Exhibit 00.XX
THIS AGREEMENT, made this 1st day of November, 1998, by and between:
Xxxxxx Xxxxxx, Ph.D. and Ridge Scientific Enterprises, Inc. (jointly and
severally "XXXXXX") both residing at 00 Xxxxx Xxxxx, Xxxxxxx Xxxxx, X.X. 00000;
and
Hydromer, Inc., a New Jersey Company with its principle place of business at 00
Xxxxxxxxxx Xxxxxxx, Xxxxxxxxxx, X.X. 00000 ("HYDROMER").
WHEREAS, XXXXXX owns patent rights and possesses know-how relating to
hydrogel polymer gels, hereinafter defined; and
WHEREAS, HYDROMER desires to obtain an exclusive license from XXXXXX under
those patent rights and access to the know-how to enable HYDROMER to make, use,
sell, offer for sale or import articles using the PATENT RIGHTS as defined
herein below.
NOW, THEREFORE, in consideration of the premises and the performance of
the mutual covenants herein contained, the parties hereto agree to as follows:
1.0 DEFINITIONS. For the purpose of this AGREEMENT, the following shall
apply:
1.1 "PATENT RIGHTS" means United States Patents 5,306,504 and
5,645,855 and foreign patents and patent applications based thereon in Schedule
"A" and any division, continuation, continuation-in-part, patent of addition,
confirmation or reissue of said patents and applications, and any improvements
thereto, as provided in Article 5.0.
1.2 "KNOW-HOW" means all of XXXXXX'X trade secrets, technical data
and information, and other technical accumulated information, including, but not
limited to, any devices, processes, methods, control procedures, formulas,
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clinical tests, and use intelligence, drawings, specifications, research and
development reports, processed data or special equipment which are useful to
assist HYDROMER to make, use, sell promote for sale and import any article or
products using the PATENT RIGHTS, which XXXXXX is free to disclose.
1.3 "COMMERCIALIZATION" means the date on which any articles or
products using the PATENT RIGHTS are first billed to a third party, or a
sublicense of the PATENT RIGHTS is executed with any other third party, in the
"TERRITORY"
1.4 "NET SALES PRICE" shall mean the gross invoice price at which
products or articles using the PATENT RIGHTS are sold, less discounts allowed to
distributors, discounts allowed dealers, refunds, replacements or credits
allowed to purchasers for return of products or articles using the PATENT RIGHTS
or as reimbursement for damaged products or articles using the PATENT RIGHTS,
freight, postage, insurance and other shipping charges, sales and use taxes,
customs duties and any other governmental charges imposed on the production,
importation, use or sale of products or articles using the PATENT RIGHTS except
income taxes. Should HYDROMER sell products or articles using the PATENT RIGHTS
in combination with other components or products, then the net sales price
computation shall be based on the average net sales price charged during the
applicable quarter by HYDROMER for the products or articles using the PATENT
RIGHTS when separately invoiced or priced. In the event the products or articles
using the PATENT RIGHTS has not been separately invoiced or priced during the
applicable quarterly period, net sales computation shall be based on the fair
market price which the seller would charge for the products or articles using
the PATENT RIGHTS to an unrelated purchaser in an arms length transaction, FOB
plant of manufacture thereof.
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1.5 "TERRITORY" means worldwide.
2.0 GRANT.
2.1 XXXXXX hereby grants HYDROMER an exclusive license (even to the
exclusion of XXXXXX) to make, use, sell, offer for sale and import products or
articles using the PATENT RIGHTS and KNOW HOW in the TERRITORY without
limitation or granting sublicenses to any third party under any terms as long as
there is no additional burden on XXXXXX.
2.2 On or before January 1, 2001, HYDROMER shall have
commercialized the PATENT RIGHTS or the parties hereto shall have agreed to a
plan of COMMERCIALIZATION therefor. If products or articles using the PATENT
RIGHTS are not commercialized, or the parties hereto shall not have agreed to a
plan of COMMERCIALIZATION, on or before said date, then XXXXXX may elect to
cancel this AGREEMENT upon thirty (30) days advance written notice to LICENSE.
2.3 HYDROMER shall use its best efforts to exploit the PATENT
RIGHTS and other rights granted or it shall be a material breach.
3.0 CONSIDERATION.
3.1. As consideration for this grant of exclusive rights, HYDROMER
will pay any outstanding legal fees to perfect foreign PATENT RIGHTS and
maintain U.S. PATENT RIGHTS incurred after August 15, 1998. (Such obligation
from August 15, 1998 to December 31, 1998 will be limited to $20,000.) In
addition HYDROMER will be responsible for prosecution or maintenance of any U.S.
or foreign PATENT RIGHTS after the date of this Agreement and such prosecution
shall be done by counsel of Hydromer's choosing. XXXXXX will execute any and all
documents required to accomplish the purposes of this license including but not
limited to a change in patent counsel. Beginning January 1,
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1999, HYDROMER shall be entitled to a credit against future compensation for
sublicenses of up to $10,000 or the actual cost if less then $10,000 to maintain
or prosecute of the PATENT RIGHTS in each calendar year this Agreement is in
effect. The credits for sublicenses in this section 3.1 shall accumulate over
the term of this Agreement and be used in future calendar years as credits
against future compensation for sublicenses.
3.2 A running royalty on sales ("royalty") and/or compensation on
royalty received by HYDROMER ("compensation") payable quarterly will accrue from
HYDROMER to XXXXXX as set forth in Schedule B.
3.3 The exclusive grant of rights under this AGREEMENT shall be
dependent on COMMERCIALIZATION of the PATENT RIGHTS and the payment by HYDROMER
to XXXXXX of royalties and compensation and minimum royalties and compensation
for each calendar year subsequent to COMMERCIALIZATION. Such minimums are hereby
established as follows:
For calendar year 2000 $ 10,000 total of royalty plus compensation
For calendar year 2001 $ 15,000 total of royalty plus compensation
For calendar year 2002 and each year thereafter through the quarter
of the last to expire PATENT RIGHTS $20,000 total royalty plus
compensation.
Beginning January 1, 1999 any credits for prosecution or maintenance of the
PATENT RIGHTS as set forth in section 3.1 shall be regarded as credits against
compensation for sublicenses as if paid.
If HYDROMER fails to pay minimums in respect of any calendar year, then
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XXXXXX may terminate the exclusive grant of rights under section 2.1 and convert
this AGREEMENT to a non-exclusive grant, upon thirty (30) days' written notice
to HYDROMER. HYDROMER may render such notice ineffective by payment of an amount
which when added to amounts actually paid, equals the minimums.
4.0 ACCOUNTING. For accounting purposes, quarters will start on the first
day of each January, April, July, and October, following the date of execution
of this AGREEMENT and end on the last day of the next succeeding March, June,
September, and December, respectively. Within forty-five (45) days after the
close of each quarter hereof, HYDROMER shall render to XXXXXX a written
accounting with respect to all royalty and compensation payments due hereunder,
and with such accounting, pay in full in United States dollars all amounts due
in respect of such quarter. The rate of exchange to be used in computing the
amount of local currency equivalent to the United States Dollars due to XXXXXX
as royalty and/or compensation shall be the commercial exchange rate in effect
in New York, New York, on the date on which payment is due. Such report shall
indicate for such quarter the number of units, the NET SALES PRICE, and the
amount of sales by HYDROMER product code of products or articles using the
PATENT RIGHTS sold by HYDROMER with respect to which royalty payments are due or
an accounting of the royalties received from sub-licensees. In case no payment
is due for any quarter, HYDROMER shall so report. HYDROMER shall keep accurate
records in sufficient detail to enable the aforesaid payments to be determined.
At XXXXXX'X request, HYDROMER, shall permit an independent certified public
account acceptable to HYDROMER to have access once in each calendar year, during
regular business hours and upon reasonable notice to HYDROMER, to such of the
records of HYDROMER as may be necessary to verify the accuracy of the reports
required under this AGREEMENT; provided, however
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said accountant shall keep all information of HYDROMER confidential and shall
disclose to XXXXXX only the amount of any deficiency found. In the event the
deficiency exceeds 5% of royalty plus compensation payments audited, HYDROMER
shall bear the full costs of the audit.
5.0 IMPROVEMENT. During the term of this AGREEMENT, XXXXXX shall promptly
and fully disclose to HYDROMER any development or improvement relating to the
use or practicing of the PATENT RIGHTS or related KNOW-HOW conceived and/or
reduced to practice by XXXXXX which XXXXXX is free to disclose ("XXXXXX
IMPROVEMENT"). XXXXXX shall automatically add such XXXXXX IMPROVEMENT to this
AGREEMENT.
6.0 SECRECY. Each party undertakes to keep secret and confidential and not
to disclose to any third party, except as it is necessary in carrying out the
purposes of this AGREEMENT, during the term of this AGREEMENT and for a period
of ten (10) years thereafter any information, data or KNOW-HOW disclosed to it
by the other party except:
6.1 Information, data and KNOW-HOW which at the time of disclosure
is in the public domain or publicly known or available;
6.2 Information, data or KNOW-HOW which, after disclosure, becomes
part of the public domain or publicly known or available by publication or
otherwise, except by breach of this AGREEMENT by the receiving party;
6.3 Information, data or KNOW-HOW which the receiver receives from
a third party; provided, however, that such information was not obtained by said
third party from the other party; and
6.4 Information, data and KNOW-HOW which the receiver derives
independently of such disclosure.
7.0 TECHNICAL ASSISTANCE. Promptly following the execution of this
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AGREEMENT and on a continuing basis during the term of this AGREEMENT, XXXXXX
shall:
7.1 Furnish to HYDROMER all KNOW-HOW;
7.2 Furnish his services as may be necessary or appropriate in
order to fully (1) to disclose to HYDROMER all details and particulars of the
KNOW-HOW, and in particular, but without limitation, the manufacturing methods
contained therein, (2) to consult with HYDROMER technical personnel concerning
the manufacture, assembly, raw material purchase and other tasks required for
the production and applications of articles/products covered by the PATENT
RIGHTS, including subsequent improvements thereto; provided HYDROMER shall
reimburse XXXXXX for the reasonable travel and living expenses incurred for
travel requested by HYDROMER hereunder.
8.0 WARRANTY/REPRESENTATIONS.
8.1 XXXXXX represents that he is the owner of all right, title and
interest in and to the PATENT RIGHTS and has the unrestricted power and
authority to grant the licenses and give access to the KNOW-HOW as provided
herein. XXXXXX represents that as of the date of this AGREEMENT it has no
knowledge of any pending or threatened litigation against XXXXXX which might
impair the rights licensed hereunder. No other third parties have any rights to
the PATENT RIGHTS.
8.2 XXXXXX also represents:
a. The U.S. Patents are still in effect as of the date of this Agreement.
b. There are no known acts of infringement against the claims of the
Licensed Patents by third parties as of the date of this Agreement.
c. No patent rights or patent application rights have been lost in any
sovereignty by either missing a filing date or being rejected other then
those
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set forth on exhibit C for the sovereignties of interest in exhibit D.
d. No known impediments exist on the date of this license to prosecuting
patent applications for the PATENT RIGHTS in any sovereignty, except those
on Schedule C for the sovereignties of interest in Schedule D.
8.3 In the event that any representations in this section 8 are not
true, HYDROMER is excused from paying any royalties to XXXXXX until such facts
indicate the representations are true.
9.0 EFFECTIVE DATE AND TERM.
9.1 This AGREEMENT will become effective on the day and year first
written above and expire upon the expiration of the last to expire of the PATENT
RIGHTS, except that after expiration of the U.S. PATENT RIGHTS, royalties and/or
compensation will continue to be paid only on sales of products or articles or
sublicenses using the PATENT RIGHTS in countries in which unexpired patents are
in effect. After such expiration of this AGREEMENT, HYDROMER shall have the
right to make, use, sell, offer for sale or import products or articles using
the PATENT RIGHTS without the further payment or otherwise accounting to XXXXXX.
9.2 If either party hereto shall commit any breach of the
provisions of this AGREEMENT, and shall not, within thirty (30) days' written
notice of such breach by the other party hereto, correct such breach then such
other party may, by written notice to the breaching party, immediately terminate
this AGREEMENT. The right of either party to take such action shall not be
affected in any way by its failure to take any action with respect to any
previous breach.
9.3 HYDROMER shall have the right to terminate this AGREEMENT on
sixty (60) days advance written notice to XXXXXX. In the event HYDROMER
terminates this Agreement, its responsibilities to prosecute or maintain the
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PATENT RIGHTS shall end on the date said advanced written notice to terminate is
received by XXXXXX.
9.4 If either party should exercise its right to terminate this
AGREEMENT, under any applicable provision of this AGREEMENT, then HYDROMER'S
rights and licenses under Section 2.0 hereof shall immediately terminate,
including its right to make further use of the KNOW-HOW acquired from XXXXXX
under this AGREEMENT, and which HYDROMER is obliged to hold in confidence
pursuant to Section 6.0 of this AGREEMENT. Termination of this AGREEMENT shall
not relieve either party of obligations incurred prior to termination.
10.0 INFRINGEMENT.
10.1 In the event XXXXXX shall fail, within thirty (30) days of
notice by HYDROMER of any material infringement, direct or contributory, by a
third party of rights granted to HYDROMER in Section 2.0 hereunder, to institute
legal action to end such infringement, HYDROMER shall have the right to suspend
the accrual of running royalties and/or compensation in the country where such
infringement is occurring for the period of such infringement. HYDROMER shall
also have the right, at that time, and at its option, to initiate and prosecute
such action in its own or XXXXXX'X name, but at HYDROMER'S sole cost and
expense; provided, however, that XXXXXX cooperates fully with HYDROMER in the
initiation and prosecution of such action.
10.2 Should any patent infringement action be brought against
HYDROMER in any country of the TERRITORY as a result of HYDROMER'S exercising of
rights granted to it hereunder, then in respect of such country, HYDROMER shall
have the right to suspend payment of royalties and/or compensation due to XXXXXX
until such time as the action is resolved, although
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such royalties and/or compensation shall continue to accrue. If the action is
resolved favorably to HYDROMER, all accrued royalties and/or compensation shall
immediately be paid to XXXXXX. If the action is resolved unfavorably to
HYDROMER, then accrued royalties and/or compensation shall be applied to costs
of litigation and damages, if any, incurred by HYDROMER. Any excess shall be
paid to XXXXXX.
11.0 GENERAL.
11.1 ASSIGNMENT. This AGREEMENT and all rights and obligations
hereunder shall be binding upon and shall inure to the benefit of the respective
successors of XXXXXX and HYDROMER. Neither HYDROMER nor XXXXXX shall have the
right to assign any or all of its rights and obligations under this AGREEMENT
without the prior written consent of the other party, except that XXXXXX'X
consent shall not be required in the event of an assignment or transfer of the
AGREEMENT by HYDROMER to an affiliate of HYDROMER, who undertakes to accept all
terms and conditions hereof and carry out all obligations of HYDROMER hereunder.
11.2 ENTIRE AGREEMENT. This AGREEMENT contains the entire agreement
between the parties hereto in respect of the subject matter hereof. This
AGREEMENT may not be released, discharged, abandoned, changed or modified in any
manner except by an instrument in writing signed by a duly authorized officer or
representative of each of the parties hereto.
11.3 WAIVER AND SEVERABILITY. The waiver by either of the parties
of any breach of any provision hereof by the other party shall not be construed
to be a waiver of any succeeding breach of such provision of a waiver of the
provision itself.
11.4 GOVERNING LAW. This AGREEMENT shall be construed and
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interpreted in accordance with the laws of the State of New Jersey and the
courts of the State of New Jersey shall have jurisdiction over the parties
hereto and all matters arising hereunder.
11.5 INVALIDITY. If any of the provisions of this AGREEMENT, or
part thereof, is held to be invalid or unenforceable, such invalidity or
unenforceability shall not affect any other provision of this AGREEMENT.
11.6 NOTICE. Any notice required or to be given hereunder shall be
considered delivered when deposited, postage prepaid, in the United States mail,
registered mail, to the address of the other party as specified below or as
subsequently modified in writing by the parties.
IF TO HYDROMER:
Hydromer, Inc.
00 Xxxxxxxxxx Xxxxxxx
Xxxxxxxxxx, Xxx Xxxxxx 00000
Attn: Xxxxxxx X. Xxxx, President
IF TO XXXXXX:
Xxxxxx X. Xxxxxx
00 Xxxxx Xxxxx
Xxxxxxx Xxxxx, X.X. 00000
And
President
Ridge Scientific Enterprises, Inc.
00 Xxxxx Xxxxx
Xxxxxxx Xxxxx, X.X. 00000
IN WITNESS WHEREOF, the parties hereto have caused this AGREEMENT to be
executed effective the day and year set forth above.
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HYDROMER, INC.
By:______________________________________
Title:___________________________________
Date:______________________
RIDGE SCIENTIFIC ENTERPRISES, INC.
By:_______________________________________
Title:____________________________________
Date:______________________
XXXXXX X. XXXXXX
By:________________________________________
Date:____________________
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Schedule A:
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Schedule B:
ROYALTIES
Royalties on SALES:
10% on the first U.S. $1,000,000 in sales accumulated over the life of this
agreement.
5% on the balance.
------------------------------------------------
COMPENSATION
Compensation on sub-licenses:
33 1/3% of actual royalties received including any "up front" or minimum
payments required to be paid by a sub-licensee
ANY AND ALL COSTS INCURRED BY HYDROMER FOR EFFORT TO PROSECUTE OR MAINTAIN THE
PATENT RIGHTS ON OR AFTER JANUARY 1, 1999 ARE TO BE CONSIDERED PAYMENTS OF
COMPENSATION FOR SUB-LICENSES (but not a credit against royalties on sales)
PURSUANT TO SECTION 3.1.
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Schedule C
List of lost rights as to "Sovereignties of interest (see Schedule D) on each
patent. Letter written to Xxxxxx'x patent counsel on 10/8/98
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Schedule D
Sovereignties of interest
