EXHIBIT 10.8
PATENT LICENSE AND ROYALTY AGREEMENT
THIS AGREEMENT (the "Agreement") is made by and between OccuLogix
Corporation. a Florida Corporation (the "Licensee"), and Prof Xx. Xxxxxxx
Xxxxxxx ("Xxxxxxx) living in Germany and listed as inventor [along with Prof.
Xx. Xxxxxx Xxxxxxx ("Xxxxxxx") but who is not yet or currently a party to this
Agreement or other license agreement with OccuLogix] in US patent application
09/000,917, which is the parent application of US letters patent 6,245,038
issued June 12, 2001 (the "Patent").
WHEREAS, Xxxxxxx [and Xxxxxxx] are the sole owners of the Patent and
enjoy all of the rights, title and interests therein, and
WHEREAS, Xxxxxxx desires to license any and all of his rights, title
and interests to the Patent and the Patent Rights derived therefrom to Licensee,
and
WHEREAS, Licensee desires to obtain an exclusive license to all of
Xxxxxxx'x interests in the Patent and. the Patent Rights derived therefrom and
to exclusively own the License to any and all of his rights, title, interests
and ownership to the Patent and any and all related patents, rights and
inventions that specifically relate to the Patent whether owned now or at any
time in the future by Xxxxxxx (the "License"), and
WHEREAS, Xxxxxxx shall be eligible to receive any and all
consideration and compensation from the Licensee, such as those pledged to be
made by the Licensee to Xxxxxxx under the terms of this Agreement
NOW THEREFORE, in consideration for guaranteed Advance Royalty
Payments and Royalty Payments as described below, and other good and valuable
consideration, Xxxxxxx does hereby exclusively license, in accordance with the
terms set forth below, unto Licensee, its successors and assigns, Xxxxxxx'x
entire undivided right, title, ownership and interest in and to the Patent and
the invention(s) therein contained (the "Patent Rights"), throughout the
Territory, to be held and enjoyed by Licensee its successors and assigns, the
same as it would have been held and enjoyed by Xxxxxxx if this Exclusive License
and Royalty Agreement had not been made and entered into.
Xxxxxxx recognizes that by signing this Agreement, the combination
of this Agreement and the Agreement between Professor Xx. Xxxxxx Xxxxxxx and
Licensee attached as Exhibit A will collectively constitute an EXCLUSIVE PATENT
LICENSE AND ROYALTY AGREEMENT by which Xxxxxxx and Xxxxxxx xxxxx an exclusive
license in the patent to Licensee including the right to xxx for past
infringement
1. Patent Rights. Shall mean any and all of Xxxxxxx'x rights, title,
ownership and interests in and to US letters patent 6,245,038 and any and
all inventions, modifications, continuations-in-part, extensions,
divisions, improvements, etc. made by Xxxxxxx or his agents, in any and
all areas that relate directly to the Patent, regardless of whether such
inventions or improvements are patentable or may become parented; all
inventions. modifications, continuations-in-part, extensions, divisions,
improvements, etc. shall
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automatically be incorporated herein without the payment of any additional
fees, royalties or any other compensation or considerations of any kind.
2. Representation by Xxxxxxx. Xxxxxxx warrants that he, along with Xxxxxxx as
the joint inventor of United States Patent 6,245,038, exclusively owns and
possesses the Patent and the Patent Rights, and has all right and title
thereto and that this Patent License and Royalty Agreement is made without
encumbrance or threat of future interference by others claiming ownership
therein and that no security interests to any third party exists therein
or any other agreement to the contrary.
3. Representation by Licensee. Licensee represents that it is a bona fide
corporation in good standing in Florida.
4. Advance Royalty Payments. Licensee agrees to pay Xxxxxxx Fifty Thousand
Dollars ($50,000 USD) annually as an advance and credited against any and
all Royalty Payments paid in accordance with this License. Such Advance
Royalty Payments shall be paid to Xxxxxxx and in equal payments of Twelve
Thousand Five-hundred Dollars ($12,500 USD), made quarterly, on or before
the expiration of Forty-five (45) days after the reporting close of each
prior calendar quarter. The initial payment of Twelve Thousand
Five-hundred Dollars ($12,500 USD) shall be due and payable within
Forty-five (45) Days of the Effective Date herein.
5. Royalty Payments. Licensee agrees to pay royalties to Xxxxxxx totaling
One-Half Percent (0,5% in USD). Royalty Payments shall be calculated and
paid based upon Total Net Revenues that Licensee receives from the bona
fide commercial sales of its Products sold in reliance and dependence upon
the validity of the Patent's claims and of the Patent Rights in the
Territory.
6. Accounting and Timing of Royalty Payments. Upon making each Royalty
Payment, Licensee shall provide Xxxxxxx with a summary of the accounting
used to determine the amount of Royalty Payment due. Royalty Payments
shall be made by wire transfer and shall be computed on Total Net Revenues
received by the Licensee by the reporting close of each calendar quarter
and distributed and paid to Xxxxxxx and on a quarterly basis, on or before
the expiration of Forty-five (45) days after the reporting close of each
prior calendar quarter.
7. Failure to Pay by Licensee. Should Licensee fail to make any payments as
required herein, and should the Licensee fail to cure the breach created
thereby, any and all rights, title and ownership to the License provided
to the Licensee under this Agreement shall be forfeited and any and all
such rights, title and ownership to the License shall, upon notice of the
failure to cure the breach, immediately revert to Xxxxxxx, and all monies
paid by Licensee until such date shall be retained by him without
forfeiture.
8. Territory. Shall mean the United States and any other jurisdictions
subject to recognizing any valid claims of the Patent or of the Patent
Rights.
9. Total Net Revenues. Shall mean total gross revenues less any discounts,
rebates, shipping costs, handling costs, transportation insurance costs,
importation fees, and duties
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on any and all Products sold by the Licensee in the Territory and which
are sold in reliance upon and specifically used in accordance with or
subject to any of the valid claims of the Patent.
10. Records. Licensee agrees to keep complete and correct books, accounts and
records according to Generally Accepted Accounting Principles (GAAP)
regulations to facilitate computation of Royalty Payments. Xxxxxxx or his
representatives acceptable to Licensee, shall have a full right of
accounting including the right to confidentially examine Licensee's books
and records, at all reasonable times and upon reasonable notice, for the
purpose of verifying the amount of Royalty Payments due.
11. Products. Shall mean any of Licensee's products, goods or technologies
sold to unaffiliated third parties in the Territory for the purposes of
providing extracorporeal therapies for the treatment of the ophthalmic
diseases as defined by any valid claim(s) of the Patent. In this case,
Licensee's sale of extracorporeal filters and tubing sets for use in any
and all ophthalmic indications.
12. Term. The Royalty Payments shall be due to Xxxxxxx beginning with the
first bona fide commercial sale of any Product in the Territory and may,
at the discretion of Licensee terminate upon the first of any of the
following three events to occur: a) All patents of the Patient Rights
expire, b) All patent claims of the Patent Rights are invalidated, or c) A
similarly fashioned competitive extracorporeal product, method or
technology is commercially introduced in the Territory for use in
ophthalmic indications that could not be deterred by best-efforts
enforcement/infringement proceedings brought by Licensee against the
competitive product, method or technology where such proceedings are made
in reliance in full or in part upon the Patent's claims and or the Patent
Rights.
13. Patent Defense. Licensee shall pay for any and all costs incurred for
patent maintenance, enforcement and defense of the Patent or the Patent
Rights in the Territory.
14. Participation. Xxxxxxx agrees, in consideration of the premises herein,
that his executors and administrators will, at any time upon request,
communicate to the Licensee, its successors and assigns, any facts
relating to said Patent and Patent Rights, and the history thereof known
to him or his successors and assigns, and that he will testify as to the
same in any interference or other proceeding when requested to do so by
the Licensee, its successors and assigns. Any and all costs of such
participation by Xxxxxxx or his successors and assigns shall be borne by
Licensee.
15. Succession. Xxxxxxx binds himself and his heirs, executors,
administrators, employees and legal representatives, as the case may be,
to execute and deliver to the Licensee, its successors and assigns, any
further documents or instruments and to do any and all further acts that
may be deemed necessary by the Licensee, its successors and assigns to
file applications for improvements and inventions in any country where
Licensee may elect to file such application(s), and that may be necessary
to vest in the Licensee, its successors and assigns, the license, rights
or title herein conveyed, or intended so to be, and to enable such title
to be recorded in the United States and or foreign countries where
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such application(s) may be filed. Any and all costs of such participation
by Xxxxxxx or his successors and assigns shall be borne by Licensee.
16. Relationship of the Parties: Indemnification. It is agreed that this
Agreement does not make any Party herein a general or special agent, legal
representative, subsidiary, joint venturer, partner, employee or servant
of any other Party herein for any purpose.
17. Breach and Disputes. Any breaching Party shall have Thirty (30) Days from
the date of notification to cure such breach. Any dispute between the
Parties to this Agreement shall be resolved through binding arbitration,
which shall be governed under the rules and regulations of the American
Arbitration Association.
18. Forum, Venue and Governing Law. This agreement shall be governed and
interpreted under Delaware law (without applying its conflict of law
principles). Exclusive venue for legal proceedings arising hereunder shall
be in Hillsborough County, Florida.
19. Entire Agreement. This Agreement supersedes any prior understanding that
may have been reached between the Parties and encompasses the entire
agreement between the Licensee and Xxxxxxx with respect to the Patent and
the Patent Rights. The terms of this Agreement are confidential and shall
be maintained by the Parties in accordance thereby.
20. Modification. This Agreement cannot be modified except in writing executed
mutually between the Parties.
21. Additional Consideration. This Agreement shall be transformed into an
EXCLUSIVE PATENT LICENSE and ROYALTY AGREEMENT under the provision that a
separate Agreement with substantially identical terms and conditions shall
be concluded with Prof. Xx. Xxxxxx Xxxxxxx (Xxxxxxx) on or before May 31,
2002. If such Agreement is not concluded by such date, this Agreement
shall remain in full force and effect as a NONEXCLUSIVE PATENT LICENSE and
ROYALTY AGREEMENT between Xxxxxxx and Licensee.
IN WITNESS WHEREOF, the Parties have signed and executed this
Agreement and have caused this Agreement to become effective as of the Effective
Date last executed below.
OCCULOGIX CORPORATION prof. Xx. XXXXXXX XXXXXXX
By: /s/ Xxxxxxx Xxxxx By: /s/ Xx. Xxxxxxx Xxxxxxx
------------------------------- ------------------------
Title: Chairman, President and CEO Title:
---------------------------- -----------------------
Date: May 6, 2002 Date: May 6, 2002
--------------------------- -------------------------
PATENT LICENSE AND ROYALTY AGREEMENT (EXHIBIT A)
THIS AGREEMENT (the "Agreement") is made by and between OccuLogix
Corporation, a Florida Corporation (the "Licensee"), and living in Germany and
listed as inventor [along with Prof. Xx. Xxxxxxx Xxxxxxx ("Xxxxxxx") in US
patent application 09/000,917, which is the parent application of US letters
patent 6,245,038 issued Xxxx 12, 2001 (the "Patent").
WHEREAS, Xxxxxxx [and Xxxxxxx] are the sole owners of the Patent and
enjoy all of the rights, title and interests therein, and
WHEREAS Xxxxxxx is aware of the attached NON EXCLUSIVE PATENT
LICENSE and ROYALTY AGREEMENT made between Xxxxxxx and Licensee.
WHEREAS , Xxxxxxx desires to license any and all of his rights,
title and interests to the Patent and the Patent Rights derived therefrom to
Licensee, and
WHEREAS, Xxxxxxx recognizes that by signing this Agreement, the
combination of this Agreement and the agreement between Xxxxxxx and Licensee
together will become an EXCLUSIVE PATENT LICENSE and ROYALTY AGREEMENT by which
Xxxxxxx and Xxxxxxx assign an exclusive license in the patent to Licensee.
WHEREAS, Licensee desires to obtain an exclusive license to all of
Borberg's interests in the Patent and the Patent Rights derived therefrom and to
exclusively own the License to any and all of their rights, title, interests and
ownership to the Patent any and all related patents, rights and inventions that
specifically relate to the Patent whether owned now or at any tame in the future
by Xxxxxxx (the "License"), and
WHEREAS, Xxxxxxx shall be eligible to receive any and all
consideration and compensation from the Licensee, such as those pledged to be
made by the Licensee to Xxxxxxx under the terms of this Agreement.
NOW THEREFORE in consideration for guaranteed Advance Royalty
Payments and Royalty Payments as described below, and other good and valuable
consideration, Xxxxxxx does hereby exclusively license, in accordance with the
terms set forth below, unto Licensee, its successors and assigns, Borberg's
entire undivided right, title, ownership and interest in and to the Patent and
the invention(s) therein contained (the "Patent Rights"), throughout the
Territory to be held and enjoyed by Licensee its successors and assigns, the
same as it would have been held and enjoyed by Xxxxxxx if this License and
Royalty Agreement had not been made and entered into.
1. Patent Rights. Shall mean any and all of Xxxxxxx rights, title, ownership
and interests in and to US letters patent 6,245,038 and any and all
inventions, modifications, continuations-in-part, extensions, divisions,
improvements, etc. made by Xxxxxxx or his agents, in any and all areas
that relate directly to the Patent, regardless of whether such inventions
or improvements are patentable or may become patented; all inventions,
modifications, continuations-in-part, extensions, divisions, improvements,
etc. shall
-6-
automatically be incorporated herein without the payment of any additional
fees, royalties or any other compensation or considerations of any kind.
2. Representation by Xxxxxxx. Xxxxxxx warrants that he, along with Xxxxxxx,
exclusively owns and possesses the Patent and the Patent Rights, and has
all right and title thereto and that this Patent License and Royalty
Agreement is made without encumbrance or threat of future interference by
others claiming ownership therein and that no security interests to any
third party exists therein or any other agreements to the contrary.
3. Representation by Licensee. Licensee represents that it is a bona fide
corporation in good standing in Florida.
4. Advance Royalty Payments. Licensee agrees to pay Xxxxxxx Fifty Thousand
Dollars ($50,000 USD) annually as an advance and credited against any and
all Royalty Payments paid in accordance with this License. Such Advance
Royalty Payments shall be paid to Xxxxxxx and in equal payments of Twelve
Thousand Five-hundred Dollars ($12,500 USD), made quarterly, on or before
the expiration of Forty-five (45) days after the reporting close of each
prior calendar quarter. The initial payment of Twelve Thousand
Five-hundred Dollars ($12,500 USD) shall be due and payable within
Forty-five (45) days of the Effective Date herein.
5. Royalty Payments. Licensee agrees to pay royalties to Xxxxxxx totaling
One-Half Percent (0,5% in USD). Royalty Payments shall be calculated and
paid based upon Total Net Revenues that Licensee receives from the bona
fide commercial sales of its Products sold in reliance and dependence upon
the validity of the Patent's claims and of the Patent Rights in the
Territory.
6. Accounting and Timing of Royalty Payments. Upon making each Royalty
Payment, Licensee shall provide Xxxxxxx with a summary of the accounting
used to determine the amount of Royalty Payment due. Royalty Payments
shall be made by wire transfer and shall be computed on Total Net Revenues
received by the Licensee by the reporting close of each calendar quarter
and distributed and paid to Xxxxxxx and on a quarterly basis, on or before
the expiration of Forty-five (45) days after the reporting close of each
prior calendar quarter.
7. Failure to Pay by Licensee. Should Licensee fail to make any payments as
required herein, and should the Licensee fail to cure the breach created
thereby, any and all rights, title and ownership to the License provided
to the Licensee under this Agreement shall be forfeited and any and all
such rights, title and ownership to the License shall, upon notice of the
failure to cure the breach, immediately revert to Xxxxxxx, and all monies
paid by Licensee until such date shall be retained by him without
forfeiture.
8. Territory. Shall mean the United States and any other jurisdictions
subject to recognizing any valid claims of the Patent or of the Patent
Rights.
9. Total Net Revenues. Shall mean total gross revenues less any discounts,
rebates, shipping costs, handling costs, transportation insurance costs,
importation fees, and duties on any and all Products sold by the Licensee
in the Territory and which are sold in
-7-
reliance upon and specifically used in accordance with or subject to any
of the valid claims of the Patent.
10. Records. Licensee agrees to keep complete and correct books, accounts and
records according to Generally Accepted Accounting Principles (GAAP)
regulations to facilitate computation of Royalty Payments. Xxxxxxx or his
representatives acceptable to Licensee, shall have a full right of
accounting including the right to confidentially examine Licensee's books
and records, at all reasonable times and upon reasonable notice, for the
purpose of verifying the amount of Royalty Payments due.
11. Products. Shall mean any of Licensee's products, goods or technologies
sold to unaffiliated third parties in the Territory for the purposes of
providing extracorporeal therapies for the treatment of the ophthalmic
diseases as defined by any valid claim(s) of the Patent. In this case,
Licensee's sale of extracorporeal filters and tubing sets for use in any
and all ophthalmic indications.
12. Term. The Royalty Payments shall be due to Xxxxxxx beginning with the
first bona fide commercial sale of any Product in the Territory and may,
at the discretion of Licensee terminate upon the first of any of the
following three events to occur: a) All patents of the Patient Rights
expire, b) All patent claims of the Patent Rights are invalidated, or c) A
similarly fashioned competitive extracorporeal product, method or
technology is commercially introduced in the Territory for use in
ophthalmic indications that could not be deterred by best-efforts
enforcement/infringement proceedings brought by Licensee against the
competitive product, method or technology where such proceedings are made
in reliance in full or in part upon the Patent's claims and or the Patent
Rights.
13. Patent Defense. Licensee shall pay for any and all costs incurred for
patent maintenance, enforcement and defense of the Patent or the Patent
Rights in the Territory.
14. Participation. Xxxxxxx agrees, in consideration of the promises herein,
that he and any of his executors and administrators will, at any time upon
request, communicate to the Licensee, its successors and assigns, any
facts relating to said Patent and Patent Rights, and the history thereof,
known to him or his successors and assigns, and that he will testify as to
the same in any interference or other proceeding when requested to do so
by the Licensee, its successors and assigns. Any and all costs of such
participation by Xxxxxxx or his successors and assigns shall be borne by
Licensee.
15. Succession. Xxxxxxx binds himself and his heirs, executors,
administrators, employees and legal representatives, the case may be, to
execute and deliver to the Licensee, its successors and assigns, any
further documents or instruments and to do any and all further acts that
may be deemed necessary by the Licensee, its successors and assigns to
file applications for improvements and inventions in any country where
Licensee may elect to file such application(s) and that may be necessary
to vest in the Licensee, its successors and assigns, the license, rights
or title herein conveyed, or intended so to be, and to enable such title
to be recorded in the United States and or foreign countries where such
application(s) may be filed. Any and all costs of such participation by
Xxxxxxx or his successors and assigns shall be borne by Licensee.
-8-
16. Relationship of the Parties; Indemnification. It is agreed that this
Agreement does not make any Party herein a general or special agent, legal
representative, subsidiary, joint venturer, partner, employee or servant
of any other Party herein for any purpose.
17. Breach and Disputes. Any breaching Party shall have Thirty (30) Days from
the date of notification to cure sure breach. Any dispute between the
Parties to this Agreement shall be resolved through binding arbitration,
which shall be governed under the rules and regulations of the American
Arbitration Association. .
18. Forum, Venue and Governing Law. This agreement shall be governed and
interpreted. under Delaware law (without applying its conflict of law
principles). Exclusive venue for legal proceedings arising hereunder shall
be in Hillsborough County, Florida.
19. Entire Agreement. This Agreement supersedes any prior understanding that
may have been reached between the Parties and encompasses the entire
agreement between the Licensee and Xxxxxxx with respect to the Patent and
the Patent Rights. The terms of this Agreement are confidential and shall
be maintained by the Parties in accordance thereby.
20. Modification. This Agreement cannot be modified except in writing executed
mutually between the Parties.
IN WITNESS WHEREOF, the Partise have signed and executed this
Agreement and have caused this Agreement to become affective as of the Effective
Date Last executed below.
OCCULOGIX CORPORATION prof. Xx. XXXXXXX XXXXXXX
By: /s/ Xxxxxxx Xxxxx By: /s/ Xx. Xxxxxxx Xxxxxxx
------------------------------- ------------------------
Title: Title:
---------------------------- -----------------------
Date: Date:
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