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EXHIBIT 10.4
LICENSE AGREEMENT
PORTIONS OF THIS DOCUMENT HAVE BEEN OMITTED (DESIGNATED BY AN ASTERISK (*) AND
WHITE SPACE) AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION
PURSUANT TO A REQUEST FOR CONFIDENTIAL TREATMENT DATED SEPTEMBER 29, 1997.
This agreement is made as of July 18, 1997, by and between
Swissray International Inc., New York, with European Center at Xxxxxxxxxxxxxxxx
0, XX-0000 Xxxxxxxxx, Xxxxxxxxxxx hereafter referred to as "Swissray"), and
Agfa-Gevaert X.X., Xxxxxxxxxxx 00, X-0000 Xxxxxxx, Xxxxxxx hereafter referred to
as "Agfa").
WHEREAS, Afga owns a computer program for enhancing the image
quality of digital radiographic images,
WHEREAS, Swissray wishes to license the above-mentioned
computer program for use in combination with its digital radiographic image
acquisition system, known as Digital Add-On Bucky,
WHEREAS, Agfa is willing to grant such license to Swissray on
the terms and conditions set forth herein,
NOW THEREFORE, in consideration of the mutual covenants and
premises set forth hereinafter, the parties agree as follows:
ARTICLE 1
DEFINITIONS
1.1 "AGFA SOFTWARE" shall mean the software program in
executable code as described in Exhibit A hereto.
1.2 "PRODUCT" shall mean the image acquisition system for
acquiring a digital image representation of a radiographic image developed and
marked by Swissray, and designated by the name "Digital Add-On Bucky".
1.3 "INFORMATION" shall mean any information in relation with
the AGFA SOFTWARE transferred by Agfa to Swissray during the term of the
agreement, including information in relation with the AGFA SOFTWARE transferred
during technical support. INFORMATION that Swissray can establish by its written
records was in its possession at the time it was first disclosed by Agfa to
Swissray, was in the public domain at the time it was disclosed by Agfa to
Swissray or is obtained by Swissray from a third party, who has same in good
faith and has the right to pass it on to Swissray, is excluded.
1.4 "EFFECTIVE DATE" shall mean the date of the last of the
parties to sign the agreement.
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ARTICLE 2
LICENSE/DELIVERY
2.1 Agfa hereby grants to Swissray a worldwide, non-exclusive,
non-transferable license, during the term of this agreement to use and
distribute the AGFA SOFTWARE in combination with the PRODUCT.
2.2 Swissray shall not have the right to make any
modifications to the AGFA SOFTWARE except as required for its adaption to the
PRODUCT.
2.3 Swissray shall not have any right to sublicense such
rights to a third party other than an end user of the product.
2.4 No rights or obligations of Swissray out of this Agreement
shall be transferable without prior written consent of Agfa. The same applies in
the case of universal legal succession or acquisition of the share capital of
Swissray by third parties.
2.5 Agfa agrees to deliver the AGFA SOFTWARE within 6 weeks
after the EFFECTIVE DATE.
ARTICLE 3
PROPRIETARY RIGHTS
3.1 Swissray acknowledges that Agfa is and remains the sole
and exclusive owner of all rights, title and interest, including all trademarks,
copyrights, patents, trade names, trade secret and other intellectual property
rights to the AGFA SOFTWARE. Except for the rights expressly granted herein,
Swissray is not granted any rights to patents, copyright, trade secrets, trade
names, trademarks (whether or not registered) or any other right with respect to
the AGFA SOFTWARE. Swissray agrees not to use Agfa trade names with regard to
the PRODUCT or with regard to the AGFA SOFTWARE used in combination with the
PRODUCT.
3.2 Swissray agrees to treat the AGFA SOFTWARE and any
information disclosed in relation with this agreement as confidential and to use
such information only in accordance with the terms of this agreement. Swissray
agrees to disclose the AGFA SOFTWARE only to authorized employees who has the
need to use them as permitted under this agreement and have agreed to be bound
by the obligation of confidentiality and to take all reasonable measures to
prevent disclosure to other parties, including any affiliate companies.
3.3 Swissray agrees that it will not reverse engineer, reverse
assemble, or dissemble or otherwise attempt to create software which is
derivable from the AGFA SOFTWARE.
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3.4 Neither party shall disclose the existence or the
agreement except pursuant to mutual agreement or as otherwise required by law.
ARTICLE 4
WARRANTY
4.1 The above license is granted on an 'AS IS' basis without
explicit or implied warranty.
4.2 If (a) the AGFA SOFTWARE fails to perform substantially in
accordance with the specifications set forth in Exhibit A hereto during the
period beginning upon delivery of the AGFA SOFTWARE and ending ninety (90) days
thereafter (the "Warranty period"); (b) such failure is reproducible; and (c)
such failure is reported to Agfa during the Warranty period, then Agfa shall, at
its expense, provide a workaround for such failure or, at Agfa's option, provide
Swissray with an updated version of the AGFA SOFTWARE which does not cause such
failure.
This warranty shall apply to a failure for which Swissray
proves that it originates from AGFA SOFTWARE. The warranty shall not apply to
any software by Swissray, or to any failure caused by hardware or software not
provided by Agfa.
4.3 Agfa acknowledges that to the best of its knowledge the
AGFA SOFTWARE does not infringe and intellectual property rights of third
parties. At present no litigation issues are pending in this respect nor the
Agfa received any warning letters or the like.
ARTICLE 5
LIMITATION OF LIABILITY
5.1 The foregoing warranties by Agfa are made only to Swissray
and Swissray shall be solely responsible for any warranty to, to claims by its
end user customers concerning the Software.
5.2 The foregoing states Agfa's sole and exclusive obligation
to Swissray for breach of warranty. Except for the express warranties stated in
this Agreement, Agfa makes no additional warranties, express, implied or
statutory, as to any matter whatsoever. In particular, any and all warranties of
merchantability or fitness for a particular purpose are expressly excluded.
ARTICLE 6
SUPPORT
6.1 Agfa agrees to provide Swissray with support pertaining to
the operation of the AGFA SOFTWARE and the implementation of the AGFA SOFTWARE
in the PRODUCT. The following services fall outside the scope of this agreement:
support concerning
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items excluded from the definition of the AGFA SOFTWARE see exhibit A,
non-recurrent engineering.
6.2 Support shall be provided on request and at the expense of
Swissray within a period of three months after delivery of the AGFA SOFTWARE.
6.3 During this support period Agfa shall provide support
services to a maximum of 15 man day, which may be combined. Support will be
provided by written or telephone consultation or on site at Swissray's premises.
6.4 Support shall be charged at per
hour. Swissray agrees to pay actual travel, board and lodging costs and expenses
reasonably incurred by Agfa.
ARTICLE 7
PAYMENT, REPORTS AND RECORDS
7.1 The parties agree that the following royalty terms shall
apply:
- a fixed royalty of [ * ] shall be payable per
undivisable number of 100 copies of the AGFA SOFTWARE for
use in combination with the PRODUCT.
- a discount rate shall apply for copies in excess of the
first 100 copies.
7.2 Initial payment of [ * ] for the first 100 copies of
the AGFA SOFTWARE shall be executed in three installments as follows:
a) [ * ] to be paid upon delivery of the AGFA SOFTWARE,
b) [ * ] to be paid within 3 months from the date of
delivery,
c) [ * ] to be paid within 6 months from the date of
delivery.
7.3 The royalties for each further undivisable set of 100
copies of the AGFA SOFTWARE in excess of the first set of 100 copies, shall be
the following:
[ * ] for each further set of 100 copies (copies greater
than 100)
Payment for each further set of 100 copies shall be executed as
follows:
[ * ] to be paid upon delivery of a further set,
[ * ] to be paid within 3 months from the date of delivery,
[ * ] to be paid within 6 months from the date of delivery.
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7.4 All payment to Agfa provided herein shall be made in DEM
by transfer to an account of Agfa to be designated in writing.
7.5 Swissray shall, during the continuance of this agreement,
maintain a full and accurate record of the number of PRODUCTs provided with the
AGFA SOFTWARE in such terms to enable Agfa to ascertain what royalties are due
under this agreement.
7.6 So as to permit verification, Swissray shall permit such
records to be examined by an independent certified public accountant selected by
Agfa on reasonable advance notice, during normal business hours at reasonable
intervals no more frequently than once per year.
7.7 All costs and expenses for such an audit shall be borne by
Agfa, except in those cases, in which the examining accountant ascertains a
discrepancy of more than five percent during the audited period to the
disadvantage of Agfa between payments actually made and payments due, in which
case Swissray shall bear all costs and expenses for such audit.
ARTICLE 8
TERM OF THE AGREEMENT
8.1 The term of this agreement is 2 years from the EFFECTIVE
DATE, unless earlier terminated as provided in this Agreement.
ARTICLE 9
TERMINATION
9.1 If any material breach of this agreement by the defaulting
party continues after 30 days written notice of said breach by the aggrieved
party, the aggrieved party may terminate the agreement on written notice to the
defaulting party.
9.2 In addition to any breach of this Agreement, the
application for, or adjudication in bankruptcy by Swissray, or the dissolution
of Swissray shall terminate this agreement.
9.3 Upon termination or expiration of this Agreement, Swissray
shall continue to be responsible for the confidentiality of the INFORMATION and
the proprietary rights of Agfa. End users shall be permitted the continued and
uninterrupted use of the AGFA SOFTWARE.
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ARTICLE 10
MISCELLANEOUS
10.1 This agreement shall be governed by the laws of France.
Any conflicts arising out of this Agreement shall be brought before the courts
of Paris.
10.2 Notices, statements, or other communications required or
permitted by the present agreement shall be in writing and sent by airmail or
telefax to the parties at their respective addresses set forth below:
In case of Swissray to Swissray International Inc.
European Center
Xx. Xxxxxx
Xxxxxxxxxxxxxxxx 0
XX - 0000 Xxxxxxxxx
In case of Agfa to
- for commercial and technical matters: Agfa-Gevaert N.V.
Medical Division
Telefax: 00 32 3 444 74 95
- for legal matters: Dienst Intellectuele Eigendom
Telefax: 00 32 3 444 74 98
Agfa-Gevaert X.X.
Xxxxxxxxxxx 00
X - 0000 Xxxxxxx
Belgium
10.3 Nothing contained herein shall be construed as creating
an agency, partnership or other form of joint enterprise between the parties.
10.4 The following Exhibits are attached to and made a part of
this Agreement: Exhibit A.
10.5 The present Agreement including all Exhibits attached
hereto constitutes the entire agreement between the parties hereto with respect
to the subject matter hereof and supersedes all previous communications,
representations, understandings and agreements, either oral or written, between
the parties or any official or representative thereof, with respect to said
subject matter.
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IN WITNESS WHEREOF, the parties hereto have caused the present
instrument to be signed in duplicate, by their duly authorized representatives,
all as of the day and year first above written, each party mentioned at the
beginning of the present Agreement obtaining a signed copy.
Agfa-Gevaert N.A., Mortsel, , 1997
Xxxxxxx Xxxxxxx X.X. Xxxxxxxxx
General Manager General Manager
Information & Intellectual MED-Division
Property Department
SWISSRAY INTERNATIONAL INC., New York
European Center
Xxxxxxxxxxxx 0, 0000 Xxxxxxxxx/Xxxxxxxxxxx
Xxxxx X. Xxxxxxx
President & Chairman CEO
Dr. Med. Xxxxx Xxxxxx
Vice President
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