EXHIBIT 10.3
LICENSE AND SUPPLY AGREEMENT
This License and Supply Agreement (the "Agreement") is entered into as of
January 1, 2003, by and between Panion & BF Biotech Inc.) with its principal
place of business at 7f Xx. 000 Xxx. 0 Xxxxx Xxxxx X. Xx. Xxxxxx, Xxxxxx R.O.
("Panion") and Senetek PLC, a company formed and existing under the laws of the
United Kingdom. with its principal place of business at 000 Xxxxxxx Xxxx, Xxxx,
Xxxxxxxxxx 00000 ("Senetek").
RECITALS
Whereas, Senetek has patens covering the use of kinetin compound in skin care
and cosmetic products and is the owner of related technology; and
Whereas, Panion wishes to be granted the right to incorporate kinetin compound
in certain of its skin care products and to have Senetek supply kinetin compound
for such purpose, and Panion also wishes to purchase certain skin care products
from Senetek for resale.
Now, therefore, in consideration of the mutual promises, covenants and
conditions set forth in this Agreement, Panion and Senetek agree as follows:
1. DEFINITIONS.
a. Affiliate. The term "Affiliate" shall mean, with respect to
any person or entity, any person or entity controlling, controlled by,
or under common control of or with such person or entity. Control shall
mean the ownership or control. directly or indirectly of fifty percent
(50%) or more of the voting stock of the company or the ability to
control, through whatever means, the governing body of such entity.
b. Authorized Channel. The term "Authorized Channel" means the
ethical market channel of sales to hospitals, clinics and doctors for
resa1e to their patients and to pharmacies and drug stores for purchase
"behind the counter" by their patients (and not as part of the "mass
market" for skin care products).
c. Kinetin. The term "kinetin" shall mean the cytokinin compound
described by the international identifier CAS #525-79-1.
d. Cost. The term "Cost" means Senetek's cost of supplying
kinetin compound and transferring the Technology to Panion, including
Senetek's cost of direct labor of employees while directly employed in
the supplying of kinetin compound and transfer of Technology, direct
materials and components, calcu1ated direct energy, utilities and other
charges incurred directly in the manufacture and supply of kinetin and
transfer of the Technology; and an amount reflecting allocation to
Panion of a portion of the direct and indirect cost of developing the
Technology and qualifying the kinetin manufacturer.
e. Products. The term '"Products" shall mean those products to
be manufactured by or for Panion whose specifications have heretofore
been approved by Senetek for use with kinetin,
(***) CERTAIN INFORMATION IN THIS EXHIBIT HAS BEEN OMITTED AND FILED SEPARATELY
WITH THE SECURITIES AND EXCHANGE COMMISSION. CONFIDENTIAL TREATMENT HAS BEEN
REQUESTED WITH RESPECT TO THE OMITTED PORTIONS.
which shall be set forth in an Addendum to Schedule 1e. for each new
product on a case-by-case basis.
f. Finished Products. The term "Finished Products" shall mean
Products manufactured to include the compound, kinetin.
g. Senetek Products. The term "Senetek Products" shall mean
those skin care products manufactured by or for Senetek and sold to
Panion for resale within the Territory.
h. Patent. The term "Patent" shall mean the Senetek patents (set
forth in Schedule 1h.) relating to the proprietary kinetin-based
compositions and related technology sold by Senetek under the brand
name, Kinetin.
i. Technology. The term "Technology" means all data,
intellectual property and information, including without limitation the
Patent and the formula, specifications, clinical study data, clinical
photographs, and safety information, which are necessary or useful for
the manufacture and/or marketing and/or sale of the Finished Products.
g. Territory. The term "Territory" means the following countries
of the world: The Republic of China (Taiwan) and Hong Kong. The
Philippines and the People's Republic of China shall be added to the
Territory upon approval by Senetek of marketing plan, including trade
pricing, for such countries.
2. TERM OF AGREEMENT.
The term of this Agreement (the "Term") shall be the life of the Patent
in the Territory, unless it is terminated earlier by either Party for default or
other event giving rise to a right of termination as described in Section 13
below.
3. GRANT OF LICENSE.
a. Senetek hereby grants to Panion a non-exclusive license under
the Patent to incorporate kinetin compound in the range of 0.02% to
0.08% w/w as an ingredient in the finished Products, and to manufacture,
have manufactured, use and sell the Finished Products, in each case
solely within the Authorized Channel in the Territory.
b. Transfer of Technology. Senetek shall furnish Panion with one
copy of all Technology, including but not limited to know how,
pre-clinical testing data, clinical testing data, process sheets, raw
material and process specifications, formulas, manuals, and other
writings and any software with respect to the incorporation of kinetin
in the Products, which may reasonably be required by Pan ion to
manufacture, package, and commercialize the Finished Products.
c. Patent Enforceability. In consideration of the benefits of
this Section 3, Panion, for itself and its Affiliates, successors and
permitted assigns and S1,lb- licensees, irrevocably acknowledges, admits
and concedes that (i) all rights, title and interest in the Patent is
owned by Senetek and its Affiliates, (ii) all claims of the Patent as
well as all claims that are narrower in scope than the claims of the
Patent are valid and enforceable, and (iii) all claims of any patent
that may issue from any application whose subject matter in whole or in
part is entitled to the benefit of the filing date(s) of the Patent
(including, without limitation, continuations, continuations-in-part,
divisional patents, reexaminations, renewals, extensions, reissues, and
foreign counterparts) that are equal to or narrower in scope than the
claims of the Patent are valid and enforceable.
Panion, for itself and its Affiliates, successors and permitted assigns
and sub-licensees, does also forever relinquish and waive all rights to
dispute said ownership, validity and enforceability in any proceeding of
any nature, covenants that it and they will not assert, either
affirmatively or defensively, in any proceeding of any nature, any
matter inconsistent with said ownership, validity and enforceability,
agrees and acknowledges that the foregoing shall act as a complete
defense and bar to any proceeding of any nature challenging such
ownership, validity and enforceability or any of them, and consents to
the entry of temporary and permanent injunctions to bar any breach or
threatened breach of any of the foregoing, without the filing on behalf
of Senetek of any bond or other security.
d. Promotion of the Products. Panion agrees that in marketing
and selling Finished Products and Senetek Products it shall not include
in packaging or labeling (except as required by law) or advertise the
concentration of kinetin in the Finished Product(s) or Senetek Products
nor will it make any, comparative claims of product benefit to those
kinetin-containing products of Senetek or other Senetek licensees, the
current list of licensees being identified in Exhibit 3d. attached
hereto. In addition, Panion will submit to Senetek the text of all
packaging, labeling, advertising and promotional materials for Finished
Products (and any Senetek Products that might be sold to Panion in bulk
form for packaging by or for Panion) for Senetek prior approval, such
approval by Senetek not to be unreasonably withheld or delayed. Panion
may include in packaging, labeling and/or promotional materials for the
Finished Products and any Senetek Products supplied in bulk and packaged
by Panion that they contain kinetin and shall include the following or a
similar statement presented in a manner consistent with industry
practice: "Manufactured and sold under license from Senetek", followed
by the Patent numbers relevant to the Territory in which the Finished
Product(s) are to be sold.
e. Other Rights. It is expressly understood that this Agreement
grants no rights to Panion with respect to any intellectual property or
confidential information of Senetek except those express rights set
forth in Section 3.
4. SUPPLY OF THE KINETIN AND SENETEK PRODUCTS.
x. Xxxxxx will purchase its supplies of kinetin solely from
Senetek or its \ authorized vendor in accordance with the terms of this
Agreement. Senetek covenants that the kinetin compound and Senetek
Products supplied to Panion pursuant hereto shall be manufactured in
accordance with all relevant legal and regulatory requirements, that the
manufacturer of such compound and such Senetek Products shall conduct
all appropriate quality control and related testing to insure that the
compound and Senetek Products are fit for use in or as human skin care
products and otherwise complies with Senetek's warranty herein. Senetek
shall provide to Panion upon request and at no cost to Panion, with
respect to each manufacturing batch of kinetin and Senetek Products,
proof of ingredients used in the manufacture of such material with a
certificate of analysis for such material. Upon reasonable notice,
Senetek shall permit representatives of Panion to observe all quality
control testing and inspect all quality control documentation related to
the kinetin and Senetek Products supplied by Senetek to Panion. Senetek
further covenants that at the point of delivery F.O.B to Panion's
carrier at Senetek's point of shipment such kinetin compound will meet
the current Senetek specifications (including but not limited to purity
of equal to or greater than 97%) and all Senetek Products will conform
to Senetek's specifications therefore.
b. Senetek shall have the right to approve the specifications
for all Finished Products prior to testing, and to approve any
modifications thereof. Testing of formulations and/or Finished Product
shall be performed only with prior notice to and in accordance with any
protocols established by Senetek. Without limiting the foregoing, skin
permeation testing for each new kinetin- based Product will be conducted
under the supervision and with the established methods of Senetek (to
ensure that the kinetin active material is properly delivered to the
skin). Panion will pay for all testing as it applies to the Pan ion
formulations.
c. Senetek will supply kinetin compound and Senetek Products to
Panion in accordance with Panion Purchase Orders, which shall set forth
the quantity and FOB carrier terms, within ninety days of receipt of
Panion's Purchase Order. Senetek shall ensure that each shipment is
properly packed and marked for shipping and routed in accordance with
Panion's Purchase Order. Shipping terms shall be F.O.B. Senetek's
shipping dock, with freight paid by Panion collect. In the event of any
conflict between the terms of a Panion Purchase Order and this
Agreement, the terms of this Agreement shall govern, unless otherwise
expressly agreed to in writing and signed by both parties.
d. If the kinetin or Senetek Products or any portion thereof
delivered by Senetek to Panion are defective in any respect at point of
delivery F.O.B. to Panion's carrier at Senetek's point of shipment,
Panion may retain all or any portion of such goods which are not
defective and return the defective portion to Senetek at Senetek's sole
expense. Pan ion may require, at its option, that Senetek replace any
such defective goods that Panion is entitled to reject or grant a refund
or credit to Panion in lieu thereof. Panion shall provide notice of
rejection of defective kinetin or Senetek Products to Senetek within 90
days of receipt of the kinetin. Acceptance of the kinetin or Senetek
Products shall be subject to revocation upon later discovery of any
latent defect in the kinetin at the point of delivery to Panion's
carrier. In the event of a dispute as to whether the kinetin or Senetek
Products are defective, samples of the production lot(s) in dispute
shall be sent to a testing laboratory mutually agreed to by Senetek and
Pan ion, whose findings shall be binding on the Parties. The cost of
such testing shall be borne by the Party whose position is not upheld by
the testing laboratory. The final decision whether to release a
production lot of Finished Product shall remain with Panion.
x. Xxxxxx shall pay to Senetek for all kinetin supplied by
Senetek and not rightfully rejected as herein provided a purchase price
in U.S. Dollars equal to Senetek's Cost plus a profit factor to be
agreed between the Parties (such Cost plus profit factor being herein
called the "Purchase Price"), provided that, until and unless otherwise
agreed, the Purchase Price shall be (***) per gram of kinetin net of any
and all taxes, duties or other assessments by or due to any governmental
agency within the Territory. Payment for kinetin supplied during each
calendar quarter shall be due and payable within thirty (30) days after
the end of such calendar quarter, and shall be accompanied by a report
setting forth the calculation of the amount of the Purchase Price
remitted.
x. Xxxxxx shall pay to Senetek for the Senetek Products listed
on Schedule 4e. attached hereto the U.S. Dollar amount per unit set
forth in Schedule 4e., subject to adjustment by Senetek no more
frequently than every six months to reflect increases in its costs. Any
additional Senetek Products offered by Senetek will be included in an
Addendum to Schedule 4e. and Panion shall pay for such Senetek Products
the amount per unit set forth in such Addendum, subject to adjustment as
aforesaid. Payment for Senetek Products shall be made in full within 30
days after Senetek's invoice.
g. Late payments for kinetin or Senetek Products shall be
subject to a processing fee of 1.5% per month or, if such amount is not
permitted by law, the maximum amount permitted by law. Timely payment by
Panion shall be a material term of this Agreement. Payment shall be made
in U.S. Dollars by wire transfer either to Barclays Bank PLC, 00 Xxxxxxx
Xxxxxx, Xxxxxx
*** Confidential portions of this material have been omitted and filed
separately with the Securities and Exchange Commission.
EC3P3AH, Sort Code Number 201990, Account No. XXXXXX of Senetek; or to
West America Bank of Xxxxxxx, California (ABA Routing No. 000000000, fbo
checking account number XXXXX of Senetek, or to such other account as
Senetek may direct.
5. MANUFACTURE AND SALE OF FINISHED PRODUCTS.
x. Xxxxxx will be responsible for manufacturing of all Finished
Products. All, Finished Product shall be manufactured at Panion's
current manufacturing site(s) unless specifically agreed otherwise by
Senetek. Panion shall provide to Senetek upon request and at no cost to
Senetek, with respect to each manufacturing batch of Finished Product,
proof of ingredients used in the manufacture, with a certificate of
analysis for such Finished Product. Panion shall maintain or cause its
contract manufacturer(s) to maintain full and accurate books and records
with respect to all units of Finished Product manufactured as well as
all kinetin raw material not incorporated in Finished Product as a
result of storage, handling or manufacturing defects. Upon reasonable
notice, Panion shall permit representatives of Senetek to observe all
quality control testing and audit all manufacturing records and quality
control documentation related to the Finished Product. The costs of any
such audit shall be born by Senetek unless such audit documents an error
of more than five (5) percent during the period covered by the audit, in
which case such costs shall be reimbursed by Panion.
x. Xxxxxx will begin marketing Finished Products in the Republic
of China not later than June 30, 2003 and in the Peoples' Republic of
China not later than September 30, 2003.
6. COMPLIANCE WITH LAWS.
Senetek shall comply with all laws, regulations, ordinances, orders,
injunctions, decrees and requirements applicable to the manufacturing,
storage, shipment and delivery F.O.B of kinetin compound and Senetek
Products hereunder, and Panion shall comply with all laws, regulations,
ordinances, orders, injunctions, decrees and requirements applicable to
the importing of and payment for such kinetin compound and Senetek
Products, the manufacturing, packaging, storage, shipment, marketing,
advertising, sale and export of all Finished Products manufactured
pursuant to the license granted herein and the storage, shipment,
marketing, advertising, sale and export of Senetek Products purchased
hereunder. Without limiting the foregoing, Panion shall manufacture the
Finished Products in full compliance with all applicable good
manufacturing practices requirements for the Territory, shall conduct
appropriate stability testing of such products, shall maintain and
implement appropriate quality control and quality assurance procedures
for all raw materials and components, whether produced internally or
supplied by vendors, and all bulks, work in process and finished goods,
shall package, label and advertise such products marketed and sold by it
in accordance with all applicable legal requirements and in a manner not
infringing or violating any intellectual property or trade rights of
third persons, and obtain and maintain all marketing approvals,
registrations or other permits necessary for the lawful manufacture,
packaging, storage, shipment and export, and for its marketing and sale
of such products, in the Authorized Channel within the Territory.
7. RECALLS.
In the event any Finished Product(s) manufactured and/or sold by Panion
or any Senetek Products purchased by Panion pursuant to this Agreement
must be recalled from distribution by reason of failure to meet any
requirements of law or otherwise, Panion shall have the sole
responsibility to conduct the activities necessary for such a recall,
with the reasonable assistance of Senetek to the extent necessary and
requested. Senetek shall payor reimburse Panion for the costs of any
such
recall to the extent that it is necessitated by an act or omission for
which Senetek is responsible to indemnify Panion pursuant to Section 9d.
In all other cases, Panion shall pay all such costs and reimburse
Senetek for its expenses in providing any reasonable assistance
requested by Panion.
8. RECORDS/INFRINGEMENT/RECOVERY.
a. Books and Records. Panion shall maintain books and records in
accordance with generally accepted accounting and good manufacturing
practices standards reflecting all amounts included in its calculation
of Purchase Price payable pursuant to Section 4, and shall provide
Senetek reasonable access, with at least (10) days prior notice and at
times not unreasonably disruptive of Panion's operations, to conduct
audits thereof. No more than one such audit shall be conducted during
any twelve (12) month period unless an audit documents a deficiency in
Purchase Price due of more than five (5) percent, in which event audits
may be conducted semi-annually thereafter until such audits fail to
document such a deficiency. The costs of any such audit shall be borne
by Senetek unless such audit documents a deficiency of more than five
(5) percent, in which case such costs shall be reimbursed by Panion.
b. Notification of Infringement. During the Term, each party
shall promptly advise the other in writing of any infringement,
imitation or act by third parties inconsistent with the ownership of and
rights of Senetek to the Patent or any act of unfair competition by
third parties with respect to the Finished Products (any of the
foregoing shall be referred to as an "infringement") wherever and
whenever such infringement or act shall come to the attention of such
party. If such infringement occurs within the Territory, Senetek shall
promptly take such commercially reasonable action as is required to
restrain such infringement or otherwise enforce its rights and Panion
shall cooperate fully with the Senetek in such action and, if so
requested, shall join with Senetek as a party to any appropriate legal
proceedings for such purpose. Senetek shall bear all expenses in
connection with the foregoing. In the event that within a reasonable
time after Senetek becomes aware of such infringement within the
Territory, Senetek fails to take appropriate and diligent action with
respect to such infringement, Panion shall have the right, to the extent
permitted by law, to institute an action for infringement at its own
expense, and in its own name, or in the name of any of its Affiliates
and the right to enforce and collect any judgment thereon, subject to
the following paragraph.
c. Recovery. Any recovery by either party as a result of any
claim, demand, litigation or other action contemplated by clause b.
above or any settlement thereof shall first be used to reimburse each
party for the reasonable costs of the action borne by such party (or, if
the recovery is less than the aggregate costs of such action, shall be
distributed between the parties in proportion to the costs of the action
borne by each of the parties), with the remaining amount, if any, to be
paid to Senetek.
9. INSURANCE/RISK OF LOSS/INDEMNIFICATION.
a. Insurance. During the term of this Agreement, Senetek and
Panion shall each maintain at their own cost and expense, commercial
general liability insurance including coverage for products/completed
operations with annual limits of liability in an amount not less than
$1,000,000 per occurrence, $2,000,000 general aggregate; and $5,000,000
products/completed operations aggregate, and Panion shall maintain at
its own cost and expense insurance of not less than $1,000,000 per
occurrence, $2,000,000 aggregate, covering the selling price value of
Finished Products in its possession or control, in each case with an
insurance company having a current A.M. Best rating of B+ or better. The
insurance of each Party shall name the other Party
as an additional insured under the Broad Form Vendor Endorsement. The
insurance shall be primary to and non-contributory with any insurance
maintained by the other Party.
b. Interruption. During the term of this Agreement Senetek shall
notify Panion in writing within 24 hours, or as soon as practicable, of
a major business interruption and/or a natural catastrophe that may
prevent or delay the delivery of kinetin substance or Senetek Products
to Panion, and Panion shall notify Senetek in writing within 24 hours,
or as soon as practicable, of a major business interruption and/or a
natural catastrophe that may prevent or delay the receipt of kinetin
compound from Senetek or Panion's manufacture or sale of Finished
Product or purchase and resale of Senetek Products.
c. Loss. All risk of loss or damage to the kinetin compound or
Senetek Products from any cause whatsoever shall be borne by Senetek
until delivery of the kinetin compound or Senetek Products to Panion's
carrier F.O.B Senetek's point of shipment.
d. Indemnification by Senetek. Senetek shall indemnify Panion
and defend and hold Panion and Panion's officers, directors, employees
and agents harmless from any and all liability, damage, loss, costs or
expenses, including reasonable attorneys' fees, resulting from claims
made by any person in connection with the use of the kinetin compound
and/or Finished Products to the extent such claims arise out of the
negligence or willful misconduct of, or breach of any of its
representations, warranties or covenants in this Agreement by, Senetek.
e. Indemnification by Panion. Panion shall indemnify Senetek and
defend and hold Senetek's and Senetek's officers, directors, employees
and agents harmless from any and all liability, damage, loss, costs or
expenses, including reasonable attorneys' fees, resulting from claims
made by any person in connection with the use of the kinetin compound,
and/or the Finished Products to the extent such claims arise out of the
negligence or willful misconduct of, or breach of any of its
representations, warranties or covenants in this Agreement by, Panion.
f. Consequential Damages. Except for claims that include
consequential damages paid to persons that are not Affiliates of an
indemnified party, neither Party shall be liable to the other for
consequential damages, lost profits, injury to reputation, or similar
claims. Except for claims by third parties, and except as provided in
Section 1 above relating to Recalls, under no circumstances shall
Senetek or its Affiliates have any liability arising from this Agreement
in excess of the highest aggregate amount paid to Senetek by Panion over
the course of any two contract year periods.
10. WARRANTIES
a. By Each Party. Each party warrants that it is duly authorized
to enter into and fully perform all of its obligations under this
Agreement and that the same do not and will not violate or conflict with
any commitment or obligation to which it is a party or any statute,
rule, regulation, ordinance, code, order, judgment, ruling, decree or
award to which it is a party or which is binding upon it.
b. By Senetek. Senetek warrants that the kinetin compound and
Senetek Products supplied to Panion pursuant to this Agreement, at the
time delivered to and accepted by Panion's carrier, will (i) be free
from defects in manufacturing and materials; (ii) shall not be
adulterated under the meaning of established local regulations; (iii)
shall be manufactured and packaged in a manner which complies with
applicable local regulations; and (iv) shall be fit for use in or as
human skin care products. In addition, Senetek warrants that no third
party has been granted a
license to manufacture or sell products containing kinetin in the
Authorized " Channel within the Territory on terms with respect to
payments to Senetek that are more favorable to such third party than are
the terms of this Agreement to Panion, and covenants that during the
Term Senetek will not grant such a license to any third party to
manufacture or sell products containing kinetin in the Authorized
Channel within the Territory.
c. By Panion. Panion warrants that the finished Products, at the
time that they are sold by Panion or its Affiliates, will (i) conform to
the warranties set forth in Section l0b. above and (ii) shall be
manufactured and packaged in a manner which complies with the all
regulatory requirements applicable in each respective country of sale.
11. CONFIDENTIALITY.
Senetek and Panion have entered into a Mutual Nondisclosure Agreement
("MNDA") in the form attached hereto as Schedule 11, and the same is
incorporated herein by reference. The provisions of such MNDA shall
apply to this Agreement and shall remain in full force and effect during
the Term of this Agreement and shall survive the expiration or
termination of this Agreement for a period of five (5) years after such
expiration or termination regardless of any expiration or termination
provision of such MNDA.
12. TERMINATION.
a. This Agreement may be terminated immediately by either Party
in the case of a material breach by the other Party of anyone or more of
the terms of this Agreement which is not remedied within thirty (30)
days after receipt by the breaching party of written notice of the
breach as sent by the terminating Party, or if such breach cannot
reasonably be cured within such thirty (30) day period, if the breaching
party has failed to commence such cure within such period and diligently
prosecute such cure to completion within a reasonable time thereafter.
b. This Agreement may also be terminated immediately by either
Party if the other Party files a petition in bankruptcy or a petition in
bankruptcy is filed against the other Party which is not vacated within
sixty (60) days or the other Party becomes insolvent or makes an
assignment for the benefit of creditors or any arrangement pursuant to
any bankruptcy law;
c. This Agreement may be terminated by Panion for any or no
reason, with or without cause, upon giving at least ninety (90) days
prior written notice. Notwithstanding Panion's termination of the
Agreement, it shall be responsible for accepting and paying for any
kinetin compound or Senetek Products under a Panion Purchase Order in
effect as of the date of notice of termination. Panion shall not be
responsible for any other charges or damages in the event of termination
pursuant to this paragraph.
13. FORCE MAJEURE.
Neither Party shall be liable for delay or failure in the performance of
any of its obligations under this Agreement if and to the extent such
delay or failure is due to circumstances beyond the reasonable control
of such Party, including but not limited to fires, floods, explosions,
accidents, acts of God, war, riot, strike, lockout or other concerted
acts of workers, acts of government and shortages of materials;
provided, however, that the party claiming that "force majeure" has
affected its performance shall give notice to the other party within ten
(10) days of becoming aware of the occurrence of force majeure, giving
full particulars of the cause or event and the date of first occurrence
thereof, and provided, further, that no force majeure event shall affect
Panion's
obligation to make timely payment of the cost of kinetin compound
supplied by Senetek or of the royalties due on sales of Finished
Products. The Party claiming force majeure shall use its best efforts to
eliminate or prevent the cause so as to continue performing its
obligations under this Agreement.
14. NOTICES.
Any notice required or permitted to be given under this Agreement shall
be in writing and shall be given by sending such notice properly
addressed to the other Party's address shown below by prepaid registered
or certified mail, return receipt requested, or by overnight delivery
service by the U.S. Post Office or private carrier. All such notices
shall be deemed given when received:
If to Panion: Panion & BF Biotech Inc
7fNo. 000 Xxx.0 Xxxxx Xxxxx X. Xx.
Xxxxxx, Xxxxxx, ~.O.C.
Attn: Xxxxxxx X.X. Xxxxxx, Executive President
If to Senetek: Senetek PLC
000 Xxxxxxx Xxxx Xxxx, XX 00000
Attn: Xxxxx X. Xxxxxxx, Chairman and CEO
15. INVENTIONS AND DISCOVERIES.
a. If during the Term and as a direct result of the Parties'
performance of this Agreement, either Panion employees or agents or
Senetek employees or agents conceive a discovery or invention (an
"Improvement"), Panion and Senetek agree to negotiate in good faith with
respect to the ownership, rights, use, reduction to practice and
commercialization of such Improvement, the details of which will
contained in a development agreement between the parties, provided
however that the term "Improvement" shall not include, and Panion shall
have no rights with respect to, any discovery or invention that, if
reduced to practice, would infringe any of the valid claims of the
Patent. Both Parties further agree that prior to a joint agreement
covering an Improvement, neither Party will pursue the patenting,
development or commercialization of such new Improvement without the
express written permission of the other Party.
b. When and if the Parties shall have entered into a development
agreement as provided in paragraph a. above, each Party agrees to assign
to the other or to license or cross-license, as appropriate, the rights
to the Improvement covered thereby consistent with the above-identified
ownership rights, in the Territory (and, in the case of any discovery or
invention that is excluded from the definition of "Improvement" by the
proviso in paragraph a. above, Panion agrees to assign to Senetek all
rights related thereto). Should Senetek or Panion decide to apply for
patent protection on any Improvement to which it has rights as above
described, the other Party agrees to assist such Party if requested, at
such Party's expense, to obtain patent protection, including executing
any documents required. In the case of solely-owned Improvements the
party that owns such Improvement shall, at its own expense, have the
right to apply for such patent protection and to prosecute applications
for patents through attorneys and agents of its own choosing.
16. ADDITIONAL PROVISIONS.
a. No Assignment. Neither Party may assign this Agreement
without the prior written consent of the other Party hereto, which
consent shall not be unreasonably withheld. Irrespective of the
foregoing, either Party may assign this Agreement to an Affiliate in the
event of a non-bankruptcy
related internal reorganization of the corporate structure without the
consent of the other Party.
b. Enforceability. The Parties hereto agree that this Agreement
shall be legally binding upon them and their respective legal
representatives, successors and assigns.
c. Entire Agreement. Except as provided in paragraph 12 of this
Agreement, this Agreement contains the entire understanding of the
Parties relating to the subject matter hereof, and supersedes all prior
discussions and agreements between them.
d. Governing Law. This Agreement shall be governed by and
interpreted in accordance with the laws of the State of California. The
Parties agree that any and all disputes or claims arising out of or
relating to this Agreement shall be resolved through binding arbitration
by a single independent arbitrator appointed by, and in accordance with
the commercial arbitration rules of, the American Arbitration
Association, which shall be final and non-appealable, provided however
that prior to or in conjunction with any such arbitration proceeding
either Party may seek a judicial restraining order or temporary or final
injunction to protect against irreparable harm from any breach or
threatened breach of this Agreement by the other Party. The Parties
hereby consent to the exclusive jurisdiction of the state and federal
courts of the State of California for the enforcement of any such award
and the granting of injunctive relief as above provided.
e. Waiver. A waiver of any term or condition of this Agreement
in anyone instance shall not be deemed to continue to be a waiver of
such term or, condition for any similar instance in the future or of
any subsequent breach\ hereof.
f. Announcements. The parties will issue an agreed upon press
release upon the execution of this Agreement. Except for such release
and except as may otherwise be required by law or the listing rules of
any exchange on which either party's securities may be listed or quoted,
for which the releasing party shall provide prior notice to the other
party and the opportunity to comment on any required disclosure, neither
party will disclose the terms of this Agreement to any other person;
provided that each party may make such disclosure of the terms of this
Agreement to its employees and agents as is necessary to permit such
party to perform its obligations under this Agreement; provided that any
such employee or agent agrees to maintain the confidentiality of this
Agreement; and provided that at either party may make such disclosures
of the terms of this Agreement as are necessary to enter into license
and other agreements that do not conflict with the terms of this
Agreement. Panion acknowledges that this Agreement may be deemed to be a
"material contract" as that term is defined by Item 601 (b)(10) of
Regulation S-K, and that Senetek may therefore be required to file such
document as an exhibit to reports or registration statements filed under
the United States Securities Act or Securities Exchange Act, provided
that Senetek shall redact commercial terms and file for confidential
treatment to the extent permitted by applicable rules of the United
States Securities and Exchange Commission.
IN WITNESS WHEREOF, the Parties hereto have read and executed this Agreement as
of the day and year first above written.
SENETEK PLC PANION & BF BIOTECH INC
By: By:
/s/
---------------------- ---------------------------
Xxxxxxx X.X. Xxxxxx
Executive President
Panion & BF Biotech Inc
SCHEDULE lb.
PATENTS
A. Senetek Patents
Application
Title Country Status No. Patent No. Patent Date
Method and Composition New Zealand Granted 247836 247836 8/8/97
for Ameliorating the
Adverse Effects of Aging
Method and Composition Argentina Granted 320120 250273 1/28/97
for Ameliorating the
Adverse Effects of Aging
Method and Composition Australia Granted 81884/91 666836 7/9/96
for Ameliorating the
Adverse Effects of Aging
Method and Composition Brazil Pending 2108368
for Ameliorating the
Adverse Effects of Aging
Method and Composition Canada Pending 2108369
for Ameliorating the
Adverse Effects of Aging
Method and Composition China Granted 91104472.8 ZL91104472 6/3/96
for Ameliorating the
Adverse Effects of Aging
Method and Composition European Pending 91912579.9
for Ameliorating the Patent
Adverse Effects of Aging Office
Method and Composition Finland Pending 935039
for Ameliorating the
Adverse Effects of Aging
Method and Composition India Granted 409/MAS/91 172210 5/29/91
For Ameliorating the
Adverse Effects of Aging
Method and Composition Ireland Pending 1715/91
for Ameliorating the Republic of
Adverse Effects of Aging
Method and Composition Israel Granted 98204 98204 2/12/95
or Ameliorating the
Adverse Effects of Aging
Method and Composition Japan Pending 512066/91
for Ameliorating the
Adverse Effects of Aging
Method and Composition Korea Granted 703452/93 196660 2/22/99
for Ameliorating the South
Adverse Effects of Aging
Method and Composition Malaysia Pending PI9100865
for Ameliorating the
Adverse Effects of Aging
Method and Composition Mexico Granted 25,886 178834 7/2/95
for Ameliorating the
Adverse Effects of Aging
Method and Composition New Granted 238210 238210 10/1/93
for Ameliorating the Zealand
Adverse Effects of Aging
Method and Composition Norway Pending 934115
for Ameliorating the
Adverse Effects of Aging
Method and Composition Philippines Pending 42893
for Ameliorating the
Adverse Effects of Aging
Method and Composition Saudi Pending 91120262
for Ameliorating the Arabia
Adverse Effects of Aging
Method and Composition Taiwan Granted 80105893 76376 5/23/96
for Ameliorating the
Adverse Effects of Aging
Method and Composition Venezuela Pending 727
for Ameliorating the
Adverse Effects of Aging
Method and Composition U.S. Granted 206,041 5,371,089 12/6/94
for Ameliorating the
Adverse Effects of Aging
Method and Composition U.S. Granted 292,721 5,602,139 2/11/97
for Ameliorating the
Adverse Effects of Aging
Method and Composition U.S. Granted 314,361 5,614,407 3/25/97
for Ameliorating the
Adverse Effects of Aging
SCHEDULE B
SENETEK LICENSEES
ICN Pharmaceuticals, Inc.
Revlon Inc.
ShakIee Inc.
MedBeauty, XX
Xxxxxx Pharma, Inc.
Allure Cosmetics
Enprani Co, Ltd.
Xxxx-Na-Bodhaige (dba The Body Shop)
