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EXHIBIT 10.10
000-0000-0
THIS AGREEMENT made in duplicate as of the 27th day of February, 1989
BETWEEN: CANADIAN PATENTS AND DEVELOPMENT
LIMITED-SOCIETE CANADIENNE DES BREVETS
ET D'EXPLOITATION LIMITEE, a Corporation
to which the Government Companies
Operation Act applies, having its Head
Office at the City of Ottawa in the
Province of Ontario (hereinafter called
"the Licensor")
OF THE ONE PART
-and-
Xxxxxxxxx Instruments Limited, a duly
incorporated Company, having a place of
business at the City of Rexdale in the
Province of Ontario (hereinafter called
"the Licensee")
OF THE OTHER PART
WITNESSETH THAT:
WHEREAS the Licensor is an agency Corporation wholly owned by Her
Majesty the Queen in right of Canada, reporting to Parliament through the
Minister of Regional Industrial Expansion; and
WHEREAS in consequence of scientific research conducted through
Department of Supply and Services of the Government of Canada Contracts Serial
Nos. T 0000-0-0000, 21ST-32032-4-033M, 19SR-32032-5-3080, 41ST-32032-6-3402 and
25ST-32032-7-3271, under the auspices of, the Department of Transport of the
Government of Canada, there has been developed an invention commonly designated
"Sample Handling System for Molecular Analyser" - Case Number 9172, and the
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Department of National Revenue of the Government of Canada there has been
developed an invention commonly designated "Narcotic Detector Using Ion Mobility
Spectrometer" Case 9281; and
WHEREAS the Licensor has made certain applications for patents in
respect of the said Inventions; and
WHEREAS the Licensor represents that it has full authority to license
the Invention and the Patent Rights and enter into this agreement; and
WHEREAS the Licensee and the Licensor are desirous of entering into a
license agreement on the terms and conditions hereinafter set forth.
NOW THEREFORE in consideration of the premises and of the mutual
covenants and agreements hereinafter contained, the parties hereto agree each
with the other as follows:
SECTION 1 - Definitions
A. "Departments" means the Department of Transport and the Department of
National Revenue of the Government of Canada;
B. "Invoice Price" means the genuine net selling price of Licensed Products
(before cash discounts, freight allowances, advertising allowances or similar
deductions are made, but excluding customs, excise and sales taxes, if any)
established in a normal bona fide arm's length transaction between parties not
subject to common control, direction or restraint, nor affiliated in any way.
C. "Invention" means the inventions commonly designated "Sample Handling System
for Molecular Analyser" - Case 9172 and "Narcotic Detector Using Ion Mobility
Spectrometer" Case Number 9281, which have been developed in consequence of
scientific research conducted under the auspices of the Departments.
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D. "Know-how" means the technical knowledge and techniques relating generally to
the Inventions supplied to the Licensee by either the Licensor or the
Departments.
E. "Licensed Process" means the series of actions or operations carried out in
accordance with the method Inventions covered by the Patent Rights and/or
Know-how.
F. "Licensed Product" means a complete detection system or any part thereof made
in accordance with the Inventions covered by the Patent Rights and/or Know-how.
F. "Patent Rights" means any patent application, continuation-in-part or
divisional thereof, and any patent which has issued or may issue thereon
including any re-issue thereof in respect of the Inventions, as more
particularly shown in Schedule "A" hereto annexed.
G. "Records" means accounts, invoices, receipts, vouchers and like documents
relating to the sales of Licensed Products.
SECTION 2 - Grant
A. The Licensor hereby grants to the Licensee an exclusive right and license in
Canada to make, and have made, Licensed Products, with the right and license
throughout the world to use and sell Licensed Products and use the Licensed
Process including the right to grant sublicenses thereof to purchasers of
Licensed Products. Such exclusive right and license shall be for the period from
the date of this Agreement until the 31st day of March 1999; it being understood
and agreed that, after the expiry of the aforesaid period, the right and license
granted herein shall be non-exclusive for the remainder of the life of this
agreement.
B. Notwithstanding anything contained in this agreement, in respect of the
license granted herein, there is hereby reserved to Her Majesty the Queen in
right of
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Canada, the right to practice, and have practiced, the subject matter of said
license and to dispose of, in any manner whatsoever, any products derived from
such practice.
C. If the Licensee is in default with respect to any obligation contained in
this agreement, the Licensor may, at its discretion, in lieu of giving notice of
termination for such default, by notice in writing to the Licensee, reduce to
non-exclusive the license granted herein and may, after the date of such notice,
grant to third parties licenses in respect to the subject matter of this
agreement.
D. The Licensee may grant sublicenses of the license granted herein on terms and
conditions similar to those hereof and the Licensee agrees that it will submit
such sublicense agreements to the Licensor for ratification within ninety (90)
days after execution thereof and such ratification, which shall not be
unreasonably withheld, shall be a condition precedent to the validity of any
such sublicense.
SECTION 3 - Royalties
A. The Licensee agrees to pay to the Licensor during the life of this agreement,
royalties at the rate of Two Percent (2.0%) of the Invoice Price, on all
Licensed Products produced and sold by the Licensee and any of its sublicensees.
In the calculation of royalties appropriate amounts may be deducted for all
cancellations of orders and accepted return of Licensed Products.
B. For the purpose of this agreement, Licensed Products shall be considered sold
when billed out, or if not billed out, when delivered or shipped.
C. The Licensee agrees to pay to the Licensor as partial consideration for the
license granted herein, the sum of Five Thousand Dollars ($5,000.00), in the
following
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manner:
One Thousand Dollars ($1,000.00) xxxxxxx money, the receipt at which is
hereby acknowledged, and One Thousand Dollars ($1,000.00) to be paid
upon execution of these presents, and Three Thousand Dollars
($3,000.00) on the 1st day of October 1989.
D. The Licensee agrees to pay in advance to the Licensor minimum annual
royalties in the amounts and on the dates as follows:
Five Thousand Dollars ($5,000.00) on the 1st day of April 1990,
Seven Thousand Five Hundred Dollars ($7,500.00) on the 1st day of April
1991,
Ten Thousand Dollars ($10,000.00) on the 1st day at April 1992 and on
the 1st of April of each and every year thereafter during the life of this
agreement; such minimum annual royalty shall constitute a credit against
royalties accruing to the Licensor pursuant to this agreement for the period for
which such minimum annual royalty is paid.
E. It is mutually understood and agreed that there shall be no carrying forward
as a credit against future royalties nor refunding of any balance of a minimum
annual royalty remaining at termination or at March 31 of any period for which
such minimum annual royalty shall have been paid.
F. The Licensee shall also pay to the Licensor as partial consideration for each
sublicense granted, One-Third (1/3) of all considerations, other than royalties
stipulated in subsection A above, due to the Licensee in respect of the
sublicense granted pursuant to Section 2 hereof, and any such payment shall not
constitute a credit against the minimum annual royalty payable under subsection
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D above.
SECTION 4 - Reports and Payments
A. The Licensee covenants and agrees to report to the Licensor within thirty
(30) days after each calendar quarter ending the last day of March, June,
September and December in each year during the life of this agreement, as to
whether or not royalties under this agreement are due to the Licensor.
B. Nil reports of royalties may be made by simple letter. Reports of royalties
due shall be in the form of statements and in compliance with the following:
(1) record the total quantity of Licensed Products sold by the
Licensee and its sublicensees up to and including the last day of
the quarter.
(2) include a calculation of the amount due to the Licensor for the
royalties stipulated herein;
(3) be certified as correct by the Treasurer or some other senior
officer of the Licensee; and
(4) be accompanied by a remittance to the Licensor of the amount of
the royalties so shown to be payable.
C. All payments to be made by the Licensee hereunder shall be paid in Canadian
funds payable at par at Xxxxxx, Xxxxxxx, Xxxxxx.
D. It is mutually understood and agreed that all overdue accounts shall bear
interest at the rates set from time to time by the Licensor.
E. Any considerations payable to the Licensor under Section 3(F) shall be paid
to the Licensor by the Licensee within thirty (30) days after the calendar
quarter ending the last day of March, June, September and December in which the
consideration is due to the Licensee.
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SECTION 5 - Accounts
A. The Licensee shall:
(1) keep proper and detailed Records in respect of sales of the
Licensed products and it sublicenses;
(2) make the Records available during business hours and permit the
authorized representatives of the Licensor to audit and inspect
the Records, including Records relating to sales of Licensed
products by sublicensees, and to take extracts from, and make
copies of, the Records; and
(3) afford all facilities for such audits and inspections and furnish
representatives with information requisite to the understanding of
the Records.
B. The Licensee shall also preserve the Records during the life of this
agreement and for a period of one year thereafter. Provided that the Licensee
may, after giving the Licensor ninety (90) days notice, dispose of any or all
Records.
C. It is mutually understood and agreed that, at its discretion, but not more
frequently than once per agreement year, the Licensor may, in addition to, or in
lieu of, audits and inspections of the Records stipulated in A above, request
the Licensee to provide to the Licensor, at no cost to the Licensor, an audited
statement of such Records.
SECTION 6 - Due Diligence
The Licensee covenants to use all reasonable endeavours to exploit
commercially with due diligence, the subject matter of this agreement. The
Licensor reserves the right to terminate this agreement if the Licensee is not
using
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all reasonable endeavours to exploit said subject matter commercially. Such
termination shall be effective ninety (90) days after notice thereof in writing
by the Licensor to the Licensee if within such period the licensee has not
shown to the reasonable satisfaction of the Licensor that it has used all
reasonable endeavours as aforesaid. Provided that, for the purposes of this
agreement failure of the Licensee to meet the market demand for reasonably
priced Licensed Products shall be deemed to be non-compliance with the
obligations of the Licensee under this Section 6.
SECTION 7 -- Improvements and Additions
A. The Licensee covenants and agrees to inform the Licensor from time to
time of any improvements and/or additions made by the Licensee, during the life
of this agreement, to the subject matter hereof. Where such improvements and/or
additions are:
(1) Developed, in whole or in part, by the Licensee with funding from the
Government of Canada, or any agency thereof, and except where such right
and interest is vested in Her Majesty, or an agency of Her Majesty,
under any funding contract, or other arrangement, all right and interest
in and to any such improvements and/or additions, whether patentable or
unpatentable, shall be vested in the Licensor; the Licensor may, if
practicable, seek such proprietary protection for any such improvement
and/or addition, as the Licensor deems necessary or appropriate, and
shall include all such improvements and/or additions in the license
granted hereunder without alteration of the terms hereof, including the
royalty rate. Provided that, if such funding is less than fifty percent
(50%) of the cost of the overall development
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of the said improvements and/or addition such inclusion in the said license
shall be for the life of any proprietary protection obtained therefor, and
shall, unless the said license is already exclusive, be exclusive to the
Licensee in respect of the said improvements and/or additions for a period not
less than seven (7) years in duration commencing the date of said funding
contract, or other arrangement, as may be agreed upon by the parties; in respect
of unpatentable improvements and/or additions so developed, the inclusion in the
license shall be for a minimum period of ten (10) years commencing the date of
said funding contract, or other arrangement; or
(2) Developed by the Licensee at its own expense, upon termination of this
agreement prior to the expiration of the term herein set out, for any reason
whatsoever, the Licensee shall grant to the Licensor a nonexclusive,
unconditional, irrevocable, royalty-free, right and license to make, use or sell
such improvements and/or additions, whether patentable or unpatentable, with the
right to grant royalty bearing sublicenses therefor, for a term not exceeding
the life of any patent issued in respect thereof, or a minimum of ten (10)
years, as may be applicable.
B. Notification of improvements and/or additions shall be sent to the Licensor
within a reasonable time, not more than six (6) months, after they have been
made.
SECTION 8 Technical Assistance
A. The Licensor undertakes to supply to the Licensee such technical information
and Know-how within the possession of each. of the Departments as, in the
opinion of
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each of the Departments, may be necessary to enable the Licensee to manufacture
the Licensed Product and use the Licensed Process.
B. All confidential information made available under this agreement shall be
maintained confidential by the Licensee and may only be disclosed with the
written consent of the Licensor.
SECTION 9 - Financial Assistance
The Licensee covenants and agrees to notify the Licensor immediately if the
Licensee intends to seek from the Government of Canada or any agency thereof,
financial or other assistance by way of contract or otherwise for the
development of the Licensed Product.
SECTION 10 - Patents and Costs
A. The filing and prosecution of the patent applications in the countries listed
in Part I of Schedule "A" shall be the responsibility of the Licensor and all
costs connected therewith shall be assumed by the Licensor.
B. Upon a request prior to the 1st day of October 1989 by the Licensee and at
the expense of the Licensee, the Licensor will file and prosecute additional
patent applications in such countries, where it is possible to do so, as the
Licensee may designate in writing and such additional applications shall be
listed in Part II of Schedule "A". Any request shall be accompanied by a payment
in the amount of One Thousand Dollars ($1,000.00), for each additional country
in which an additional patent application is to be filed and prosecuted, which
shall be applied to the costs of the filing and prosecution of the patent
application. For the additional applications filed at the request of the
Licensee, the Licensor agrees to use, if necessary, Patent Agents in the
countries where the
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applications are filed which are acceptable to the Licensee for the filing and
prosecution of the applications. The Licensee agrees that, upon the receipt of
notice from the Licensor, the Licensee will reimburse the Licensor for all
costs, including but not limited to, patent officers' time, disbursements, and
overhead involved in the filing and prosecution of the patent applications
requested by the Licensee. The patents which issue on the applications shall
vest in the licensor and such patents will then be deemed to be included in the
Patent Rights without alteration of the royalty rate.
C. The Licensor agrees that the Licensee may, at any time notify the Licensor
requesting discontinuance of the prosecution of any patent application filed at
the Licensee's expense and the Licensor may then withdraw such applications from
the Patent Rights. The Licensee covenants and agrees to reimburse the Licensor,
as provided for herein, for all costs incurred or authorized in prosecution of
such application up to the time of receipt of such notice.
D. The Licensee agrees that, upon receipt of notice from the Licensor, the
Licensee will reimburse the Licensor for all renewal fees and incidental costs
related to any of the Patent Rights licensed herein.
D. The Licensee may at any time prior to ninety (90) days before the due date
for payment of such renewal fees, notify the Licensor that it does not desire to
have a patent continued in force in any particular country and after receipt of
such notice by the Licensor the said patent may be withdrawn from the Patent
Rights.
E. The Licensor agrees to notify the Licensee within a reasonable time of any
final refusal to grant a patent in respect of any patent application included in
the Patent Rights.
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F. It is understood and agreed that in the event that no patent issues in
respect of any of the Patent Rights or should any of the Patent Rights be held
invalid by any Court of competent jurisdiction, from which no appeal can be, or
is taken, or should any of the Patent Rights expire, royalties in respect
thereof shall cease to be payable, provided that royalties shall be payable on
all Licensed Products produced or sold under the existing Patent Rights and/or
Know-how.
G. It is further understood and agreed that in the event that no patents issues
in respect of the Patent Rights, the royalty stipulated to be paid under the
provisions of Section 3 A shall be reduced to One Percent (1.0%) as of the date
the last application in the Patent Rights is irrevocably abandoned and the date
of the expiry of the agreement set forth in Section 13 shall be the 31st day of
March 1999.
SECTION 11 - Termination
A. This agreement, at the option of the Licensor, may be terminated forthwith by
the Licensor if:
(1) The Licensee fails to make any payment provided for herein and such payment
remains in arrears and unpaid for a period of ninety (90) days; or
(2) The Licensee commits or permits a breach of any of the other covenants and
terms herein contained and does not remedy such breach within ninety (90)
days after being required in writing to do so by the Licensor, or
(3) The Licensee becomes bankrupt, or insolvent, or has a receiving order made
against it or has a receiver appointed to continue its operations, or
passes a resolution for winding up, or takes the benefit of any statute for
the time being in force relating to
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bankrupt or insolvent debtors or the orderly payment of debts; or
(4) The Licensee alters, or is required to alter, its management or financial
control in any manner whatsoever, and such alteration may in the sole
opinion of the Licensor be deemed to be detrimental to the interest of the
Licensor.
(5) The Licensee assigns this agreement in any manner and for any purpose
whatsoever except as provided for herein without the prior written consent
of the Licensor.
Such termination shall be effected by a notice which shall, as of the date of
such notice, determine the license herein granted, together with all rights of
the Licensee hereunder, without prejudice to the right of the Licensor to xxx
for and recover any royalties or other sums due to the Licensor and without
prejudice to the remedy of either party in respect of any previous breach of
this agreement.
B. The Licensee may at its option terminate this agreement by giving the
Licensor at least ninety (90) days notice prior to the 31st day of March in any
year, provided that the Licensee shall pay to the Licensor all royalties or
other sums due hereunder up to the date of such termination.
C. Failure on the part of the Licensor to notify the Licensee of a breach of
this agreement, or to terminate the license granted hereunder because of such
breach, shall not constitute a condonation of the breach or a waiver of the
right of the Licensor to terminate the agreement in accordance with the
provisions herein contained.
D. The Licensor agrees that the Licensee and its sublicensees may sell all
stocks of Licensed Products produced during the currency of this agreement and
which remain unsold at the date of expiration or sooner
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determination provided that within thirty (30) days after such date the Licensee
pays to the Licensor royalties in respect thereof as stipulated herein.
SECTION 12 - Notice
A. Any notice under this agreement shall be in writing and in the case of the
Licensor shall be addressed to:
Canadian Patents and Development Limited,
000 Xxxxxx Xxxxxx,
Xxxxxx, Xxxxxxx
X0X 0X0
and in the case of the Licensee to:
Xxxxxxxxx Instruments Limited
000 Xxxxxxxxxxx Xxxxx
Xxxxxxx, Xxxxxxx
X0X 0X0
or to such other address as either party may in future designate by notice to
the other. All notices so addressed, if sent by registered mail, shall be deemed
to have been received ten (10) days after dispatch.
B. The Licensee covenants and agrees to notify the Licensor, and supply full
particulars, immediately upon:
a) effecting a change in its corporate name;
b) merging with another entity;
c) altering its management;
d) altering its financial control;
e) filing for bankruptcy;
f) involving itself in any insolvency proceedings; or
g) taking advantage of any statute then in being relating to the
orderly payment of debts.
SECTION 13 - Term
Subject to the provisions of Section 10 (G) and, unless sooner
terminated pursuant to the other provisions hereof, this agreement shall remain
in force until the last to expire of the Patent Rights licensed hereunder shall
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have expired.
SECTION 14 - Validity of Patent Rights
A. The Licensor does not warrant the validity of the Patent rights licensed to
the Licensee by this agreement and has not made, and does not make, any
representations to the Licensee as to the scope of the Patent Rights and that
such Patent Rights and/or the Know-how may be exploited without the infringement
of any rights of others.
B. The Licensee hereby recognizes and acknowledges the validity of the Patent
Rights other than any United states of America patent licensed hereunder and
agrees not to contest, during the life of this agreement, such validity, either
directly or indirectly, by assisting other parties.
SECTION 15 - Infringement
In the event that either the Licensee or the Licensor considers that
there exists a situation of infringement of the Patent Rights licensed hereunder
for which a suit for infringement should be brought, the one party will promptly
give to the other, free of any charge, all the available details regarding the
situation and the parties will jointly decide on the steps to be taken.
SECTION 16 - Litigation
A. In the event of any threatened or actual suit against the Licensee or its
sublicensees, in consequence of the exercise of the right and license granted
herein, the Licensee will promptly inform the Licensor and the parties will
jointly decide on the steps to be taken in the circumstances.
B. It is understood and agreed that, with regard to threatened litigation or
litigation arising from the license granted herein, or infringement of the
licensed rights by others, the parties hereto will at all times
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consult each other and give to one another free of any charge information or
advice which may be helpful for such purpose. However, neither party shall bind
or commit the other party to any course of action which involves liability for
legal costs, expenses or damages, but should the parties fail to agree, within a
reasonable time, as to any course of action jointly to be taken, either party
shall be at liberty to take or defend any proceedings alone at its own expense
on indemnifying the other party and shall be entitled to retain anything awarded
to it by a court.
SECTION 17 - Assignment
A. This agreement and everything herein contained shall enure to the benefit of
and be binding upon the successors and assigns of the parties hereto, but shall
not be assigned, transferred, conveyed, or encumbered by the Licensee except
upon the written consent of the Licensor and any assignment by the Licensee
without such consent shall be of no effect.
B. The Licensee agrees that the Licensor may, subject to the license granted
herein, assign or set over its entire right, title and interest in and to any
patent or patent application included in the Patent Rights and upon receipt of
notification from the Licensor that the obligations of the Licensor under this
agreement in respect of such patent or patent applications have been assumed by
an assignee, the Licensor shall be released from the obligations so assumed.
SECTION 18 - Publication
A. In the promotion of the subject matter of this agreement the Licensee agrees
that it shall use the words "Produced under license from Canadian Patents and
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Development Limited", but it shall not, in any manner whatsoever, use the name
of any department or other agency of the Government of Canada, without the prior
written permission of the Licensor.
B. The Licensee shall, at the request of the Licensor, within thirty days after
March 31 of each year throughout the life of this agreement, send to the
Licensor two copies of each piece of then current sales or product promotion
literature being used by the Licensee concerning the Licensed Product.
SECTION 19 - Compliance with Law
A. The Licensee covenants and agrees that it will comply with the Patent Law
regarding the affixing by means of a plate, label or other device to the
Licensed Product the number and date of issue of the patent or patents under
which such Licensed Product is produced.
B. The Licensee covenants and agrees to comply, at all times, with the orders,
regulations and statutes in force in the places where the right and license
granted herein are exercised.
SECTION 20 - Interpretation
A. For the purpose of this agreement, where applicable, words of the feminine
gender shall include the masculine, the singular shall include the plural, and
vice versa, and all sentences so affected herein shall be construed as being
grammatically correct.
B. This agreement shall be interpreted according to the laws of the Province of
Ontario, Canada.
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SECTION 21 - Entire Agreement
This agreement constitutes the entire agreement between the parties
hereto relating to the subject matter hereof and supersedes any prior
agreements. There are no terms, obligations, covenants, representations,
statements or conditions other than those contained herein. No variation or
modification of this agreement nor waiver of any of the terms and provisions
hereof shall be deemed valid unless in writing signed by both parties hereto.
IN WITNESS WHEREOF the parties hereto have caused these presents to be
executed under seal by their proper officers duly authorized in that behalf.
SIGNED, SEALED AND DELIVERED by:
CANADIAN PATENTS AND DEVELOPMENT
LIMITED-SOCIETE CANADIENNE DES
BREVETS ET D'EXPLOITATION LIMITEE
Per:/s/
-----------------------------------------
Vice President
Per:/s/
-----------------------------------------
Secretary - Treasurer
XXXXXXXXX INSTRUMENTS LIMITED
Per:/s/ X. Xxxxxx (President)
-----------------------------------------
Per:
-----------------------------------------
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SCHEDULE "A"
PART I
Country Appl. No. Date Patent No. Issued Expires
Case 0000
Xxxxxx
Xxxxxx Xxxxxx
Xxxx 0000
Xxxxxx
Xxxxxx Xxxxxx
PART II
Country Appl. No. Date Patent No. Issued Expires
Case 9172
Case 9281
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000-0000-0
SUPPLEMENT NUMBER 1
TO THE AGREEMENT DATED AS OF THE 21ST DAY OF FEBRUARY 1989
THIS AGREEMENT made in duplicate as of the 4th day of March, 1991.
BETWEEN: CANADIAN PATENTS AND DEVELOPMENT
LIMITED-SOCIETE CANADIENNE DES BREVETS
ET D'EXPLOITATION LIMITEE, a Corporation
to which the Government Corporations
Operation Act applies, having its Head
Office at the City of Ottawa in the
Province of Ontario (hereinafter called
"the Licensor")
OF THE ONE PART
-and-
XXXXXXXXX INSTRUMENTS LIMITED, a duly
incorporated Company, having a place of
business at the City of Rexdale, in the
Province of Ontario (hereinafter called
"the Licensee")
OF THE OTHER PART
WITNESSETH THAT:
WHEREAS the parties hereto entered into an Agreement dated as of the
27th day of February, 1989, (hereinafter called "the Original Agreement"),
wherein the Licensor granted to the Licensee a license in respect of inventions
commonly referred to
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as "Sample Handling System for Molecular Analyser" - Case Number 9172 and
"Narcotic Detector Using Ion Mobility Spectrometer" - Case Number 9281; and
WHEREAS the parties are desirous of amending the Original Agreement on
the basis herein set forth.
NOW, THEREFORE, in consideration of the premises and of the mutual
covenants and agreements hereinafter contained, the parties hereto agree each
with the other as follows:
SECTION 1
1. Subsection A of Section 2 of the Original Agreement is deleted and the
following substituted therefor:
"A. The Licensor hereby grants to the Licensee an exclusive right and license in
Canada and the United States to make, and have made, Licensed Products, with the
right and license throughout the world to use and sell Licensed Products and use
the Licensed Process including the right to grant sublicenses thereof to
purchasers of Licensed Products; provided however, if the market demand for
Licensed Products can only justify one production/assembly facility, the
Licensed Products must be produced and assembled in Canada. Such exclusive right
and license shall be for the period from the date of this Agreement until the
31st day of March 1999; it being understood and agreed that, after the expiry of
the aforesaid period, the right and license granted herein shall be
non-exclusive for the remainder of the life of this Agreement."
SECTION 2
Subsection D of Section 2 of the original Agreement is
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deleted and the following substituted therefor:
"D. The Licensee may grant sublicenses of the license granted herein on terms
and conditions similar to those hereof and the Licensee agrees that it will
submit such sublicense agreements to the Licensor for ratification within ninety
(90) days after execution thereof and such ratification, which shall not be
unreasonably withheld, shall be a condition precedent to the validity of any
such sublicense; provided however, that the only sublicense granted to make and
have made Licensed Products in the United States shall be to Xxxxxxxxx
Instruments Inc. of New Jersey and not less than Fifty Percent (50%) of the
factory cost value of the Licensed Products assembled by Xxxxxxxxx Instruments
Inc. shall be of content obtained from Canada, as measured by the same cost
accounting standards as used by the Licensee in establishing its factory costs.
Under the provision of the said sublicense, Xxxxxxxxx Instruments Inc. shall
only have the right to sell Licensed Products made in the United States or to
United States' companies or agencies for their own use in its off-shore
operations. In order to allow the Licensee to comply with the provisions of
Section 7 of the Agreement, any manufacturing method improvements, assemble and
test improvements or other improvements relating to the assembly, calibration,
test, manufacturability and reliability of the Licensed Products made by
Xxxxxxxxx Instruments Inc. shall be made available to the Licensor for its own
use, and shall be provided at no cost to the Licensor."
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SECTION 3
This Agreement shall be designated as Supplement No. 1 to the Original
Agreement and, except as varied by terms of this Supplement No. 1, the terms of
the Original Agreement are hereby confirmed.
IN WITNESS WHEREOF the parties hereto have caused these presents to be
executed under seal by their proper officers duly authorized in that behalf.
SIGNED, SEALED AND DELIVERED by:
CANADIAN PATENTS AND DEVELOPMENT
LIMITED-SOCIETE CANADIENNE DES
BREVETS ET D'EXPLOITATION LIMITEE
Per:/s/
----------------------------
President
Per:/s/
----------------------------
Vice President
XXXXXXXXX INSTRUMENTS LIMITED
Per:/s/ X. XXXXXX
----------------------------
President
Per:/s/
----------------------------
Vice President Operations
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ASSIGNMENT OF AGREEMENT
THIS AGREEMENT made in triplicate as of the 2nd day of January 1992.
BETWEEN:
XXXXXXXXX INSTRUMENTS LIMITED, a duly
incorporated Company, having a place
of business at the City of Rexdale in
the Province of Ontario (hereinafter
called "BIL")
OF THE FIRST PART
- and -
CANADIAN PATENTS AND DEVELOPMENT
LIMITED - SOCIETE CANADIENNE DES
BREVETS ET D'EXPLOITATION LIMITEE, a
Corporation to which the Government
Corporations Operation Act applies,
having its Head Office at the City of
Ottawa in the Province of Ontario
(hereinafter called "CPDL")
OF THE SECOND PART
- and -
HER MAJESTY THE QUEEN IN RIGHT OF
CANADA, as represented by the
MINISTER OF NATIONAL REVENUE, having
a place of business at the City of
Ottawa in the Province of Ontario
(hereinafter called "the Department")
OF THE THIRD PART
WITNESSETH THAT:
WHEREAS BIL and CPDL entered into an Agreement dated as of the 27th day
of February, 1989 as amended by Supplement Number 1 dated the 4th day of March
1991, more particularly described in Schedule "A" hereto, with respect to
Inventions commonly designated "Sample Handling System for Molecular Analyser" -
Case Number 9172 and "Narcotic Detector Using Ion Mobility Spectrometer" - Case
Number 9281, (hereinafter called "the Agreement"); and
WHEREAS CPDL has agreed to assign all of its rights and
25
obligations under the Agreement to the Department; and
WHEREAS the Department has agreed to assume and perform all of the
rights and obligations created by the Agreement; and
WHEREAS BIL agrees to consent to such assignment.
NOW, THEREFORE, in consideration of the premises and of the mutual
covenants and agreements hereinafter contained, the parties hereto agree each
with the other as follows:
1. CPDL assigns, transfers and sets over unto the Department absolutely
the Agreement as of and from the date hereof and all right, title and interest
of CPDL therein and thereto.
2. The Department accepts the assignment referred to in Section 1
hereof and hereby agrees with BIL and CPDL duly and faithfully to fulfill,
observe, perform and comply with all of the terms, conditions and provisions of
the Agreement and shall be entitled to all of the benefits of the Agreement as
though originally named as a party therein and may amend the Agreement in its
own name.
3. BIL hereby consents to the assignment by CPDL to the Department
referred to in Section 1 hereof on the terms herein set out.
4. Notices pursuant to Section 12 of the Agreement shall now, in the
case of the Licensor be addressed to:
Director General
Laboratory & Scientific Services Directorate
Department of National Revenue
00 Xxxxxxx Xxxxxx
Xxxxxx, Xxxxxxx
X0X 0X0
and in the case of the Licensee to:
Xxxxxxxxx Instruments Limited
000 Xxxxxxxxxxx Xxxxx
Xxxxxxx, Xxxxxxx
X0X 0X0
5. The Department hereby confirms, ratifies and adopts all the terms
and conditions of the Agreement.
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26
6. This Agreement shall be interpreted according to the laws of the
Province of Ontario, Canada.
7. This Agreement constitutes the entire Agreement between the parties
hereto relating to the subject matter hereof and supersedes any prior
agreements. There are no terms, obligations, covenants , representations,
statements or conditions other than those contained herein. No variation or
modification of this Agreement nor waiver of any of the terms and provisions
hereof shall be deemed valid unless in writing signed by all parties hereto.
IN WITNESS WHEREOF the parties hereto have caused these presents to be
executed under seal by their proper officers duly authorized in that behalf.
SIGNED, SEALED AND DELIVERED BY:
XXXXXXXXX INSTRUMENTS LIMITED
Per: /s/ X. XXXXXX (President)
----------------------------------
Per: /s/
----------------------------------
CANADIAN PATENTS AND DEVELOPMENT
LIMITED -- SOCIETE CANADIENNE DES
EREVETE ET D'EXPLOITATION LIMITIE
Per: /s/
----------------------------------
Per: /s/
----------------------------------
HER MAJESTY THE QUEEN IN RIGHT OF
CANADA as represented by the MINISTER
OF NATIONAL REVENUE
Per: /s/
----------------------------------
Per: /s/
----------------------------------
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27
SCHEDULE "A"
DESCRIPTION OF AGREEMENT
Date of Agreement: February 27, 1989
Date of Supplement No. 1: March 4, 1991
Re: License agreement in respect
of "Sample Handling System for
Molecular Analyser" - Case Number
9172 and "Narcotic Detector Using Ion
Mobility Spectrometer" - Case
Number 9281, including schedules,
deletions and modifications
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[XXXXXXXXX LETTERHEAD]
7 October 1996
Xx. Xxxxx X. Xxxxxx
Director General
Laboratory and Scientific Services Directorate
Revenue Canada Customs and Excise
00 Xxxxxxx Xxx.
Xxxxxx, Xxxxxxx X0X 0X0
Dear Xx. Xxxxxx:
Further to your letter of 1 October 1996 following our request for an extension
to the licence on a year-to-year basis to ten years starting 1 April 1999, with
all other terms of the licence to remain the same as under the present licence,
we accept the indemnification of the Crown, and by this letter incorporate that
indemnification into the licence, as follows:
Xxxxxxxxx shall indemnify and save Her Majesty in right of
Canada harmless from and against all claims, demands, losses,
costs, damages, actions, suits, or proceedings by whomever
made, brought or prosecuted and in any manner based upon,
arising out of, related to, occasioned by or attributable
to any use made of the IMS/IONSCAN technology by Xxxxxxxxx
or by any of its clients or customers including any
infringement or alleged infringement of a patent or invention
or any other kind of intellectual property.
Therefore, please accept by your counter-signature hereto our acceptance to the
extension of the licence, the details of the mechanics of the option to be
covered at a time closer to the renewal time.
Yours sincerely,
XXXXXXXXX RESEARCH LTD.
/s/ X.X. Xxxxxx
------------------------------
Xxxx X. Xxxxxx
President
Acceptance: /s/ X. Xxxxxx Date: Oct 7/ 96
------------------- ---------------
Name: X. Xxxxxx
Director General
Laboratory and Scientific Services Directorate
