EXHIBIT 10.13
LICENSE AGREEMENT
THIS AGREEMENT, dated as of August 6, 1999, is between MediChem Research,
Inc., ("Licensee") a subsidiary of MCR Holdings Inc., and Regis Technologies
("Licensor").
WITNESSETH
WHEREAS, Licensor represents that it has applied for a provisional patent,
owns and controls know-how rights relating to the Licensed Technical Information
(hereinafter defined) that, among other things, may be useful in the field of
separation of molecules using selective adsorbents; and
WHEREAS, Licensee desires to receive, and Licensor desires to grant to
Licensee exclusive rights under such patents and to such technical information
in the Licensed Territory (hereinafter defined), and Licensee desires to accept
such rights, in accordance with the terms set forth below.
NOW, THEREFORE, intending to be legally bound, the parties hereby agree as
follows:
1. Definitions
1.1 "Licensed Patent" means the issued patent entitled "Methods for Screening
Chromatographic Adsorbents" (Application 60/070,887) filed on January 9, 1998
hereinafter defined in Exhibit A. The Licensed Patent shall include all
divisionals, continuations, continuations-in-part, re-examinations, and
reissues thereof.
1.2 "Licensed Technical Information" means unpublished research and
development information, unpatented inventions, know-how, trade secrets, and
technical data relevant to the Licensed Patent and in the possession of
Licensor or any of its Affiliates (hereinafter defined) at the Effective Date
of this Agreement.
1.3 "Exclusive License" means a license granting Licensee the right to make,
use and sell the Licensed Products (hereinafter defined), to the exclusion of
all other parties including Licensor.
1.4 "Licensed Products" means any products derived from the use of the
Licensed Patent.
1.5 "Licensed Territory" means all the countries of the world.
1.6 "Affiliate" means, with respect to each party, any corporation or other
legal entity that directly or indirectly controls, is controlled by, or is
under common control with, the party, but only for so long as said control
continues. For purposes of this definition, "control" means the power, whether
or not normally exercised, to direct the management and affairs of another
corporation or other legal entity, directly or indirectly, whether through the
ownership of voting securities, by contract or otherwise. In the case of a
corporation, the direct or indirect ownership of fifty percent (50%) or more
of its outstanding voting shares shall in any case be deemed to confer
control, provided that the direct or indirect ownership of a lower percentage
of such securities shall not necessarily preclude the existence of control.
1.7 "Effective Date" shall mean the date upon which both parties sign the
agreement.
1.8 "Net Sales" shall mean the total gross receipts for sales of Licensed
Products or practice of Licensed Process by or on behalf of Licensee or its
sublicensees, and from selling, leasing, renting or
otherwise making Licensed Products available to others whether invoiced or
not, less returns and allowances actually granted in the normal course of
trading, packing costs, insurance costs, freight out, taxes or excise duties
imposed on the transaction (if separately invoiced), and wholesale and cash
discounts in amounts customary in the trade. No deductions shall be made for
commissions paid to individuals, whether they be with independent sales
agencies or regularly employed by Licensee, or sublicensee, and on its
payroll, or for the cost of collections.
2. Confidentiality
2.1. Licensee will hold Licensor's Confidential Information in the strictest
confidence using such reasonable measures as it uses to protect the
confidentiality of similar information belonging to it. All written (or
otherwise recorded) originals and copies of confidential information must be
returned to Licensor with the exception of one copy being reserved for file
purposes only. The parties will use Confidential Information solely to
perform the activities under this Agreement and will disclose Confidential
Information only to their employees or contractors with a need to know such
information. Notwithstanding the other provisions of this Agreement, nothing
received by Licensee shall be considered Licensor's Confidential Information
which (a) is now available or becomes available to the public without breach
of this Agreement, (b) is released in writing by Licensor, (c) is lawfully
obtained from a third party or parties, (d) is known to the Licensee prior to
such disclosure, or (e) is at any time developed by Licensee independent of
such disclosure. Licensor further agrees to release Licensee from any duty of
confidentiality after seven (7) years have expired from the time of
termination of the agreement.
3. Warranty of Title
3.1. Licensor represents and warrants it is the sole owner of the Licensed
Patent and the Licensed Technical Information, and that it has the right to
grant the License described in this Agreement.
4. License Grant
4.1 Licensor grants to the Licensee an exclusive license to use the Licensed
Patent and assign the Licensed Technical Information in the Licensed
Territory. Licensor further agrees to grant to Licensee upon issuance of the
Licensed Patent, an exclusive license under the Licensed Patent to make, use,
and sell the Licensed Products, in and into the Licensed Territory. Licensee
shall have the right to sublicense, in part or in whole, the Licensed Patent
or Licensed Technical Information to parties who are bound by confidentiality
terms at least as strong as in this Agreement. Licensor shall, within thirty
(30) days of the effective date of this Agreement make available to Licensee
for its use the Licensed Technical Information in Licensor's possession
needed to make the Licensed Products.
4.2 Licensor agrees to keep Licensee fully and promptly informed of the
status of the prosecution of the Licensed Patent and consult with Licensee on
all aspects of the prosecution of this application.
5. Patent Infringement
5.1 In the event of third party infringement of the Licensed Patent in the
Licensed Territory, the parties will develop a mutually acceptable plan for
abatement of the infringement and shall contribute toward attorney's fees and
costs in proportion to the loss of royalties or profits being caused by the
infringement. In any lawsuit for infringement, both parties shall be named as
plaintiffs, Licensor shall control all aspects of the lawsuit, and any award
or settlement shall be divided in proportion to each party's loss of
royalties or profits.
6. Technical Assistance by Licensor
6.1 Licensor will provide consulting services related to process described
in Exhibit A upon reasonable request of Licensee.
7. Indemnification
7.1 Licensee agrees to defend, indemnify, and hold Licensor harmless
against all claims and actions as a result of any sales, property damage, or
personal injury sustained by Licensee, its employees, or other third
parties, as a result of use of the Licensed Patent or the Licensed Technical
Information. Licensee will carry adequate product liability insurance.
8. Payments & Royalties
8.1 MediChem will pay Regis an up-front payment of $75,000 to be paid in
equal installments over a six (6) month period. In addition, MediChem will
pay Regis $25,000 upon successful funding of the SBIR grant.
8.2 MediChem will pay Regis a royalty of four percent (4%) of all Net Sales
of MediChem's chiral phase kit, lead follow-on libraries and consulting
services in regard to the Licensed Technical Information until the Licensed
Patent is issued. Upon issuance of the Licensed Patent MediChem will pay
Regis a royalty of six percent (6%) of all Net Sales of MediChem's chiral
phase kit and lead follow-on libraries.
8.3 If MediChem invents a novel chiral stationary phase that can be
developed into a commercialized product, Regis agrees to pay MediChem a
royalty rate of eight percent (8%) of Net Sales for any use for analytical
purposes, six percent (6%) for any use in prep columns larger than 1
centimeter or loose packing material, and three percent (3%) for any use as
materials.
9. Right of First Refusal
9.1 MediChem agrees to provide Regis with the right of first refusal to all
rights to large scale production of chiral stationary phases. Regis agrees
that if it accepts a large scale project, it will pay MediChem a royalty of
four percent (4%) before issuance of the Licensed Patent and six percent
(6%) after issuance of the Licensed Patent on all Net Sales. Regis agrees
that if it refuses to accept such a project, MediChem regains rights to
large-scale production of the chiral stationary phases.
10. Intellectual Property
10.1 Regis agrees that MediChem will own all of the intellectual property
rights that arise from MediChem inventions in connection with the chiral
stationary phases. MediChem agrees to xxxxx Xxxxx a non-exclusive license to
use any and all of these inventions.
11. Promotions and Marketing
11.1 Both parties agree that, in promotions and marketing of the technology,
MediChem and Regis will use their names in conjunction with one another.
12. SBIR Funding
12.1 Regis agrees to transfer all necessary materials and rights to MediChem
to apply for Phase II SBIR funding.
13. Term and Termination
13.1 The term of this Agreement shall last for a period of five (5) years
from the Effective Date unless the Agreement is terminated for reasons
provided below. At the end of five (5) years the Licensee shall have the
option to renew the Agreement for a period of five (5) years unless earlier
terminated by one or more of the following events:
1. The mutual, written agreement of the Parties to terminate the
Agreement;
2. If a party to this Agreement makes a material breach of any provision
herein, the non-breaching party will, in writing, provide the breaching
party thirty days (30) to cure the breach.
If not cured within the thirty day period, the non-breaching party can, in
writing, terminate this Agreement; or
3. The failure of the Licensed Patent to issue and thirty (30) days
written notice by the Licensee will result in the termination of this
Agreement.
4. The filing for bankruptcy, the acquisition, or the sale of a party to
this Agreement will result in the termination of this Agreement.
14. Applicable Law
14.1 The applicable law governing any cause of action arising out of this
Agreement, or the performance by a party hereto, shall be governed by the
laws of the State of Illinois, USA.
15. Severability
15.1 If any one or more of the provisions of this Agreement shall be held to
be invalid, illegal or unenforceable, the validity, legality or
enforceability of the remaining provisions of this agreement shall not in
any way be affected or impaired thereby.
16. Miscellaneous
16.1 Regis agrees that it will provide Regis manufactured commercialized
columns for MediChem for column screening purposes if applicable.
16.2 Nothing contained herein, or done in pursuance of this Agreement, shall
constitute the parties as entering into a legal partnership, joint venture,
or any other business entity or business relationship other than that
expressly described in this Agreement, or shall constitute a party hereto
the agent for the other party for any purpose or in any sense whatsoever.
This Agreement embodies the entire understanding of the parties with respect
to the subject matter contained herein and shall supersede all previous
communications, representations or understandings, either oral or written,
between the parties relating to the subject matter hereof. No amendment or
modification of this Agreement shall be valid or binding upon the parties
unless signed by their respective duly authorized officers.
IN WITNESS WHEREOF, each of the parties hereto has caused this Agreement to be
executed by its duly authorized officer or representative as of the date set
forth below.
Regis Technologies, Inc. MediChem Research, Inc.
______________________ _______________________
Signature Xxxx X. Xxxxxx
Vice President of Operations
______________________
Title
______________________ _______________________
Date Date
