EXHIBIT 10.24
CONFIDENTIAL
AGREEMENT
---------
This AGREEMENT, made and effective January 1, 1999 ("Effective Date") by
and between BECTON XXXXXXXXX AND COMPANY, a New Jersey corporation ("BECTON")
and MEDI-JECT CORPORATION, a Minnesota corporation ("MEDI-JECT").
Whereas, BECTON and MEDI-JECT have previously entered into that certain
Development and License Agreement, dated as of January 1, 1996, an Amendment No.
1 to Development and License Agreement and an Amendment No. 2 to Development and
License Agreement (collectively the "DEVELOPMENT AND LICENSE AGREEMENT"),
relating to the development and commercialization of certain needle-free
injectors and disposables, particularly the MJ-7 injector, copies of which are
attached hereto; and
Whereas, the parties have now completed the three (3) year period from
January 1, 1996 under the DEVELOPMENT AND LICENSE AGREEMENT, including the
initial term of the OPEN DEVELOPMENT PROGRAM, and the parties now wish to set
forth the terms and conditions to restructure their relationship and redefine
their roles, rights and obligations to one another going forward whereby MEDI-
JECT shall be free to develop, make, have made, import, offer for sale, sell,
distribute and use needleless injectors and disposables, including assuming
complete responsibility for the commercialization of the MJ-7 injector, as well
as multiple-use disposable drug xxxxxxxx (user-filled) and other related drug-
containing or drug-contacting components (e.g., vial adapter) for use in
connection with the MJ-7 injector, and BECTON is free to develop, make, have
made, import, offer for sale, sell, distribute and use needleless injectors and
disposables, including disposable drug xxxxxxxx (either user-filled or pre-
fillable) and other related drug-containing or drug-contacting components (e.g.,
vial adapter); and
Now, therefore, in consideration of the premises and promises contained
herein, the parties agree as follows:
1. DEFINITIONS.
-----------
Each of the capitalized terms used in this Agreement (other than the headings of
the Paragraphs), whether used in the singular or the plural, shall have the
meaning as set forth below or, if not listed below, the meaning as designated in
places throughout this Agreement.
1.1 "AFFILIATE" shall mean any corporation or other business entity
controlled by or in common control of a party. "Control" as used herein means
the ownership directly or indirectly of fifty percent (50%) or the maximum
interest permitted by local law of the voting stock of a corporation or a fifty
percent (50%) or greater interest in the income of such corporation or other
business entity or the ability otherwise of a party to secure that the affairs
of such corporation or other business entity are managed in accordance with its
wishes.
1.2 "BECTON PROPERTY" shall mean all INTELLECTUAL PROPERTY owned by or
licensed to (with right of sublicense) BECTON prior to January 1, 1996 relating
to DISPOSABLES.
1.3 "CONFIDENTIAL INFORMATION" shall mean any information, report,
document or other materials (including, but not limited to, laboratory
notebooks, schematics, specifications, circuits, diagrams, specimens, samples,
prototypes, models and data regardless of how stored) disclosed or provided to
the other party during the DEVELOPMENT AND LICENSE AGREEMENT which is of a trade
secret, confidential, proprietary or like undisclosed nature or was identified
as such.
1.4 "DISPOSABLE" shall mean a single-use or multiple-use disposable drug
chamber (either USER-FILLED or PRE-FILLABLE) or other related drug-containing or
drug-contacting component (e.g., vial adapter) for use with a NEEDLELESS
INJECTOR.
1.5 "INTELLECTUAL PROPERTY" shall mean and include all patentable and
unpatentable inventions, ideas, discoveries, improvements, design rights, works
of authorship, trade secrets, know-how and any equivalents thereof.
1.6 "MJ-7 INJECTOR" shall mean the reusable device described in the
specification attached hereto as Exhibit A for needleless, transdermal injection
of parenteral drugs and any
2
improvements or modifications thereto, excluding next generation devices such as
the MJ-8 needleless injector to be submitted to BECTON under Paragraph 9.2.
1.7 "MEDI-JECT PROPERTY" shall mean all INTELLECTUAL PROPERTY owned by or
licensed to (with right of sublicense) MEDI-JECT prior to January 1, 1996
relating to NEEDLELESS INJECTORS and/or DISPOSABLES, including all PATENTS filed
by MEDI-JECT before March 1, 1996.
1.8 "NEEDLELESS INJECTOR" shall mean (a) a device for needleless,
transdermal injection of parenteral drugs which is (i) designed for use with a
DISPOSABLE and (ii) self-powered or powered by means of any external energy
source and, if applicable, (b) any reusable external energy source and related
ancillary components.
1.9 "NET SALES" shall mean the price at which ROYALTY-BEARING DISPOSABLES
are sold by MEDI-JECT, its respective AFFILIATES or sublicensees to a purchaser
(other than MEDI-JECT, its respective AFFILIATES or sublicensees), less returns
or credits, rebates, excise, sale, use or value-added taxes, cash and trade
discounts actually allowed and import duties. The parties recognize that only
one royalty shall be payable with respect to any ROYALTY-BEARING DISPOSABLE
regardless of the number of VALID CLAIMS under the applicable PROGRAM PATENTS
that may cover the manufacture, sale or use of such DISPOSABLE.
1.10 "PATENTS" shall mean United States and foreign patents and/or patent
applications, including any continuations, continuations-in-part, divisions,
extensions, substitutions, reissues or re-examinations thereof.
1.11 "PRE-FILLABLE" shall mean a DISPOSABLE filled by any one other than a
patient, nurse, doctor or other healthcare professional.
1.12 "PROGRAM PATENTS" shall mean those PATENTS within the PROGRAM
PROPERTY and for which PATENTS have been filed for by March 1, 1999.
1.13 "PROGRAM PROPERTY" shall mean all INTELLECTUAL PROPERTY made,
conceived, created, developed or reduced to practice (by employees or agents of
BECTON or
3
MEDI-JECT or jointly by employees or agents of both parties) during and/or in
connection with their respective activities under the DEVELOPMENT AND LICENSE
AGREEMENT between January 1, 1996 and January 1, 1999 relating to NEEDLELESS
INJECTORS and/or DISPOSABLES.
1.14 "ROYALTY-BEARING DISPOSABLE" shall mean:
(a) any DISPOSABLE for use with the MJ-7 INJECTOR; or
(b) any DISPOSABLE, (i) the manufacture, importation, offer for
sale, sale or use of such is covered, in the country where the DISPOSABLE is
manufactured, imported, offered for sale, sold or used, by (1) for the two (2)
year period commencing on the first commercial sale of DISPOSABLES, a claim of a
pending patent application within the PROGRAM PATENTS, or (2) at any time during
the term hereof, a VALID CLAIM of any PROGRAM PATENTS.
1.15 "USER-FILLED" shall mean a DISPOSABLE filled by a patient, nurse,
doctor or other healthcare professional.
1.16 "VALID CLAIM" shall mean at least one claim of an issued or granted
PROGRAM PATENT so long as such claim shall not have been cancelled or shall not
have been held invalid or not infringed in an unappealed or unappealable
decision rendered by a tribunal of competent jurisdiction.
1.17 Except to the extent expressly provided in this Agreement, any other
capitalized terms used herein shall have the same meanings as provided under the
DEVELOPMENT AND LICENSE AGREEMENT.
2. UNDERSTANDING OF THE PARTIES & MUTUAL RELEASES. In furtherance of the
----------------------------------------------
parties' desire to restructure the relationship and redefine their roles, rights
and obligations to one another going forward with respect to the MJ-7 INJECTOR
and DISPOSABLES, the DEVELOPMENT AND LICENSE AGREEMENT is hereby cancelled and
shall have no further force and effect. Accordingly, except as specifically
provided herein, from the Effective Date hereof, the parties
4
agree that: (a) neither party shall bear any further obligation or
responsibility to the other party pursuant to the DEVELOPMENT AND LICENSE
AGREEMENT, and each party shall not to bring any lawsuit against the other
party, or its affiliated and subsidiary entities, and fully releases and forever
discharges the other party, and its affiliated and subsidiary entities and their
respective legal representatives, successors, assigns, agents, directors and
employees, from and against any and all actions, claims, and liabilities of
whatsoever kind or character, in law or in equity, now known or unknown,
suspected or unsuspected, that the other party has ever had or may now have
against them or any of them as related to or arising from the respective
activities and obligations of the parties under the DEVELOPMENT AND LICENSE
AGREEMENT; (b) MEDI-JECT shall be free to develop, make, have made, import,
offer for sale, sell, distribute and use NEEDLELESS INJECTORS and DISPOSABLES,
including but not limited to being free to commercialize the MJ-7 INJECTOR and
DISPOSABLES for use in connection therewith; (c) BECTON shall be free to
develop, make, have made, import, offer for sale, sell, distribute and use
NEEDLELESS INJECTORS and DISPOSABLES; and (d) the rights and obligations of the
parties in and to the INTELLECTUAL PROPERTY which is the subject of the
DEVELOPMENT AND LICENSE AGREEMENT shall be allocated between the parties in the
manner set forth in this Agreement.
3. INTELLECTUAL PROPERTY. All INTELLECTUAL PROPERTY shall be owned by
---------------------
the parties as follows:
(a) MEDI-JECT shall own all MEDI-JECT PROPERTY and all PROGRAM PROPERTY
covering NEEDLELESS INJECTORS, excluding PROGRAM PATENTS;
(b) BECTON shall own all BECTON PROPERTY and all PROGRAM PROPERTY covering
DISPOSABLES, excluding PROGRAM PATENTS;
(c) BECTON and MEDI-JECT shall jointly own all PROGRAM PATENTS; and
5
(d) BECTON and MEDI-JECT shall jointly own any remaining PROGRAM PROPERTY
not otherwise covered herein under Sub-Paragraphs (a) & (b).
4. PATENT PROSECUTION. Each party shall promptly disclose, in writing, to
------------------
the other party all INTELLECTUAL PROPERTY covered by Paragraph 3, and each party
shall be responsible for filing and prosecuting patent applications covering
INTELLECTUAL PROPERTY exclusively owned by it. However, with respect to jointly
owned PROGRAM PATENTS, the parties shall mutually agree on whether and in which
countries to file and prosecute patent applications covering such INTELLECTUAL
PROPERTY, and to maintain patents granted thereunder; with each party having an
opportunity to review and comment on any such filings prior to submission and to
discuss the strategy for preparing, filing, prosecuting, maintaining and
defending of any such patent applications or resulting patents, and with the
parties sharing equally any out-of-pocket costs and expenses incurred with
respect to such actions. Unless otherwise mutually agreed, the parties agree
that at a minimum PROGRAM PATENTS shall be applied for, prosecuted and
maintained in at least the United States, Europe (designating the United
Kingdom, France and Germany) and Japan. In the event one party declines to
share in the future expenses for seeking or maintaining a PROGRAM PATENT, such
party shall provide the other party with prior written notice of its wish to
share in any future expenses before such expenses are incurred and shall
continue to jointly own such PROGRAM PATENT but such party shall not be entitled
---
to enforce such PROGRAM PATENT against a third-party without the written
authorization of the other party. Also, in the case of BECTON, if BECTON
declines to participate in the future expenses for seeking or maintaining such
PROGRAM PATENT, for purposes of royalties owed under this Agreement, such
PROGRAM PATENT shall be considered has having been cancelled for purposes of
whether it includes a VALID CLAIM.
6
5. COOPERATION. Upon request, each party shall execute and deliver to the
-----------
other party all descriptions, applications, assignments and other documents and
instruments necessary or proper to carry out the provisions of this Agreement
without further compensation; and the parties shall cooperate with and assist
each other or their nominees in all reasonable ways and at all reasonable times,
including, but not limited to, testifying in all legal proceedings, signing all
lawful papers and in general performing all lawful acts reasonable, necessary or
proper, to aid the other party in obtaining, maintaining, defending and
enforcing all lawful patent, copyright, trade secret, know-how and the like in
the United States and elsewhere.
6. CROSS-LICENSES. The following cross-licenses are hereby granted:
--------------
(a) BECTON hereby grants to MEDI-JECT a non-exclusive, worldwide, royalty-
free license to use the PATENTS within the BECTON PROPERTY (subject to
any restrictions or obligations to third parties, including license
royalty obligations) to develop, make, have made, market, import,
offer for sale, sell, distribute and use multiple-use disposable drug
xxxxxxxx (USER-FILLED) or other related drug-containing or drug-
contacting component (e.g., vial adapter) for use with the MJ-7
INJECTOR, as well as the continuing right and license to use such
PATENTS actually used in connection with the MJ-7 INJECTOR to develop,
make, have made, market, import, offer for sale, sell, distribute and
use multiple-use disposable drug xxxxxxxx (USER-FILLED) or other
related drug-containing or drug-contacting component (e.g., vial
adapter) for use with future NEEDLELESS INJECTORS; and
(b) MEDI-JECT hereby grants to BECTON a non-exclusive, worldwide, royalty-
free license to use the PATENTS within the MEDI-JECT PROPERTY (subject
to any restrictions or obligations to third parties, including license
royalty obligations) to develop, make, have made, market, import,
offer for sale, sell, distribute and use single-use disposable drug
xxxxxxxx (either USER-FILLED or PRE-FILLABLE)
7
or other related drug-containing or drug-contacting components (e.g.,
vial adapter).
(c) Except as specifically provided herein, nothing contained in this
Agreement shall be construed by implication or otherwise to grant to a
party any rights to any of the other party's other INTELLECTUAL
PROPERTY, including PATENTS, made, conceived, created, developed or
reduced to practice (by employees or agents of BECTON or MEDI-JECT or
jointly by employees or agents of both parties) prior to January 1,
1996 or independently acquired or developed by either party after
January 1, 1999.
7. ROYALTIES.
---------
7.1 Notwithstanding the royalty-free nature of the rights granted MEDI-
JECT under Paragraph 6(a), in consideration of the rights granted hereunder, as
well as the rights granted to BECTON under the DEVELOPMENT AND LICENSE AGREEMENT
and in accordance herewith relinquished by BECTON, MEDI-JECT agrees to pay
BECTON the following royalties:
(a) A (***) percent ((***)%) royalty on NET SALES of the MJ-7 INJECTORS
for use with insulin;
(b) A (***) percent ((***)%) royalty on NET SALES of ROYALTY-BEARING
DISPOSABLES for use with insulin; and
(c) A (***) percent ((***)%) royalty on NET SALES of ROYALTY-BEARING
DISPOSABLES for uses other than with insulin.
7.2 At the expiration of the last to expire PROGRAM PATENT having a VALID
CLAIM covering a ROYALTY-BEARING DISPOSABLE, MEDI-JECT shall have a completely
paid-up, royalty-free right and license under the PROGRAM PATENTS to
subsequently make, have made, use, sell and import such ROYALTY-BEARING
DISPOSABLES and shall have no further obligation to BECTON under the PROGRAM
*** Pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended,
confidential portions of this Exhibit have been deleted and filed separately
with the Securities Exchange Commission pursuant to a request for confidential
treatment.
8
PATENTS under this Agreement with respect to such ROYALTY-BEARING DISPOSABLE for
use other than with the MJ-7 INJECTOR.
7.3 MEDI-JECT shall keep complete and accurate records of the NET SALES of
DISPOSABLES, as applicable, and all data necessary for the computation of
payment or other calculation made hereunder or thereunder. However, MEDI-JECT
shall have no duty of trust or other fiduciary relationship with BECTON
regarding the maintenance of the books of account or the calculation and
reporting of royalties and other calculations and payments hereunder.
7.4 Royalty payments hereunder, when due, shall be made on or before the
last business day of May, August, November and February of each year for the
sales of the ROYALTY-BEARING DISPOSABLES, as the case may be, during the
preceding quarterly periods ending on the last day of March, June, September and
December, respectively. Such payments shall be accompanied by a statement
showing the NET SALES and such other particulars as are necessary for an account
of the payments to be made pursuant to this Agreement. Payment of the amount
due shall accompany such statement, which shall be deemed to be true and correct
unless objected to and audited in accordance with Paragraph 7.6 below.
7.5 All royalties and other payments hereunder shall be payable by MEDI-
JECT to BECTON in United States dollars by a check or checks drawn to the order
of BECTON. To the extent sales may have been made by MEDI-JECT in a foreign
country, such royalty payments shall be made in United States dollars on the
basis of conversion, from the currency of such foreign country according to
MEDI-JECT's then standard procedures for such conversions, which standard
procedures shall utilize a publicly available bank exchange rate or other
published exchange rate (e.g., The Wall Street Journal), on the last business
day of the calendar quarter when the sales occurred, and shall be paid at the
time and in the manner set forth above, provided, however, that royalties based
on sales in any foreign country shall be payable to BECTON only after deducting
for exchange and all other charges due foreign governments, including
withholding taxes, arising from the origin and transmittal of such royalties,
and further provided that the foregoing is subject to the right of MEDI-JECT to
make payment of royalties in
9
any country where the currency is blocked and where legal conversion of the
currency billed cannot be made into United States dollars by depositing such
royalty payments in BECTON's name in a bank designated by BECTON within such
country.
7.6 BECTON, at its own expense, shall have the right for a period of two
(2) years after receiving any report from MEDI-JECT to nominate an independent
Certified Public Accountant ("CPA") reasonably acceptable to MEDI-JECT, who
shall have access to MEDI-JECT's records during reasonable business hours for
the purpose of verifying the payments or other calculations made under this
Agreement, but this right may not be exercised more than once in any calendar
year, and the CPA shall disclose to BECTON only information relating to the
accuracy of the payment report or other calculations and the payments made in
accordance with this Agreement. The failure of BECTON to request verification
of any payment report during said two (2) year period shall be considered
acceptance of the accuracy of such report and MEDI-JECT shall have no obligation
to maintain any records pertaining such report beyond said two (2) year period.
8. CONFIDENTIALITY. Subject to the rights and licenses granted herein,
---------------
MEDI-JECT and BECTON shall continue to be restricted from using or disclosing
CONFIDENTIAL INFORMATION for a period of five (5) years from the Effective Date
of this Agreement, except as provided as provided under Paragraph 12.4 in
connection with a transfer so long as any receiving party agrees to be bound by
the restrictions and obligations set forth herein, including but not limited to
those with respect non-use and confidentiality of CONFIDENTIAL INFORMATION.
However, nothing in this Agreement shall in any way restrict the right of a
receiving party to use, disclose, or otherwise deal with any information which
(i) was already known to the receiving party at the time of disclosure as
evidenced by written documents in the receiving party's possession prior to
disclosure; or (ii) was generally available to the public or becomes publicly
known through no wrongful act of the receiving party; or (iii) was received by
the receiving party from a third-party who had a legal right to provide it; or
(iv) was developed
10
independently of knowledge of CONFIDENTIAL INFORMATION received by the receiving
party from the disclosing party.
9. RIGHT OF FIRST REFUSAL
----------------------
9.1 Disposables. For a period of five (5) years from the Effective Date
-----------
of this Agreement, MEDI-JECT agrees to notify BECTON in writing no more than
(***) months before MEDI-JECT either commits capital to manufacture or commits
to a third-party to manufacture for it more than (***) DISPOSABLES per calendar
year and MEDI-JECT agrees to negotiate with BECTON, before any others, for
exclusive rights to manufacture such DISPOSABLE for MEDI-JECT. BECTON shall have
(***) days after receiving such written notification to notify MEDI-JECT if
BECTON desires to exercise its right of first refusal. Failure to provide such
notice in a timely manner shall result in a forfeiture of such right of first
refusal as to such DISPOSABLE. Upon receipt of notice by MEDI-JECT from BECTON
that it intends to exercise its right of first refusal, BECTON and MEDI-JECT
shall negotiate, in good faith and in an expeditious manner, terms and
conditions satisfactory to both parties under which BECTON would exclusively
manufacture and sell such DISPOSABLE, unless otherwise agreed to by the parties.
If the parties are unable to agree on the terms and conditions of an agreement
within a period of (***) days after receiving the notification from MEDI-JECT
provided for under this Paragraph, MEDI-JECT shall be free to offer the same
rights to such DISPOSABLE as were offered to BECTON to any third party on terms
no more favorable in the aggregate to that third party than the terms last
offered to BECTON.
9.2 Injector for Use with Insulin. For a period of (***) months from the
-----------------------------
Effective Date of this Agreement, MEDI-JECT agrees to notify BECTON in writing
in the event MEDI-JECT has conceived of a new NEEDLELESS INJECTOR to be
commercially developed for use with insulin and provide BECTON with at least one
(***) prototype of such new NEEDLELESS INJECTOR, and MEDI-JECT agrees to
negotiate with BECTON, before any others, for exclusive rights to commercially
develop and sell the new NEEDLELESS INJECTOR, which
*** Pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended,
confidential portions of this Exhibit have been deleted and filed separately
with the Securities Exchange Commission pursuant to a request for confidential
treatment.
11
BECTON understands the next new NEEDLELESS INJECTOR may be known as the MJ-8.
BECTON shall have (***) days after receiving such written notification to notify
MEDI-JECT if BECTON desires to exercise its right of first refusal. Failure to
provide such notice in a timely manner shall result in a forfeiture of such
right of first refusal as to such new NEEDLELESS INJECTOR. Upon receipt of
notice by MEDI-JECT from BECTON that it intends to exercise its right of first
refusal, BECTON and MEDI-JECT shall negotiate, in good faith and in an
expeditious manner, terms and conditions satisfactory to both parties under
which BECTON would exclusively sell such new NEEDLELESS INJECTOR for use with
insulin, unless otherwise agreed to by the parties. If the parties are unable to
agree on the terms and conditions of an agreement within a period of (***) days
after receiving the notification from MEDI-JECT provided for under this
Paragraph, MEDI-JECT shall be free to offer the same rights to such NEEDLELESS
INJECTOR as were offered to BECTON to any third party on terms no more favorable
in the aggregate to that third party than the terms last offered to BECTON.
9.3 Injectors for use with other than Insulin. For a period of (***)
-----------------------------------------
months from the Effective Date of this Agreement, MEDI-JECT agrees to notify
BECTON in writing in the event MEDI-JECT has conceived of a new NEEDLELESS
INJECTOR to be commercialized for use with other than insulin and provide BECTON
with at least one sample of such new NEEDLELESS INJECTOR, and MEDI-JECT agrees
to negotiate with BECTON, before any others, for exclusive rights to offer for
sale, sell and use DISPOSABLES in connection with the new NEEDLELESS INJECTOR to
deliver other than insulin, which BECTON understands the next new NEEDLELESS
INJECTOR may be known as the MJ-8. BECTON shall have (***) days after receiving
such written notification to notify MEDI-JECT if BECTON desires to exercise its
right of first refusal. Failure to provide such notice in a timely manner shall
result in a forfeiture of such right of first refusal as to such new NEEDLELESS
INJECTOR. Upon receipt of notice by MEDI-JECT from BECTON that it intends to
exercise its right of first refusal, BECTON and MEDI-JECT shall negotiate, in
good faith and in an expeditious manner, terms and conditions satisfactory to
both parties under which BECTON would exclusively make,
*** Pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended,
confidential portions of this Exhibit have been deleted and filed separately
with the Securities Exchange Commission pursuant to a request for confidential
treatment.
12
have made, offer for sale, sell, import and use DISPOSABLES in connection with
such new NEEDLELESS INJECTOR for use with other than insulin, unless otherwise
agreed to by the parties. If the parties are unable to agree on the terms and
conditions of an agreement within a period of (***) days after receiving the
notification from MEDI-JECT provided for under this Paragraph, MEDI-JECT shall
be free to offer the same rights to such NEEDLELESS INJECTOR and/or DISPOSABLE
as were offered to BECTON to any third party on terms no more favorable in the
aggregate to that third party than the terms last offered to BECTON.
10. OBLIGATIONS TO THIRD-PARTIES. BECTON and MEDI-JECT agree to cooperate
----------------------------
(***)
11. RIGHTS AND OBLIGATIONS TO NEGOTIATE AND RESOLUTION OF DISPUTES.
--------------------------------------------------------------
11.1 Within sixty (60) days of the Effective Date of this Agreement, the
parties shall attempt in good faith to identify and categorize all of the
PATENTS within the PROGRAM PROPERTY and MEDI-JECT PROPERTY covered by this
Agreement, and resolve any outstanding issues with respect thereto, including
any issues raised under Paragraphs 4 and 5.
11.2 If during a period of two (2) years from the Effective Date of this
Agreement it becomes necessary or desirable for a party to have access to the
INTELLECTUAL PROPERTY of the other party covered by this Agreement in order to
carry out any of its rights and obligations under this Agreement or access to
PROGRAM PROPERTY not specifically provided for herein, MEDI-JECT and BECTON
agree to negotiate in good faith with each other a mutually agreeable
arrangement, including, for example, a licensing agreement to provide access to
such necessary rights.
11.3 The parties shall attempt in good faith to resolve any dispute
arising out of or relating to this Agreement promptly by negotiations between
executives of each party who have the authority to settle such dispute.
Executives of both parties shall attempt to resolve such dispute in the course
of discussions conducted by telephone or face-to-face meeting at a mutually
*** Pursuant to Rule 24b-2 of the Securities Exchange Act of 1934, as amended,
confidential portions of this Exhibit have been deleted and filed separately
with the Securities Exchange Commission pursuant to a request for confidential
treatment.
13
acceptable times and places, and thereafter as often as they reasonably deem
necessary, to exchange relevant information. If the executives are unable to
resolve such dispute, the parties shall submit such dispute to non-binding
mediation, to be performed over a period not to exceed five days by a
professional mediation service reasonably acceptable to the parties. If the
dispute is not resolved by such mediation, the parties may exercise their rights
to any legal or equitable remedy available; provided, however that the exclusive
jurisdiction and venue for any such disputes shall be the state and federal
courts located in (a) Minneapolis, Minnesota, if BECTON brings suit against
MEDI-JECT or (b) Bergen County, New Jersey, if MEDI-JECT brings suit against
BECTON.
12. MISCELLANEOUS.
-------------
12.1 Each party represents and warrants to the other party that it is duly
authorized to enter into this Agreement and become bound by all of its terms and
conditions, and further represents and warrants that nothing in this Agreement
will contravene or conflict with any Article of Incorporation, by-law, rule,
regulation, order, statute, agreement or other writing by which it may be bound
or held accountable.
12.2 Nothing in this Agreement shall be deemed or construed as creating
any agency or partnership between or among the parties. The parties shall not
conduct their activities hereunder in such manner as to make it appear to third
parties that they have formed a partnership. No person not a party to this
Agreement, including any employees or agents or any party to this Agreement,
shall have or acquire any rights by reason of the parties having entered into
this Agreement.
12.3 This Agreement and any of its individual terms shall be amended,
modified, waived, superseded or canceled only by a writing duly authorized and
signed by both parties. The delay or failure of any party at any time or times
to require performance of any term shall in no manner affect that party's rights
at a later time to enforce the same.
14
12.4 This Agreement shall be binding upon and inure to the benefit of the
parties and their respective legal representatives, successors and permitted
assigns. Neither party shall assign this Agreement or any part thereof without
the prior written consent of the other party; provided, however, either party,
without such consent, may assign this Agreement or delegate its responsibilities
under this Agreement to an AFFILIATE, and in connection with the transfer or
sale of substantially its entire business to which this Agreement pertains in
the event of its merger or consolidation with or acquisition by another company
or in the event of the transfer or sale to a wholly-owned subsidiary.
12.5 This Agreement may be executed in two or more counterparts, each of
which shall be deemed an original.
12.6 Any notice permitted or required under this Agreement shall be deemed
given upon receipt when hand-delivered or sent by United States Postal Service
Express Mail when addressed to:
If to BECTON: President
Becton Xxxxxxxxx Pharmaceutical Systems
0 Xxxxxx Xxxxx
Xxxxxxxx Xxxxx, Xxx Xxxxxx 00000-0000
with a copy to: Chief Intellectual Property Counsel
Becton Xxxxxxxxx and Company
0 Xxxxxx Xxxxx
Xxxxxxxx Xxxxx, Xxx Xxxxxx 00000-0000
15
If to MEDI-JECT: President
Medi-Ject Corporation
000 Xxxxxxxx Xxxx, Xxxxx 000
Xxxxxxxxxxx, Xxxxxxxxx 00000
with a copy to: Xxxxxx Xxxxxxx, Esq.
XXXXXXX, STREET & DEINARD
000 Xxxxx 0xx Xxxxxx, Xxxxx 0000
Xxxxxxxxxxx, Xxxxxxxxx 00000
12.7 This Agreement shall be governed by and construed in accordance with
Minnesota law (excluding its choice of law rules).
12.8 If any term or condition of this Agreement is or is found to be
invalid or unenforceable in any country or countries, the remaining terms and
conditions shall remain in full force and effect, and the parties agree to amend
or construe the invalid or unenforceable terms or conditions of this Agreement
in such manner so as to render them valid and enforceable giving due regard to
the intent of the parties. In the event that cannot be done and the invalid or
unenforceable term or condition is material to this Agreement, the parties agree
to renegotiate the entire Agreement with respect to that country.
12.9 If the parties determine that a filing or notification with the
European Economic Commission is necessary or useful to affect the intent of this
Agreement within the European Economic Community, the parties shall cooperate,
at their own expense, in the preparation and filing of such documents.
12.10 This Agreement constitutes the complete understanding between the
parties of each party's obligations to the other party with respect to the
subject matter hereof and cancels and supersedes all prior and contemporaneous
understandings, negotiations and agreements whether written or oral, including
but not limited to the DEVELOPMENT AND LICENSE AGREEMENT.
12.11 This Agreement can be modified only by a written document executed
by an authorized representative of the parties which refers to this Agreement
and includes a copy of this Agreement as an attachment.
16
Having intended to become bound by the terms and conditions of this
Agreement, the parties acknowledge entering into this Agreement as evidenced by
their duly authorized signatures set forth below.
MEDI-JECT CORPORATION BECTON, XXXXXXXXX AND COMPANY
By: /s/ Franklin Pass By: /s/ Xxxxxxxxx Xxxxxx
---------------------------- ----------------------------
Authorized Signature Authorized Signature
____________________________ ____________________________
Name & Title Typed Name & Title Typed
Date Signed: 2/8/99 Date Signed: 2/1/99
------------------- ------------------
17
