AMENDED AND RESTATED TECHNOLOGY LICENSE AGREEMENT
EXHIBIT
10.19
AMENDED
AND RESTATED
This
AMENDED
AND RESTATED TECHNOLOGY LICENSE AGREEMENT (the
“Agreement”)
is
made and entered into on January 12, 2006 by and among OSMOTEX
AS,
a
Norwegian corporation (“Licensor”),
OSMOTEX
USA, INC., a
Florida
corporation (“Licensee”)
and
IQ
MICRO INC. (formerly
IQ Medical Corp.),
a
Colorado corporation (“Sublicensee”).
RECITALS
WHEREAS,
Licensor and Licensee entered into that certain Technology License Agreement
dated June 2005 (the “Original
Agreement”)
and
now desire to amend and restate the terms and conditions of their license
arrangement; and
WHEREAS,
Licensor and Licensee now desire to amend and restate the terms and conditions
of their license arrangement to include a sublicense provision and terms and
conditions thereof; and
WHEREAS,
Licensor owns all of the rights, title and interest in and to certain technology
and intellectual property (the “Technology”)
as
described on Exhibit
A hereto;
and
WHEREAS,
subject
to and in accordance with the terms and conditions of this Agreement, Licensor
desires to grant to Licensee, and Licensee desires to obtain from Licensor,
the
right and license to utilize the Technology as specifically provided in this
Agreement; and
WHEREAS,
subject
to and in accordance with the terms and conditions of this Agreement, Licensee
desires to grant to Sublicensee, and Sublicensee desires to obtain from
Licensee, the right and sublicense to utilize the Technology as specifically
provided in this Agreement.
NOW,
THEREFORE, in
consideration of the foregoing recitals and the covenants, representations,
warranties and agreements set forth in this Agreement, and other good and
valuable consideration, the receipt and sufficiency of which are hereby
acknowledged, Licensor, Licensee and Sublicensee, intending to be legally bound,
hereby agree as follows:
1. TERM
OF AGREEMENT.
This
Agreement shall commence upon the date first written above and shall continue
in
full force and effect
indefinitely until terminated pursuant to the provisions of this
Agreement
(the
“Term”).
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2. GRANT
OF LICENSE.
2.1 Recitals.
The
recitals set forth above are hereby incorporated herein by reference. The
Original Agreement is hereby superseded, in its entirety, by this
Agreement.
2.2 Grant
of License to Licensee.
Licensor hereby grants to Licensee an exclusive, irrevocable, royalty-free,
fully paid-up, non-transferable, indivisible, perpetual right and license,
throughout the world, subject to the terms of this Agreement, to (a) use,
market, research, develop, modify, sell and have sold the Technology, (b) use,
copy, execute, reproduce, translate, modify, improve, adapt, enhance, display,
perform, and otherwise commercially exploit, in any medium or distribution
technology whatsoever, whether known or unknown, the Technology and the
Intellectual Property Rights (as defined below), in connection with Technology,
in furtherance of the foregoing rights, and (c) sublicense any and all of the
rights herein granted to IQ Micro Inc. (formerly IQ Medical Corp.), located
at
000 Xxxxxxxxxx Xxxxxx, Xxxxx 000, Xxxx Xxxx Xxxxx, Xxxxxxx, 00000.
2.3 Grant
of Sublicense to Sublicensee.
Licensee hereby grants to Sublicensee an exclusive, irrevocable, royalty-free,
fully paid-up, non-transferable, indivisible, perpetual right and license,
throughout the world, subject to the terms of this Agreement, to (a) use,
market, research, develop, modify, sell and have sold the Technology, (b) use,
copy, execute, reproduce, translate, modify, improve, adapt, enhance, display,
perform, and otherwise commercially exploit, in any medium or distribution
technology whatsoever, whether known or unknown, the Technology and the
Intellectual Property Rights (as defined herein), in connection with Technology,
in furtherance of the foregoing rights, and (c) sub-sublicense the Technology
to
any other party or parties in its sole discretion. The Sublicensee shall not
be
required to notify or obtain the consent of the Licensee or the Licensor in
connection with any such sub-sublicense by the Sublicensee.
2.4 Ownership.
Licensor owns and shall at all times continue to own all rights, title and
interest in and to the Technology, including, without limitation, all
Intellectual Property Rights related to the Technology, and nothing contained
in
or arising out of this Agreement shall in any way limit or reduce Licensor’s
ownership rights in the Technology or the Intellectual Property Rights.
Derivative works related to or arising from the Technology resulting from
Sublicensee’s independent research and development or at Sublicensee’s expense
(the “Derivative
Works”)
shall
be owned by the Sublicensee.
2.5 Intellectual
Property Rights.
“Intellectual
Property Rights”
means
any and all now known or hereafter known or discovered tangible and intangible:
(i) rights associated with works of authorship throughout the universe,
including, but not limited to, copyrights, moral rights and mask-works; (ii)
trademark and trade name rights and similar rights; (iii) trade secret rights;
(iv) patents, designs, algorithms and other industrial property rights; (v)
all
other intellectual and industrial property rights of every kind and nature
throughout the universe, however named or designated, including, without
limitation, all characters, artwork, graphics, audio-visual components,
recordings, films, photographs and or materials related to the Technology;
and
(vi) all registrations, initial applications, renewals, extensions,
continuations, divisions or reissues of the above, whether now or hereafter
in
force.
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Patent
Filing and Maintenance and Intellectual Property Rights
Development.
Licensor shall be responsible at its own expense for the preparation, filing,
prosecution maintenance and renewal of all patent applications and patents
within the Technology and arising out of, related to or in connection with
any
new patent development and applications, including, but not limited to,
microfluidics technology patents and Patent Cooperation Treaty application
PCT/NO 03/00246 "Microfluidic
Actuator,"
Priority
date: 030715 and Patent Cooperation Treaty application PCT/NO 03/00247
"Fabric
Material With Improved Liquid Transport,"
Priority
date: 030715. Licensor shall, in a timely manner, keep the Licensee and
Sublicensee informed in writing of the progress of all patent applications
within the Technology and arising out of, related to or in connection with
any
new patent development and applications, including but not limited to,
microfluidics technology patents and Patent Cooperation Treaty application
PCT/NO 03/00246 "Microfluidic
Actuator,"
Priority
date: 030715 and Patent Cooperation Treaty application PCT/NO 03/00247
"Fabric
Material With Improved Liquid Transport,"
Priority
date: 030715, and shall give the Licensee and Sublicensee reasonable opportunity
to comment on the type and scope of useful claims, patent filings, and
prosecution strategy. Licensor shall promptly so verify in writing to Licensee
and Sublicensee all renewals, maintenance and payment of all such costs.
Licensor shall promptly notify Licensee and Sublicensee of any new intellectual
property that is created after the date of this Agreement, including, but not
limited to new Intellectual Property Rights.
2.6 Public
Disclosure.
Licensor shall at all times during and after the Term have complete control
over
any materials or documents (including, without limitation, advertising and
publicity materials) that in any way refer to the Technology or the Intellectual
Property Rights, and Licensee and Sublicensee shall present all such materials
and documents to Licensor for approval (which shall not be unreasonably
withheld) within a reasonable period of time prior to Licensee’s and
Sublicensee’s proposed use or dissemination of such materials or
documents.
2.7 Section
365(n) of The Bankruptcy Code.
All
rights and licenses granted under or pursuant to this Agreement by Licensor
to
Licensee (including the license) and all rights granted under or pursuant to
this Agreement by Licensee to Sublicensee (including the sublicense) are, and
shall otherwise be deemed to be, for the purposes of Section 365(n) of the
United States Bankruptcy Code (the “Bankruptcy
Code”),
licenses to rights in “intellectual property” as defined under the Bankruptcy
Code. As licensee of such rights under this Agreement, Licensee shall retain
and
may fully exercise all of its rights and elections under the Bankruptcy Code.
As
sublicensee of such rights under this Agreement, Sublicensee shall retain and
may fully exercise all of its rights and elections under the Bankruptcy Code.
Upon the event of the commencement of bankruptcy proceedings by or against
Licensor under the Bankruptcy Code, Licensee shall be entitled to retain all
of
its rights under this Agreement or any agreement supplementary to this Agreement
(including the license). Upon the event of the commencement of bankruptcy
proceedings by or against Licensee under the Bankruptcy Code, Licensee shall
be
deemed as licensor for the purposes of Section 365(n) of the Bankruptcy Code
thereby permitting sublicensee to retain and fully exercise all of the
protections and rights of Section 365(n) of the Bankruptcy Code and Sublicensee
shall be entitled to retain all of its rights under this Agreement or any
agreement supplementary to this Agreement (including the sublicense).
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2.8 Delivery
of Technology.
Upon
execution of this Agreement, Licensor shall deliver to Licensee all necessary
materials and information constituting the Technology and Licensee shall deliver
to Sublicensee all necessary materials and information constituting the
Technology.
3. INDEMNIFICATION.
Licensor and Licensee will, at their respective expense, defend, indemnify
and
hold each other and Sublicensee and all of the other’s and Sublicensee’s
respective shareholders, directors, officers, members, employees, affiliates,
consultants, independent contractors and agents harmless from any and all loss,
demand, damages, suit, judgment, claim, liability, costs or expenses incurred
of
any kind whatsoever, including attorneys’ fees and expenses or cause of action
brought against the other or Sublicensee that results, directly or indirectly,
from or arise out of or related to or is attributable to Licensor’s, Licensee’s
or Sublicensee’s use of the Technology or the Intellectual Property Rights such
as patent, trade secret, trademark and copyright infringement; and provided
further, that Licensor and Licensee shall indemnify and hold harmless
Sublicensee and its respective shareholders, directors, officers, members,
employees, affiliates, consultants, independent contractors and agents harmless
from any and all loss, demand, damages, suit, judgment, claim, liability, costs
or expenses incurred of any kind whatsoever, including attorneys’ fees and
expenses or cause of action brought against the other or Sublicensee that
results, directly or indirectly, from or arise out of or related to or is
attributable to Sublicensee’s sub-sublicense of the Technology. Licensee or
Licensor shall indemnify, defend, and hold harmless the other and Sublicensee
and their respective successors, shareholders, directors, officers, members,
employees, affiliates, consultants, independent contractors and agents, from
and
against any and all loss, demand, damages, suit, judgment, claim, liability,
costs or expenses incurred of any kind whatsoever, including attorneys’ fees and
expenses or cause of action brought against the other or Sublicensee that
results, directly or indirectly, from or arise out of or related to or is
attributable to: (i) fraud, negligence, recklessness, willful misconduct or
omission of the Licensee or Licensor, its employees, affiliates, agents,
consultants, subcontractors or independent contractors; (ii) infringement or
misappropriation of any intellectual property right of any third party; (iii)
product liability, death or bodily injury and property damage (real and
personal) in connection with this Agreement and the Technology, Intellectual
Property Rights and sub-sublicenses; and (iv) Licensee’s, Licensor’s or
Sublicensee’s breach of any obligations in this Agreement, including breach of
the confidentiality provisions of this Agreement.
3.1 Notice.
A party
seeking indemnification pursuant to this Section 3 (an “Indemnified
Party”)
from
or against the assertion of any claim by a third person (a “Third
Person Assertion”)
shall
give prompt written notice to the party from whom indemnification is sought
(the
“Indemnifying
Party”);
provided however, that failure to give prompt notice shall not relieve the
Indemnifying Party of any liability hereunder (except to the extent the
Indemnifying Party has suffered actual material prejudice by such
failure).
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3.2 Assumption
of Defense.
Within
ten business days of receipt of notice from the Indemnified Party pursuant
to
Section 3.3 hereof, the Indemnifying Party shall have the right exercisable
by
written notice to the Indemnified Party, to assume the defense of a Third Person
Assertion. If the Indemnifying Party assumes such defense, the Indemnifying
Party may select counsel, which shall be reasonably acceptable to the
Indemnified Party.
3.3 Failure
to Defend.
If the
Indemnifying Party (a) does not assume the defense of any Third Person Assertion
in accordance with Section 3.4 hereof; or (b) having so assumed such defense,
unreasonably fails to defend against such Third Person Assertion, then upon
ten
days written notice to the Indemnifying Party, the Indemnified Party may assume
the defense of such Third Person Assertion. In such event, the Indemnified
Party
shall be entitled under this Section 3 as part of its damages to indemnification
for the costs of such defense.
3.4 Conflicts
of Interest.
If the
Indemnifying Party has been advised by the written opinion of counsel to the
Indemnified Party that the use of the same counsel to represent both the
Indemnified Party and the Indemnifying Party would present a conflict of
interest, then the Indemnified Party may select its own counsel to represent
the
Indemnified Party in the defense of the matter and the costs of such defense
shall be borne by the Indemnifying Party. The Indemnifying Party shall be
entitled to continue to handle its own representation in such matter through
its
own counsel.
3.5 Settlement.
The
party controlling the defense of a Third Person Assertion shall have the right
to consent to the entry of judgment with respect to, or otherwise settle, such
Third Person Assertion with the prior written consent of the other party, which
consent shall not be unreasonable withheld.
3.6 Participation.
The
Indemnifying Party and the Indemnified Party shall cooperate, in the defense
or
prosecution of any Third Person Assertion. The Indemnified Party shall have
the
right to participate, at its own expense, in the defense or settlement of any
Third Person Assertion.
3.7 Unauthorized
Modifications.
The
indemnification obligation of this Section 3 shall not apply to any claim
arising out of the Licensee’s or Sublicensee’s modification of the Technology
not authorized by the Licensor, to the extent that alleged infringement would
have been avoided absent such modification.
4. LICENSE
FEES.
4.1 License
Fee.
In
consideration for the foregoing license and the rights granted to Licensee
hereunder, Licensee issued to Licensor one hundred shares of Licensee’s $0.001
par value per share common stock.
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4.2 Sublicense
Fee.
In
consideration for the foregoing sublicense and the rights granted to Sublicensee
hereunder, (1) Sublicensee acknowledges that it issued, and Licensor and
Licensee acknowledge the Licensee’s receipt of, 42,670,000 shares of
Sublicensee’s $0.0001 par value per share common stock and (2) Sublicensee made
payment of a license fee in the amount of $300,000 (the “License
Fee”)
of
which Licensee and Licensor hereby acknowledge receipt and further acknowledge
that Sublicensee did pay the License Fee in full.
5. TAXES.
Licensor, Licensee and Sublicensee shall cooperate to more accurately determine
and minimize their respective tax liability. Each party will provide tax
information or tax documents reasonably requested by another party. Each party
will promptly notify the other parties of any claim for taxes asserted with
respect to this Agreement by a taxing authority with jurisdiction over either
party. With respect to any claim arising out of a tax form or return signed
by a
party to this Agreement, the signing party may control the response to and
settlement of the claim, but the other parties may participate to the extent
each may be liable.
6. PROPRIETARY
INFORMATION.
Licensee and Sublicensee acknowledge that, with the exception of the Derivative
Works, Licensor is the owner of the Intellectual Property Rights embodied in
or
otherwise related to the design and development of the Technology. Licensee
and
Sublicensee covenant acknowledge and agree that, with the exception of the
Derivative Works, by entering into this Agreement, Licensee and Sublicensee
do
not acquire any right, title, or interest in or to the Technology or the
Intellectual Property Rights or any technologies used in the same except as
granted by this Agreement. Licensee and Sublicensee covenant and agree that
they
shall not make any use of the Intellectual Property Rights or Technology except
as expressly permitted by this Agreement. Licensee and Sublicensee shall
promptly notify Licensor of any actual, threatened or suspected infringement
of
the any Intellectual Property Rights of Licensor that is known or should
reasonably be known by Licensee or Sublicensee.
7. INFRINGEMENT
OF THE LICENSED PATENTS BY THIRD PARTIES.
7.1 Notice.
Each
party shall notify the other parties within thirty days of obtaining knowledge
of a possible infringement of the Technology or Intellectual Property
Rights.
7.2 Licensor
Sole Right.
Licensor shall have the sole right, but not the obligation, at its own expense,
to take all steps that, in Licensor’s sole discretion, are necessary or
appropriate to protect and to enforce any of the Technology and Intellectual
Property Rights including the initiation of legal proceedings against any third
party who has infringed or ever infringes any Technology and Intellectual
Property Rights. Any damage, cost, award fee, recovery, or compensation paid
by
any third party in connection with any proceeding initiated or carried on at
Licensor expense (whether by way of settlement or otherwise) shall be retained
by Licensor. Licensor shall not enter into any settlement, consent judgment,
or
any other voluntary final disposition of any infringement action under this
section without the prior written consent of Licensee and
Sublicensee.
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7.3 Licensee
and Sublicensee Right.
In the
event that Licensor elects not to initiate legal proceedings under Section
7.2,
Licensor shall provide prompt written notice of such to Licensee and Sublicensee
and (1) Licensee shall have the right, but not the obligation, to initiate
legal
proceedings against the infringer at Licensee’s sole expense, naming Licensor as
a party, if so required by law. In the event that Licensee elects not to
initiate such legal proceedings, Licensee shall provide prompt written notice
of
such to Sublicensee and Licensor and (2) Sublicensee shall have the right,
but
not the obligation, to initiate legal proceedings against the infringer at
Sublicensee’s sole expense, naming Licensor and Licensee as parties, if so
required by law. Licensor and Licensee agree to become a named party of such
legal proceedings if so requested by Licensee or Sublicensee, as applicable
and
appropriate. Any damage, cost, award fee, recovery, or compensation paid by
any
third party in connection with any proceeding initiated or carried on at
Licensee’s or Sublicensee’s expense pursuant to this section (whether by way of
settlement or otherwise) shall be retained by Licensee or Sublicensee, as
applicable (i.e. whomever initiated the proceeding). Licensee and Sublicensee
shall notify Licensor promptly in writing of any settlement, consent judgment,
or any other voluntary final disposition of any infringement action under this
section.
7.4 In
the
event that any party (“Initiating
Party”)
desires to initiate, initiates, or carries on any legal proceeding to enforce
or
to protect any of the Technology or Intellectual Property Rights under Sections
7.2 and 7.3, the other party (the “Non-initiating
Party”)
hereto
shall fully co-operate with and will supply all assistance reasonably requested
by the initiating party. The Initiating Party shall have sole control of the
proceeding and shall bear reasonable expenses (excluding legal fees) incurred
by
the Non-initiating Party in providing such assistance and cooperation as the
Initiating Party may request. The Non-initiating Party shall be entitled to
participate in any proceedings initiated or carried on by the Initiating Party
with counsel selected by it, but at its own expense.
8. TERMINATION.
8.1 Termination.
Sublicensee shall have the right to terminate this Agreement with thirty days
prior written notice to Licensor and Licensee. This Agreement and the rights
and
benefits granted to the Sublicensee in this Agreement and the rights and
benefits granted to Sublicensee by Licensor and Licensee arising out of, related
to, directly or indirectly, and in connection with this Agreement shall not
terminate or alter or be terminated or altered in the event that Licensee
becomes insolvent, dissolves, merges, enters into a business combination,
becomes bankrupt or otherwise ceases to exist, unless Sublicensee gives written
notice to Licensor or Licensee of such termination.
8.2 No
Liability Upon Termination.
Except
as specifically provided herein, none of the parties hereto shall be liable
by
reason of termination of the Term to the other parties hereto for compensation,
reimbursement or damages on account of the loss of prospective profits on
anticipated sales or on account of expenditures, investments, or leases of
Licensor, Licensee, Sublicensee or otherwise. Each party covenants and agrees
that it shall not file suit or bring an action seeking to impose such liability
or recover damages for any such claims.
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9. TERMINATION
EVENTS.
Licensor, Licensee and Sublicensee covenant and agree that upon the event of
Licensee’s dissolution, winding up, business combination (such as an
acquisition, merger, consolidation, reorganization, joint venture, sale or
purchase of all or a portion of its business or the business of another party)
or the commencement of bankruptcy proceedings by or against Licensee under
the
Bankruptcy Code (collectively, the “Termination
Events”),
all
parties hereto shall immediately take any and all actions necessary to terminate
the Agreement and any and all amendments thereto, and Licensor shall,
simultaneously with the occurrence of a Termination Event, enter into a new
Technology License Agreement by and between Licensor and Sublicensee
(“New
Agreement”)
dated
the same date as such Termination Event, provided that in the New Agreement:
(1)
IQ Micro Inc. as Sublicensee and text related thereto is deleted entirely,
(2)
Osmotex USA, Inc., as a party, as Licensee and text related thereto, is deleted
entirely, and (3) IQ Micro Inc. is defined as “Licensee” and as such becomes
Licensor’s direct licensee of the Technology and the Intellectual Property
Rights (replacing Osmotex USA, Inc. as Licensee). Notwithstanding the foregoing,
the New Agreement shall be identical to the Agreement and all amendments
thereto. The New Agreement shall also contain any deletions or additions that
are reasonably required to effect the intent of this Section 9.
10. REPRESENTATIONS
AND WARRANTIES.
10.1 Licensor
and Licensee each individually hereby represent and warrant that it is not
subject to any obligation that would prevent it from entering into this
Agreement and Licensor’s offer to provide the Technology and Intellectual
Property Rights to the Licensee and Licensee’s acceptance of such offer has in
no way caused or induced Licensor to breach any contractual obligation to any
party; and further, Licensee’s offer to provide the Technology and Intellectual
Property Rights to the Sublicensee and Sublicensee’s acceptance of such offer
has in no way caused or induced Licensee to breach any contractual obligation
to
any party.
10.2 Licensor
and Licensee each individually represent and warrant that there is no and at
no
time has there been any action, suit, claim investigation or proceeding pending,
or, to the best of its knowledge, threatened against, by or affecting it which
might affect: (a) its ability to enter into this Agreement; (b) its performance
of its obligations herein; or (c) Licensee’s and Sublicensee’s use of the
Technology or Intellectual Property Rights. Licensor and Licensee each
individually further represent and warrant that it does not know of any basis
for any such action. Licensor and Licensee shall promptly notify each other
and
Sublicensee if any of the foregoing types of litigation arises during the term
of this Agreement that might affect (i) Licensor’s or Licensee’s performance of
their respective obligations herein or (ii) Licensee’s or Sublicensee’s use of
the Technology or Intellectual Property Rights.
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10.3 Licensor
and Licensee each individually hereby represent and warrant that it has the
full
authority and power to enter into this Agreement.
10.4 Licensor
hereby represents and warrants that it is the lawful owner of the Technology
and
Intellectual Property Rights.
10.5 Licensor
and Licensee each individually hereby represent and warrant that it has the
full
right and authority to grant Licensee and Sublicensee, respectively, the rights
set forth in this Agreement and it is and will not be a party to any other
agreement or contractual arrangement which conflicts with this Agreement or
the
license and sublicense granted and contemplated in this Agreement; in
particular, and without limiting the generality of the foregoing, the Technology
and Intellectual Property Rights and the Licensee’s and Sublicensee’s use of the
Intellectual Property Rights and Technology in accordance with this Agreement
does not and will not infringe upon any other patent, copyright, trade secret,
trademark, service xxxx, or trade name of any third-party, or contain any
confidential or proprietary material misappropriated by the Licensor or
Licensee.
10.6 Licensor
and Licensee hereby represent and warrant that neither the Technology nor the
Intellectual Property Rights does or will violate any applicable law, rule,
or
regulation, and that Licensor and Licensee possess all permits and licenses
or
related approvals required to comply with such laws, rules, and regulations.
11. CONFIDENTIALITY.
All
information furnished to the parties under this Agreement shall be treated
as
confidential and each party shall take reasonable precautions to preserve the
confidentiality of this information until the termination of this Agreement.
If
this Agreement is terminated, each party shall return all documents and other
materials containing, reflecting and referring to such information, except
information, documents and other materials related to Derivative Works, and
shall take reasonable precautions to preserve the confidentiality of this
information. The parties’ obligations under this Agreement shall not apply to
any information which: (i) was already in its possession prior to the disclosure
thereof by the disclosing party, (ii) was then generally known to the public,
(iii) became known to the public through no fault of the receiving party or
any
of its agents or representatives, or (iv) was disclosed to a party to this
Agreement by a third party unaffiliated with any party to this Agreement who
was
not bound by an obligation of confidentiality.
12. MISCELLANEOUS.
12.1 Amendments.
The
provisions of this Agreement may be amended, modified, waived or supplemented
only by a written instrument duly executed by each party to this Agreement
and
making special reference to this Agreement.
12.2 Waivers.
The
failure or delay of any party at any time to require performance by another
party of any provision of this Agreement, even if known, shall not affect the
right of such party to require performance of that provision or to exercise
any
right, power or remedy under this Agreement. Any waiver by any party of any
breach of any provision of this Agreement should not be construed as a waiver
of
any continuing or succeeding breach of such provision, a waiver of the provision
itself, or a waiver of any right, power or remedy under this Agreement. No
notice to or demand on any party in any circumstance shall, of itself, entitle
such party to any other or further notice or demand in similar or other
circumstances.
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12.3 Severability.
If any
provision of this Agreement or any other agreement entered into pursuant hereto
is or becomes illegal, invalid or unenforceable in any respect under the law
of
any jurisdiction, neither the legality, validity or enforceability of the
remaining provisions of this Agreement nor the legality, validity or
enforceability of such provision under the law of any other jurisdiction shall
in any way be affected or impaired thereby. If any provision of this Agreement
may be construed in two or more ways, one of which would render the provision
invalid or otherwise voidable or unenforceable and another of which would render
the provision valid and enforceable, such provision shall have the meaning
which
renders it valid and enforceable. In the event that any court finally holds
that
any of the terms and other provisions contained in this Agreement constitute
an
unreasonable restriction, then the parties agree that the provisions of this
Agreement shall not be rendered void, but shall apply as to their time and
territory or to such other extent as such court may judicially determine or
indicate constitutes a reasonable restriction.
12.4 Jurisdiction
and Venue.
Any
legal proceeding or action arising out of or relating to this Agreement shall
be
brought in the appropriate state or Federal court located in Palm Beach County,
Florida. Each party consents to the jurisdiction of such Florida court in any
such civil action or legal proceeding and waives any objection to the laying
of
venue of any such civil action or legal proceeding in such court. Service of
any
court paper may be effected on such party by mail, as provided in this
Agreement, or in such other manner as may be provided under applicable laws,
rules of procedure or local rules.
12.5 Governing
Law.
This
Agreement and all transactions contemplated by this Agreement shall be governed
by, and construed and enforced in accordance with, the laws of the State of
Florida, without regard for principles of conflicts of law.
12.6 Specific
Performance as to Licensor.
Licensee acknowledges that Licensor shall be irreparably damaged (and damages
at
law would be an inadequate remedy) if Sections 2, 6 or 8 of this Agreement
are
not specifically enforced. Therefore, in the event of a breach or threatened
breach by Licensee of Sections 2, 6 or 8 of this Agreement, Licensor shall
be
entitled, in addition to all other rights and remedies, to injunctions
restraining such breach, without being required to show any actual damage or
to
post any bond or other security, and to a decree for specific performance of
the
provisions of said Sections.
12.7 Counterparts;
Faxed Signature Pages.
This
Agreement may be executed in one or more counterparts, each of which shall
be
deemed an original, but both of which taken together shall constitute one and
the same instrument. Confirmation of execution by electronic transmission of
a
facsimile signature page shall be binding upon any party so
confirming.
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12.8 No
Third Party Rights.
Unless
expressly stated in this Agreement to the contrary, nothing in this Agreement
is
intended to confer any rights or remedies under or by reason of this Agreement
on any persons other than the parties to this Agreement and their respective
successors, legal representatives and permitted assigns. Nothing in this
Agreement is intended to relieve or discharge the obligation or liability of
any
third persons to any party to this Agreement, nor shall any provision give
any
third persons any right of subrogation or action over or against any party
to
this Agreement.
12.9 No
Construction Against Draftsman.
The
parties acknowledge that this is a negotiated agreement, and that in no event
shall the terms of this Agreement be construed against any of the parties on
the
basis that such parties, or their respective counsel, drafted this
Agreement.
12.10 Survival.
All
covenants, agreements, representations and warranties made in this Agreement
or
otherwise made in writing by any party pursuant to this Agreement, including,
without limitation Sections 2, 6 and 8 shall survive the termination of this
Agreement.
12.11 Assignment.
Licensee and Sublicensee shall not assign this Agreement or any interest in
this
Agreement voluntarily, involuntarily, or by operation of law without Licensor’s
prior written consent, which may be reasonably withheld in Licensor’s sole
discretion. Licensor may assign its rights and obligations arising out of this
Agreement without Licensee’s and Sublicensee’s prior consent; provided, however,
Licensor must provide Licensee and Sublicensee with reasonable notice of such
assignment in writing.
12.12 Notices.
All
notices and other communications required or permitted under this Agreement
shall be in writing and shall be given by hand delivery or by nationally
recognized overnight delivery service (such as Federal Express, UPS, DHL or
USPS
Express Mail). All such notices and other communications shall be addressed
to:
|
Licensor:
Osmotex
AS
Contact:
Xxxxx Xxxxxxx
Solheimsgaten
16 A
N
-
5058 Bergen
Norway
|
11
|
Licensee:
Osmotex
USA, Inc.
c/o
Osmotex AS
Contact:
Xx. Xxxxxx Xxxxxxxxxxxx
Xxxxxxxxxxxxx
00X
0000
Xxxxxx, Xxxxxx
|
|
Sublicensee:
Contact:
Xxxxxx Xxxxxx
000
Xxxxxxxxxx Xxx., Xxx. 000
Xxxx
Xxxx Xxxxx, XX 00000
|
Each
such
notice shall be deemed delivered (i) on the date delivered, if by messenger
or
courier service delivery; (ii) on the date of the confirmation of receipt,
if by
fax; and (iii) on the date of receipt or the date delivery is refused by the
recipient, if by overnight delivery service.
12.13 Entire
Agreement.
This
Agreement and all exhibits and schedules attached to this Agreement, if any,
represent the entire understanding and agreement among the parties with respect
to the subject matter of this Agreement, and supersedes all other negotiations,
understandings and representations (if any), whether oral or written, made
by
and between such parties.
12.14 Limitation
of Liability.
Except
for each party’s indemnity rights and obligations under Section 3 of this
Agreement, and notwithstanding anything to the contrary contained herein, the
parties to this Agreement each waive, to the fullest extent permitted by law,
all claims against the other parties for indirect, incidental, special,
exemplary, punitive or consequential damages otherwise recoverable under
applicable laws arising in connection with this Agreement or the services to
be
provided under this Agreement, including, without limitation, damages resulting
from loss of profits or earnings. EXCEPT IN CONNECTION WITH CLAIMS FOR PHYSICAL
INJURIES, NO PARTY WILL BE LIABLE FOR (A) ANY SPECIAL, INCIDENTAL OR
CONSEQUENTIAL DAMAGES, OR (B) COMMERCIAL LOSS OF ANY KIND, INCLUDING LOSS OF
BUSINESS OR PROFITS, WHETHER BASED UPON BREACH OF WARRANTY, BREACH OF CONTRACT,
NEGLIGENCE, STRICT TORT OR ANY OTHER LEGAL THEORY, WHETHER OR NOT ADVISED OF
THE
POSSIBILITY OF SUCH DAMAGES.
12.15 Binding
Effect.
All of
the terms and provisions of this Agreement shall be binding upon, inure to
the
benefit of, and be enforceable by the parties and their respective legal
representatives, successors and permitted assigns, whether so expressed or
not.
12
12.16 Equitable
Remedies.
Each of
the parties acknowledges that the parties will be irreparably damaged (and
damages at law would be an inadequate remedy) if this Agreement is not
specifically enforced. Therefore, in the event of a breach or threatened breach
by any party of any provision of this Agreement, then the other parties shall
be
entitled, in addition to all other rights or remedies, (a) to an injunction
restraining such breach, without being required to show any actual damage or
to
post an injunction or other bond, or (b) to a decree for specific performance
of
the provisions of this Agreement, or both.
12.17 Expenses.
Except
as otherwise provided in this Agreement, each of the parties shall bear and
pay
all direct costs and expenses incurred by it or on its behalf in connection
with
the transactions contemplated by this Agreement, including, without limitation,
the fees and expenses of its own financial or other consultants, investment
bankers, accountants, and counsel.
12.18 Further
Assurances.
The
parties hereby agree from time to time to execute and deliver such further
and
other transfers, assignments and documents and do all matters and things that
may be convenient or necessary to more effectively and completely carry out
the
intentions of this Agreement.
12.19 Headings.
The
headings contained in this Agreement are for convenience of reference only,
are
not to be considered a part of the Agreement and shall not limit or otherwise
affect in any way the meaning or interpretation of this Agreement.
12.20 Pronouns
and Terms.
In this
Agreement, the use of any gender shall be deemed to include all genders, and
the
use of the singular shall include the plural and vice versa, wherever it appears
appropriate from the context. For all purposes of this Agreement, unless
otherwise expressly stated to the contrary, the terms "hereby," "hereto,"
"hereof," "hereunder" and "herein" shall refer to this entire Agreement; the
term "person" shall include without limitation, any corporation, partnership,
estate, trust, association, branch, bureau, subdivision, venture, associated
groups, individual, government, institution, instrumentality and other entity,
enterprise, association or endeavor of every nature and kind; and reference
to
the "business" of any person shall also be deemed to include, without
limitation, the operations, financial condition, properties and prospects of
such person.
12.21 Export
Control.
Each
party shall be responsible for ensuring that its actions with respect to the
Technology and Intellectual Property Rights are in compliance with the import
and export control laws of the United States and Norway (“Control
Laws”).
Each
party will notify the other parties in writing if the Technology or Intellectual
Property Rights is subject to any Control Laws, and will provide the appropriate
parties with reasonable cooperation and information to assist the other in
complying with any licensing or similar requirements that may be imposed under
United States or Norway laws.
13
12.22 Relationship
of Parties.
The
parties agree that they are independent entities. Nothing in this Agreement
shall be construed to create a partnership, joint venture, or agency
relationship between or among the parties. Each party is responsible for the
supervision, management and direction of its own employees. Each party is
responsible for the payment of compensation to its employees and for any injury
to them occurring in the course of their employment for which their employer
is
responsible and neither party shall be responsible for the supervision,
management and direction of the employees of the other party.
12.23 Reliance
on Experts.
For
purposes of this Agreement, whenever one of the parties reasonably requires
or
retains the use of an expert in order to discharge a duty under this Agreement,
such party's sole responsibility in connection with said duties shall be the
reasonable reliance upon the advice of the experts, and no party shall be liable
on account of any duty or obligation imposed under this Agreement in the event
of a reliance upon professional advice.
12.24 Enforcement
Costs.
If any
civil action, arbitration or other legal proceeding is brought for the
enforcement of this Agreement, or because of an alleged dispute, breach, default
or misrepresentation in connection with any provision of this Agreement, the
successful or prevailing party or parties shall be entitled to recover
reasonable attorneys' fees, court costs, sales and use taxes and all expenses
even if not taxable as court costs (including, without limitation, all such
fees, taxes, costs and expenses incident to arbitration, appellate, bankruptcy
and post-judgment proceedings), incurred in that proceeding, in addition to
any
other relief to which such party or parties may be entitled. Attorneys' fees
shall include, without limitation, paralegal fees, investigative fees,
administrative costs, sales and use taxes and all other charges billed by the
attorney to the prevailing party (including any fees and costs associated with
collecting such amounts).
12.25 Arbitration.
Notwithstanding anything to the contrary in this Agreement, all claims for
monetary damages and disputes relating in any way to the performance,
interpretation, validity, or breach of this Agreement shall be referred to
final
and binding arbitration, before a single arbitrator, under the commercial
arbitration rules of the American Arbitration Association in Broward County,
Florida. The parties shall select the arbitrator and if the parties are unable
to reach agreement on selection of the arbitrator within ten days after the
notice of arbitration is served, then the American Arbitration Association
will
select the arbitrator. All documents, materials, and information in the
possession of a party to this Agreement and in any way relevant to the claims
or
disputes shall be made available to the other parties for review and copying
not
later than sixty days after the notice of arbitration is served. To the extent
that a party would be required to make confidential information available to
any
other, an agreement or an order shall be entered in the proceeding protecting
the confidentiality of and limiting access to such information before a party
is
required to produce such information. Information produced by a party shall
be
used exclusively in the arbitration or litigation that may arise, and shall
not
otherwise be disclosed. In no event shall a party be entitled to punitive
damages in any arbitration or judicial proceeding and all parties hereby waive
their rights to any punitive damages. In the event an arbitration panel or
a
court concludes that the punitive damages waiver contained in the previous
sentence is unenforceable, then the parties agree that the court with subject
matter jurisdiction over the confirmation of the award shall have sole and
exclusive jurisdiction to determine issues of entitlement and amount of punitive
damages. The arbitrator shall not have subject matter jurisdiction to decide
any
issues relating to the statute of limitations or to any request for injunctive
relief, and the parties hereby stipulate to stay the arbitration proceeding
(without the need of a bond) until any such issues in dispute are resolved.
Judgment upon the award rendered by the arbitrator shall be final, binding
and
conclusive upon the parties and their respective administrators, personal
representatives, legal representatives, heirs, successors and permitted assigns,
and may be entered in any court of competent jurisdiction.
14
[REMAINDER
OF PAGE PURPOSEFULLY LEFT BLANK]
15
IN
WITNESS WHEREOF, the duly authorized representatives of each party hereto have
executed this Amended and Restated Technology License Agreement on the date
first above written.
| OSMOTEX AS | ||
| |
|
|
| By: | ||
|
Name: |
||
| Title: | ||
| OSMOTEX USA, INC. | ||
| |
|
|
| By: | ||
|
Name: |
||
| Title: | ||
| IQ MICRO INC. | ||
| |
|
|
| By: | /s/ X. Xxxxxx | |
|
Name: X. Xxxxxx |
||
| Title: Director & CFO | ||
16
IN
WITNESS WHEREOF, the duly authorized representatives of each party hereto have
executed this Amended and Restated Technology License Agreement on the date
first above written.
| OSMOTEX AS | ||
| |
|
|
| By: | /s/ Xxxxxx Xxxxxxxxxxxx | |
|
Name: Xxxxxx Xxxxxxxxxxxx |
||
| Title: Chairman of Board | ||
| OSMOTEX USA, INC. | ||
| |
|
|
| By: | /s/ Xxxxxx Xxxxxxxxxxxx | |
|
Name: Xxxxxx Xxxxxxxxxxxx |
||
| Title: CEO/Chairman | ||
| IQ MICRO INC. | ||
| |
|
|
| By: | /s/ Xxxxxx Xxxxxxxxxxxx | |
|
Name: Xxxxxx Xxxxxxxxxxxx |
||
| Title: CEO | ||
17
EXHIBIT
A
DESCRIPTION
OF TECHNOLOGY
Patents
for the patent application titled “Method
Of Fluid Transport”
in:
l Australia
(AU737492)
l Brazil
(PI9810358.0)
l Canada
(XX0000000)
l Finland
(FI0993328)
l France
(FR0993328)
l Germany
(DE0993328)
l Great
Britain (XX0000000)
l Italy
(IT0993328)
l Norway
(NO308095)
l United
States (US6320160).
The
patent application priority date for the foregoing patents was June 30,
1997.
