to any of its payment obligations which
arise under the terms of this Agreement, (ii) the amount of reagent being
requested for release is greater than one hundred and twenty percent (120%) of
the forecasted order, or (iii) Metra has provided BioQuant notice pursuant to
Sections 19.2 and 19.6 of Metra's allegation of a breach by BioQuant of any
provision of this Agreement.
17.2 Upon execution of this Agreement, and within ten (10) days after the end of
each quarter thereafter, BioQuant shall provide Metra with a written, good
faith, and reasonable forecast, on a rolling basis, of the reagents for which
BioQuant expects to submit orders for the following year. BioQuant shall be
bound to
12
order, and Metra shall be obligated to use its best efforts to supply, no less
than eighty percent (80%) of BioQuant's annual forecasted order for each
reagent. In the event that Metra is unwilling or unable to meet its supply
obligations to BioQuant for two (2) consecutive quarters, Metra shall promptly
take all steps necessary to establish an alternative source of supply for
BioQuant on terms and conditions no less favorable to BioQuant than those set
forth herein. In the event Metra is unable to establish a satisfactory
alternative source of supply within a reasonable period of time, Metra shall
grant to BioQuant the right to manufacture the reagents.
18. Technological Support. Metra may, at its sole discretion, provide
technological support to BioQuant during the period of time after the Effective
Date and prior to BioQuant having received regulatory approval from the United
States Food and Drug Administration, or an equivalent international regulatory
agency, in a manner to be mutually agreed upon by the parties and for a fee of
$60.00 per hour. However, at the point in time that BioQuant pays Metra two
hundred fifty thousand dollars ($250,000) pursuant to Section 4.1 herein, any
technological support provided by Metra pursuant to this Section 16 shall be at
no charge to BioQuant.
19. Miscellaneous.
19.1 Governing Law. This License Agreement shall be covered by and interpreted
under the laws of the State of California, without regard to conflict of laws
provisions.
19.2 Dispute Resolution. Any dispute or claim arising out of or relating to this
License Agreement shall be resolved as follows: (i) for a period of thirty (30)
days after a dispute arises the respective chief executive officers of the
parties shall negotiate in good faith in an effort to resolve the dispute, and
(ii) if the dispute has not been resolved at the close of such thirty-(30) day
period, the matter will be finally settled by binding arbitration in San Jose,
California, under the Commercial Rules of Arbitration of the American
Arbitration Association, by one arbitrator appointed in accordance with said
rules; provided that if the parties cannot agree on who is to serve as the
arbitrator, the dispute shall be resolved by a panel of three arbitrators,
wherein each party shall appoint one arbitrator and those arbitrators shall in
turn jointly appoint the third arbitrator. Judgment on an award rendered by an
arbitrator or arbitrators may be entered in any court having jurisdiction
thereof. Notwithstanding the foregoing, the parties may apply to any court of
competent jurisdiction for preliminary or interim equitable relief without
breach of this arbitration provision.
19.3 Costs. Each party shall bear its own costs in connection with the
negotiation, documentation and enforcement of this
13
License Agreement except as otherwise specifically provided herein.
19.4 Force Majeure. If the performance of this License Agreement or any
obligations hereunder is prevented, restricted or interfered with by reason of
fire or other casualty or accident, strikes or labor disputes, war or other
violence, any law, order, proclamation, ordinance, demand or requirement of any
government agency, or any other act or condition beyond the control of the
parties hereto, the party so affected, upon giving prompt notice to the other
party, shall be excused from such performance (other than the obligation to pay
money) during such prevention, restriction or interference.
19.5 Assignment. The provisions hereof shall be binding upon and inure to the
benefits of the parties, their successors and permitted assigns. This Agreement
or any rights or obligations arising hereunder may be assigned by either party
upon written notice to the other; provided, however, that BioQuant may only
assign this Agreement to a competitor of Metra in the area of assaying bodily
fluids for the determination of biochemical markers for bone metabolism with the
prior written consent of Metra, which consent shall not be unreasonably
withheld.
19.6 Notices. All notices, requests, consents and other communications under
this License Agreement shall be in writing and (i) delivered by hand, or (ii)
mailed by first class registered mail, return receipt requested, postage
prepaid, or (iii) sent via facsimile transmission, or (iv) shipped through a
private courier system designated for overnight delivery, and shall be addressed
to the appropriate party as follows:
Metra Biosystems, Inc. BioQuant, Inc.
000 Xxxxx Xxxxxxx Xx. 0000 Xxxxx Xxxx
Xxxxxxxx Xxxx, Xx. 00000 Xxx Xxxxx, Xx. 00000
Attn: President Attn: President
415/000-0000 - phone 313/000-0000 - phone
313/000-0000 - fax 415/000-0000 - fax
or to such other address or person as the parties may from time to time
designate by written notice delivered as specified above to the other. Notices
shall be effective upon receipt.
19.7 Severability. In the event that any provision of this License Agreement
becomes or is declared by a court of competent jurisdiction to be illegal,
unenforceable or void, this License Agreement shall continue in full force and
effect without said provision.
19.8 Waiver. The failure of either party to enforce at any time the provisions
of this License Agreement shall in no way be constituted to be a present or
future waiver of such provisions, and shall not in any way affect the right of
either party to
14
enforce each and every such provision thereafter. Any waiver by a party of its
rights hereunder shall be effective only if evidenced by a written instrument
executed by a duly authorized representative of such party.
19.9 Modification. No alteration, amendment, waiver, cancellation or any other
change in any term or condition of this License Agreement shall be valid or
binding on either party unless the same shall have been mutually assented to in
writing by both parties.
19.10 Independent Contractors. The relationship of Metra and BioQuant hereunder
is that of independent contractors, and nothing herein shall be construed to (i)
give either party the right to direct or control the day-to-day activities of
the other, or (ii) constitute the parties as partners, joint venturers,
co-owners or otherwise as participants in a joint or common undertaking.
19.11 Entire Agreement. The terms and conditions herein contained constitute the
entire agreement between the parties and supersede all previous agreements and
understandings, whether oral or written, between the parties hereto with respect
to the subject matter hereof, and no agreement or understanding varying or
extending the same shall be binding upon either party hereto unless in a written
document signed by both parties.
19.12 Section Headings. The section headings contained in this License Agreement
are for reference purposes only and shall not affect in any way the meaning or
interpretation of this License Agreement.
19.13 Counterparts. This License Agreement may be executed in two or more
counterparts, each of which shall be deemed an original and all of which
together shall constitute one instrument.
15
IN WITNESS WHEREOF, the parties hereto have caused this License Agreement
to be signed by duly authorized officers or representatives as of the date first
above written.
METRA BIOSYSTEMS, INC.
By:___________________________
Print name____________________
Title:________________________
BIOQUANT, INC.
By:___________________________
Print name____________________
Title:________________________
16
