AGREEMENT Made on this 16 day of April 2007 (“Effective Date”) by and between MEDGENICS MEDICAL ISRAEL, LTD. A company organized and existing under the laws of Israel with offices at 12 HaNapach St. Karmiel, Israel (“MMI”) and MEDGENICS, INC. A...
EXHIBIT 10.26
Made on this 16 day of April 2007 (“Effective
Date”)
by and between
MEDGENICS
MEDICAL ISRAEL, LTD.
A company
organized and existing
under the laws of
Israel
with
offices at 00 XxXxxxxx Xx. Xxxxxxx, Xxxxxx
(“MMI”)
and
A company organized and existing
under the laws of Delaware, USA,
with
principal place of business
at 0000 Xxxxxx
Xxxxxxxx Xx.
Xxxxx
0000
Xxxxxx,
Xx. 00000 XXX
(“Medgenics”)
WHEREAS MMI has applied for
funding from the OCS (as defined below) under the Law (as defined below) for an approved budget
for the period commencing on June
1, 2006 and ending May
31, 2007 for the research and development projects titled Biopump: Medical device for preparation of autologous skin
implants (OCS file Numbers 37503 and 37679)(the “Grants”); and
WHEREAS The Grants have been
approved by the research committee of the OCS (the “Approved Programs”) and the parties hereto wish to
enter into a development
and license
agreement, pursuant to the terms and conditions set forth
herein;
NOW THEREFOR the parties
hereto agree as follows:
1.
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Definitions
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1.1
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“Intellectual Property Rights” shall mean patents, patent applications,
mask works,
copyrights, trade secrets, “moral” rights,
confidential and proprietary information of a technical and business nature and
know-how. Intellectual Property
includes, but is
not limited to,
designs, inventions, algorithms, processes, recipes, schematics,
logic diagrams, software, hardware,
firmware, and technical specifications, whether in documentary or non-documentary
form.
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1.2
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“Technology” - the
know-how, technology and process and other results developed and that will be
developed by MMI under
the Approved Programs supported by the OCS or deriving
therefrom.
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l.3
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“Technology IP” – all rights in and to the
Technology.
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1.4
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“Law” – the Encouragement of Research and Development
in Industry Law
(5744-1984) and the regulations
rules and procedures
promulgated pursuant thereto as may be amended from time to
time.
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1.5
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“Net Sales” - gross amount billed on
sales by MMI of the products covered by the claims of the
Background IP, 1ess the following: (i) customary trade, quantity, or cash
discounts and commissions to non-affiliated brokers or agents to the extent actually
allowed and taken; (ii) amounts repaid or credited by reason of rejection
or return; and (iii) to the extent separately stated on purchase orders,
invoices, or other documents of sale, any taxes or other governmental
charges levied on the production, sale, transportation, delivery, or use
of such product which is paid by or on behalf of
MMI;
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l.6
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“OCS” – the Office of Chief Scientist of
the Ministry of Industry, Trade and
Labor.
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2.
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Ownership of
Rights
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MMI is
and shall remain the Sole owner of the Technology and Technology IP created in
the course of the Approved Programs supported by the OCS or deriving therefrom
and any utilization of such Technology and Technology IP and the results of the
Approved Programs and any other rights deriving from the Approved Programs or
their execution, is subject to the provisions of the Law.
3.
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License
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Subject
to obtaining the required prior approvals from the OCS and compliance with the
provisions of the Law, MMI may grant Medgenics licenses for manufacturing, marketing and
distributing of products incorporating or based on the Technology and/or the
Technology IP.
4.
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Non-Exclusive License
to Background IP
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4.1
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License
Grant. Medgenics
herby grants MMI a non-exclusive, worldwide, non-transferable.
sub-licensable irrevocable license to use Medgenics’ Intellectual Property
Rights, as existing at date of application made for financial support from
the OCS under the Grant or developed or obtained independently by
Medgenics thereafter, as well as such intellectual property rights
licensed to Medgenics under the certain License Agreement with Yissum
dated November 23, 2005 (the “Background IP”), solely to the extent
demonstrated, to the reasonable satisfaction of Medgenics, as required for
the performance and execution of the Approved Programs and any research
and development programs support by the OCS, to be technically
indispensable for MMI in order to develop and commercialize the products
based on the Technology and Technology IP (all such
rights granted herein, the “Non-Exclusive License”). The Background IP and all
Intellectual Property Rights therein shall remain in the sole ownership
of' Medgenics.
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4.2
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Royalties.
In consideration for
the grant of the Non-Exclusive License to MMI, MMI shall pay Medgenics a
royalty equal to the five percent (5%) of the Net Sales of
the products based on
the Background IP.
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2
5.
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Undertaking
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Each of MMI and Medgenics, recognize that
(i) the Technology and Technology IP was developed with financial support of
the Government of the State of Israel through the OCS under the Law, and that (ii) the Law places strict
restrictions on the transfer of know-how and/or manufacturing right,
making all such transfers subject to the absolute discretion of the
Research Committee of the OCS (the “Research Committee”), acting in accordance with the aims
of the Law, and requiring that any such transfer receive the prior written approval of the
Research Committee. Each of MMI and Medgenics hereby undertake: (i) to observe
strictly the requirements of the Law including those relating to the prohibition on transfer
of know-how and/or production rights,
and those relating to payment royalties; (ii) to notify the OCS in any event of
a procedure taken by or against MMI in respect of a liquidation of MMI, or an
appointment of a trustee, liquidator or receiver for MMI, or similar legal
procedures.
6.
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Miscellaneous
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6.1
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Governing
Law and
Jurisdiction. This Agreement
shall be governed by
and construed according to the laws of the state of
Israel, without regard
to the
conflict of
laws provisions thereof. All disputes
hereunder shall be resolved in the
courts of Israel, sitting in Tel
Aviv-Jaffa.
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6.3
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6.4
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Severability.
If any non material condition,
term or covenant of this Agreement shall at any time be held to be
void, invalid or unenforceable by a court of final jurisdiction, then
such
condition, covenant or term shall be
construed as severable and such holding shall attach only to such
condition, covenant or term and shall not in any way affect or render
void, invalid or unenforceable
any other condition, covenant or term of this Agreement, and this
Agreement shall be carried out as if such void, invalid or unenforceable
term were not embodied
herein.
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6.5
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Waiver.
The failure at any time of either party to enforce any of the terms or
conditions or any right or to exercise any option of this
Agreement, will in no way be construed to be a waiver of such
terms, conditions, rights or options, or in any way to affect the validity
of this Agreement.
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6.6
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Preamble.
The preamble
to this Agreement shall form
an Integral part
thereof.
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6.7
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Headings.
The headings in this Agreement are inserted only as a matter of
convenience, and shall
not be taken into consideration in the interpretation
of this
Agreement.
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6.8
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Notices.
Any notice,
demand, request, consent, approval, declaration, delivery
or other communication hereunder to be
made pursuant to the provisions of
this
Agreement
shall be sufficiently given or made if in writing and delivered in
person with receipt acknowledged, sent by registered or
credited mail, receipt requested, posted prepaid,
sent by overnight courier with
guaranteed next day delivery or sent by telex or facsimile
to the party to whom
directed at the respective address
indicated above or to such other
address as a party may designate
in writing
in accordance with
the provisioins of this Subsection 6.8. A copy of any notice shall
be also sent to:
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Pearl,
Xxxxx Zedek Xxxxxx LLP
3
7 Shenkar
Street, 2nd Xxx-Xxx
Xxxxxxxx,
Xxxxxxxx,
00000, Xxxxxx
Fax:
000-0-000-0000
Att:
Attorney Xxxx Xxxxx
6.9
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Further Assurances. The parties hereto shall take any and all
actions as may be required to satisfy the terms, goals and intent of this
Agreement and shall take no actions in contravention of
thereof.
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6.l0
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Counterparts. This Agreement may be executed in any
number of counterparts, each of whom shall be deemed an original and
enforceable against the parties actually executing such counterpart, and
all of which together shall constitute one and the same
instrument.
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IN WITNESS WHEREOF the parties have
signed this Agreement as of the date first above written.
MMI,
LTD.
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Signature:
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/s/
Xxxxxx X. Xxxxxxxx
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Signature:
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/s/
Xxxxxx X. Xxxxxxxx
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Name:
Xx. Xxxxxx X. Xxxxxxxx
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Name:
Xx. Xxxxxx X. Xxxxxxxx
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Title:
CEO
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Title:
President and
CEO
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