Contract
Exhibit
10.01
COMVITA
NEW ZEALAND LIMITED
DERMA
SCIENCES, INC
AGREEMENT dated February 23,
2010
PARTIES
COMVITA NEW ZEALAND LIMITED,
of Paengaroa, New Zealand (“Comvita”)
DERMA SCIENCES, INC, of
Princeton, New Jersey, United States of America (“Derma Sciences”)
INTRODUCTION
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A.
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Comvita
or its licensors are the owner of the Patent Rights, Know-How and Trade
Marks.
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B.
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Comvita
is willing to grant to Derma Sciences, and Derma Sciences is willing to
accept, a licence under the Patent Rights, Know-How and Trade Marks, in
accordance with the provisions of this
Agreement.
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AGREEMENT
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1.
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DEFINITIONS
AND INTERPRETATION
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1.1
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Definitions: In
this Agreement, including the Introduction, unless the context otherwise
requires, the following terms will have the following
meanings:
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“Agreement” means this
agreement and the attached Schedules;
“Business Day” means a day,
excluding Saturdays, Sundays, statutory public holidays or any day in the period
starting on 24 December and ending on 5 January, on which banks are open for
ordinary over-the-counter business in either Tauranga, New Zealand or New
Jersey, United States of America;
“Commencement Date” means the
date of signing of this Agreement by both parties;
“Confidentiality Agreement”
means the agreement entered into between the parties and entitled
“Confidentiality Agreement” and dated on or about the Commencement
Date;
“Confidential Information”
means all information of any kind, whether in tangible or documentary form, and
whether marked or identified as being confidential, relating to the Disclosing
Party or its business affairs and includes information relating to any
of:
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(a)
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the
business operations, business strategies, marketing plans and technologies
of the Disclosing Party; or
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(b)
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the
terms of this Agreement;
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“Cost of Production” means the
cost of direct materials, direct labour and any other expenses directly related
(and fairly allocated based on actual value added or percentage contribution
(whichever is lower)) to the manufacturing cost of the relevant product, along
with a reasonable and systematic allocation of fixed and variable production
overheads;
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exhibit
10.01 licence agmt with redactions
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1
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“Disclosing Party” means the
party to whom or to whose business affairs the Confidential Information
relates;
“European Royalties” has the
meaning given to that term in clause 4.5(c);
“First Commercial Sale” means
the initial Supply of a Licensed Product in exchange for cash or some equivalent
that can be assigned value for the purpose of determining Net Sales
Value;
“Force Majeure” has the
meaning given to that term in clause 13.1;
“Gel Sheet Products” means any
product the making, using or selling of which falls within the scope of
any of the claims of any of the patents and patent applications listed in
Schedule 1 under the
Comvita name and description “Manugel (Use of Honey in Medical
Dressings)”;
“Honey Gel Products” means any
product the making, using or selling of which falls within the scope of any of
the claims of any of the patent applications listed in Schedule 1 under the
Comvita name and description “Honey Gel (A Medical Composition)”;
“Improvement” means any
improvement, addition, modification, development or amendment to the Inventions
or any Licensed Product or OTC Product including, without limitation, patentable
inventions and unpatentable know-how;
“Infringement” means
any:
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(a)
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infringement
or potential infringement of any Patent Rights;
or
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(b)
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improper
or wrongful use or misappropriation of the Know-How or Trade
Marks,
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in the
Territory;
“Intellectual Property Rights”
means all industrial and intellectual property rights whether conferred
by statute, at common law or in equity, including, but not limited
to:
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(a)
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all
copyright and similar rights that may subsist in works or other subject
matter;
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(b)
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rights
in relation to inventions (including all patents and patent
applications);
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(c)
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trade
secrets and know-how;
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(d)
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rights
in relation to designs (whether
registrable);
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(e)
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rights
in relation to registered and unregistered trade
marks;
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(f)
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business
names; and
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(g)
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rights
in relation to domain names;
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“Inventions” means the
inventions claimed in the Patents and Patent Applications;
“Know-How” means:
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(a)
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all
information, knowledge, experience, formulae, data and designs comprising
Research Results; and
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(b)
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all
other information, knowledge, experience, formulae, data and designs in
the possession or control of Comvita relating directly to the Licensed
Products or associated with the sourcing, supply or collection of Medical
Honey;
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“Licensed Products”
means:
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(a)
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the
specific products listed in Schedule 3;
or
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(b)
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products
existing as of the Commencement Date or developed by the parties
subsequent thereto (whether pursuant to the R&D Agreement or
otherwise) that contain Medical Honey, and are used or useful in the
treatment, mitigation or prevention of the following human diseases or the
following conditions:
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(i)
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dermal
scar;
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(ii)
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acute
and chronic wounds, irrespective of whether the wound is of partial or
full thickness, including but not limited to diabetic ulcers, venous
stasis ulcers, and decubitus
ulcers;
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(iii)
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skin
injuries or lesions, including but not limited to cuts and
abrasions;
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(iv)
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any
other diseases or conditions affecting the skin;
or
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(v)
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xxxxx.
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Notwithstanding
anything to the contrary in paragraph (b) above, Licensed Products will not
include any products whose primary purpose is either toiletry, cosmetic or
beauty-related, or that have a veterinary, ophthalmic, digestive health, or
non-dermal ear, nose or throat application;
“Lower Royalty” has the
meaning given to that term in clause 6.2(b);
“Manufacturing Agreement”
means the agreement entered into between the parties and entitled
“Manufacturing Agreement” and dated on or about the Commencement
Date;
“Medical Honey” means honey
being to the specifications set out in Schedule 4, or such other specifications
as the parties may agree in writing;
“Medical Honey Supply Agreement”
means the agreement entered into between the parties and entitled
“Medical Honey Supply Agreement” and dated on or about the Commencement
Date;
“Minimum European Royalties”
has the meaning given to that term in clause 4.6(a);
“Minimum Royalty” means, in
respect of each calendar year of the Term, the minimum royalty as specified in
Schedule 6;
“Net Sales Value”
means:
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(a)
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the
gross invoiced price of Licensed Products Supplied by Derma Sciences to
independent third parties in arm’s length transactions and exclusively for
money; or
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(b)
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where
Derma Sciences Supplies such Licensed Products other than according to
paragraph (a), the price that would have been paid had Derma Sciences
Supplied the Licensed Products in accordance with paragraph
(a),
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as the
case may be, but in either case after deduction of:
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(c)
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normal
and reasonable trade discounts and credits actually granted to
unaffiliated third parties in respect of such Licensed Products;
and
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(d)
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provided
Derma Sciences charges the amounts separately on the relevant
invoice:
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(i)
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any
costs of transportation, insurance, carriage and freight charged by
unaffiliated third parties;
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(ii)
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any
goods and services, value added or sales taxes;
and
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(iii)
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any
import duties or similar applicable government
levies;
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“Non-Severable Improvements”
means Improvements that fall within the scope of a claim of any of the
Patent Rights;
“Notice” has the meaning given
to that term in clause 13.7(a);
“OTC Products”
means:
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(a)
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the
products listed in Schedule 5; and
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(b)
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such
other products containing Medical Honey that Comvita believes are suitable
for sale in an OTC Store;
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“OTC Store”:
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(a)
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means
any retail outlet or website where an end customer could purchase products
containing Medical Honey without the need for a prescription or an order
by a clinician or physician; but
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(b)
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excludes
any part of such retail outlet or website where an end customer could
purchase products containing Medical Honey with a prescription or an order
by a clinician or physician;
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“Patent Rights” means:
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(a)
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the
Patents and Patent Applications, together
with:
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(i)
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all
divisions and continuations of the Patents and Patent
Applications;
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(ii)
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all
patents issuing from such Patents and Patent Applications, divisions and
continuations; and
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(iii)
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any
reissues, re-examinations and extensions of all such
patents;
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(b)
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to
the extent that the following contain one or more claims directed to the
Inventions:
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(i)
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continuations-in-part
of the patents and patent applications referred to in paragraph (a)
above;
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(ii)
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all
divisions and continuations of such
continuations-in-part;
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(iii)
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all
patents issuing from such continuations-in-part, divisions and
continuations; and
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(iv)
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any
reissues, re-examinations, and extensions of all such patents;
and
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(c)
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to
the extent the following contain one or more claims directed to the
Inventions, all equivalent patent applications and patents in the
Territory, irrespective of whether or not such equivalent patent
applications or patents derive priority from the patent applications and
patents referred to in paragraphs (a) and (b)
above;
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“Patents and Patent
Applications” means:
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(a)
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the
patents and patent applications listed in Schedule 1;
and
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(b)
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any
other patents and patent applications owned by or exclusively licensed to
Comvita at any time during the Term and that claim any Licensed
Product;
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“R&D Agreement” means the
agreement entered into between the parties and entitled “Collaborative Research
and Development Agreement” and dated on or about the Commencement
Date;
“Reporting Period” means each
successive calendar quarter or portion of a calendar quarter as from the
Commencement Date;
“Research Results” means all
results, outcomes, conclusions, products, discoveries, inventions, reports,
records, data, materials, research processes, research protocols, lab books,
associated documents and research notes, memoranda and other writings and
drawings, created, discovered, invented, reduced to practice or developed during
or as a result of the research and development under the R&D
Agreement;
“Recipient” means the party
receiving Confidential Information under this Agreement;
“Restraint Agreement” means
the agreement entered into between the parties and entitled “Restraint
Agreement” and dated on or about the Commencement Date;
“Severable Improvements” means
Improvements that do not fall within the scope of a claim of any of the Patent
Rights;
“Supply” means
to sell, lend, let out for hire, lease, gift or otherwise dispose
of;
“Term” means the term of this
Agreement as specified in clause 11.1;
“Territory” means the
world;
“Third Party Infringement
Claim” means a:
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(a)
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warning
letter or notice of infringement that is received by a party;
or
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(b)
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legal
suit or other action that is brought against a
party,
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alleging
that the manufacture, importation, distribution, promotion, use or Supply of any
Licensed Product or use of any of the Patent Rights, Know-How or Trade Marks in
the Territory, infringes a third party’s rights; and
“Trade Marks” means the trade
marks (together with any applications or registration for those trade marks)
described in Schedule 2.
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1.2
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Interpretation: In
this Agreement:
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(a)
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headings
are used for convenience only and will not affect its
interpretation;
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(b)
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references
to the singular include the plural and vice
versa;
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(c)
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references
to a party include that party’s successors, executors, administrators and
permitted assignees (as the case may
be);
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(d)
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references
to clauses and Schedules are to those clauses and Schedules in this
Agreement;
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(e)
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where
a word or phrase is defined, its other grammatical forms have a
corresponding meaning;
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(f)
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references
to a gender includes all genders;
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(g)
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references
to the grant of “exclusive” rights will mean that the person granting the
rights will neither grant the same rights to any other person, nor itself
exercise those rights directly;
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(h)
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references
to the grant of “non-exclusive” rights will mean that the person granting
the rights may grant the same rights to any other person, or itself
exercise those rights directly;
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(i)
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references
to a “person” include:
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(i)
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an
individual, firm, company, corporation or unincorporated body of
persons;
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(ii)
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any
public, territorial or regional
authority;
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(iii)
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any
government; and
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(iv)
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any
agency of any government or authority;
and
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(j)
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any
obligation not to do anything includes an obligation not to suffer, permit
or cause that thing to be done.
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2.
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GRANT
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2.1
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Grant of
licences: Comvita grants to Derma Sciences for the Term,
subject to the provisions of this
Agreement:
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(a)
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an
exclusive licence in the Territory under the Patent Rights and to use the
Know-How, to make, use, import, offer to Supply and Supply Licensed
Products that are not also OTC
Products;
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(b)
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a
non-exclusive licence in the Territory under the Patent Rights and to use
the Know-How:
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(i)
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to
make, use, import, offer to Supply and Supply Licensed Products that are
also OTC Products; and
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(ii)
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to
make and Supply to Comvita OTC Products strictly in accordance with the
Manufacturing Agreement;
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(c)
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an
exclusive licence in the Territory to use the Trade Marks solely in
connection with the distribution, promotion and Supply of Licensed
Products that are not also OTC Products;
and
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(d)
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a
non-exclusive licence in the Territory to use the Trade Marks in
connection with the distribution, promotion and Supply of Licensed
Products that are also OTC Products, provided that Comvita may only use
the Trade Marks and license third parties to use the Trade Marks on or in
relation to OTC Products that are sold in OTC
Stores.
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2.2
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Acceptance of
licences: Derma Sciences accepts the licences granted
under clause 2.1.
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2.3
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Meaning of
“licence”: For the purposes of this Agreement,
references to the word “licence” will mean “licence or sub-licence” (as
the case may be depending on whether Comvita is the owner or licensee of
the Intellectual Property Rights in
question).
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2.4
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No other
licences:
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(a)
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Derma
Sciences acknowledges and agrees that Comvita grants no licences to Derma
Sciences other than the licences expressly granted under clause
2.1.
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(b)
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For
the avoidance of doubt, no rights or licences are granted by Comvita to
Derma Sciences under this
Agreement:
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(i)
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under
any Intellectual Property Rights owned by or licensed to Comvita, other
than the Patent Rights, Know-How and Trade Marks;
or
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(ii)
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to
make, use, import, offer to Supply or Supply any products other than the
Licensed Products, except as permitted under the Manufacturing
Agreement.
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2.5
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Licensed
Products: The Licensed Products that Derma Sciences may
make, use, import, offer to Supply and Supply under this Agreement as at
the Commencement Date are listed in Schedule 3. Further
products may be developed or created during the Term that will become
Licensed Products, provided they meet the definition of Licensed
Products.
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2.6
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Derma Sciences not to Supply to
OTC Stores:
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(a)
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Derma
Sciences will not offer to Supply or Supply any Licensed Products to OTC
Stores unless it has first obtained the written consent of Comvita, which
consent may be granted on such terms as Comvita believes are
appropriate.
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(b)
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Derma
Sciences acknowledges and agrees that Comvita and its affiliates are
entitled to make, use and sell OTC Products that are also Licensed
Products, provided that such OTC Products are sold exclusively in OTC
Stores.
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(c)
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The
parties acknowledge that although Derma Sciences will not sell directly to
OTC Stores, it is possible that Derma Sciences may Supply Licensed
Products to third parties that are then resold into OTC
Stores. Where practical, Derma Sciences will use commercially
reasonable efforts to include in its agreements with its customers a
prohibition on selling the Licensed Products to OTC Stores and will
otherwise advise its customers that the Licensed Products are not to be
sold to OTC Stores.
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(d)
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If
either Comvita or Derma Sciences discovers that Licensed Products
manufactured by Derma Sciences are being sold in an OTC Store, then Derma
Sciences will use all commercially reasonable means to investigate the
source of such Supply and upon discovering the origin
will:
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(i)
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notify
its customer responsible for such Supply and request that it cease and
desist from Supplying the Licensed Products to OTC Stores or any person
who is on-selling such products to OTC Stores;
and
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(ii)
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if
the customer does not confirm that it will comply with such request within
ten days of such notice, cease all sales of Licensed Products to such
customer until such time as the customer agrees to comply with such
request.
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2.7
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Comvita Supply
limitations:
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(a)
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Comvita
may Supply Licensed Products that are also OTC Products (and license third
parties to Supply such Licensed Products) only to OTC
Stores. Comvita will not offer to Supply or Supply any OTC
Products that are also Licensed Products to non-OTC Stores unless it has
first obtained the written consent of Derma Sciences, which consent may be
granted on such terms as Derma Sciences believes are
appropriate. For the avoidance of doubt, Comvita may sell OTC
Products that are not also Licensed Products to non-OTC
Stores.
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(b)
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The
parties acknowledge that although Comvita will not sell OTC Products that
are also Licensed Products directly to non-OTC Stores, it is possible that
Comvita may Supply such OTC Products to third parties that are then resold
into non-OTC Stores. Where practical, Comvita will use
commercially reasonable efforts to include in its agreements with its
customers a prohibition on selling such OTC Products to non-OTC Stores and
will otherwise advise its customers that such OTC Products are not to be
sold to non-OTC Stores.
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(c)
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If
either Derma Sciences or Comvita discovers that OTC Products that are also
Licensed Products are being sold in a non-OTC Store, then Comvita will use
all commercially reasonable means to investigate the source of such Supply
and upon discovering the origin
will:
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(i)
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notify
Comvita’s customer responsible for such Supply and request that it cease
and desist from Supplying such OTC Products to non-OTC Stores or any
person who is on-selling such products to non-OTC Stores;
and
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(ii)
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if
the customer does not confirm that it will comply with such request within
ten days of such notice, cease all sales of such OTC Products to such
customer until such time as the customer agrees to comply with such
request.
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2.8
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Sub-licensing: Derma
Sciences may grant sub-licences of the rights granted to Derma Sciences
under this Agreement only in accordance with the following
provisions:
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(a)
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Derma
Sciences must obtain the prior written consent of Comvita to the grant of
any sub-licence;
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(b)
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no
sub-licence will be granted except to the extent necessary to Supply Derma
Sciences exclusively with Licensed Products or OTC Products manufactured
by such sub-licensee;
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(c)
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every
sub-licence must:
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(i)
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be
in a form approved by Comvita in
writing;
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(ii)
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impose
obligations on the sub-licensee that are equivalent to the obligations of
Derma Sciences under this
Agreement;
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(iii)
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prohibit
any right to sub-sub-license, or to assign any of the rights granted under
the sub-licence, without Comvita’s written consent;
and
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(iv)
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terminate
automatically on the termination or expiration of this Agreement for any
reason, subject to clause 11.8(e);
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(d)
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within
14 days following the grant of any sub-licence, Derma Sciences will
provide to Comvita a true and complete copy of the document recording the
terms of such sub-licence; and
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(e)
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Derma
Sciences will be responsible under this Agreement for all acts and
omissions of its sub-licensees as if such acts or omissions were those of
Derma Sciences. Derma Sciences will defend, indemnify, keep
indemnified and hold harmless Comvita against any and all losses, damages,
costs, claims or expenses awarded against or suffered by Comvita as a
result of any such acts or
omissions.
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Any
purported grant of sub-licence other than in accordance with this clause 2.8
will be ineffective and will be regarded as a material breach by Derma Sciences
of this Agreement.
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2.9
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Formal
licences:
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(a)
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If
requested by Derma Sciences, Comvita will sign all formal documents
reasonably necessary or appropriate to enable registration of the licences
under clause 2.1, with intellectual property offices and other relevant
authorities within the Territory.
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(b)
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Derma
Sciences will pay all costs of preparing and registering any documents
required under clause 2.9(a). Derma Sciences will also pay all legal costs
incurred by Comvita in connection with such
documents.
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(c)
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Comvita
will not be required to sign any document under clause 2.9(a) if such
document imposes a liability or responsibility on Comvita in addition to
those liabilities and responsibilities of Comvita under this
Agreement.
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2.10
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Disclosure of
Agreement: If any registration or application for
registration by Derma Sciences under clause 2.9 would require the
disclosure of a copy of this Agreement to any authority within the
Territory, Derma Sciences will at its own
cost:
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(a)
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notify
Comvita of the requirement;
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(b)
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take
all steps reasonably requested by Comvita to maintain the confidentiality
of this Agreement, including (if required by Comvita and permitted by the
relevant authority) by filing a redacted or abridged version of this
Agreement with the authority; and
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(c)
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take
all steps reasonably available to it to ensure the relevant authority does
not make public the terms and conditions of this
Agreement.
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2.11
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Medical
Honey: Derma Sciences will ensure that all honey used in
the manufacture of the Licensed Products is Medical Honey supplied
by:
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(a)
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Comvita;
or
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(b)
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such
other party as may be permitted under the Medical Honey Supply
Agreement.
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2.12
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Medical Honey Supply
Agreement: If:
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(a)
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Derma
Sciences fails to agree to an extension of the five year restriction under
clause 2.2 of the Medical Honey Supply Agreement for any further period;
or
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(b)
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the
Medical Honey Supply Agreement is terminated by Comvita pursuant to clause
10.2 of the Medical Honey Supply
Agreement,
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Comvita
may by written notice to Derma Sciences elect to either:
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(c)
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convert
the rights granted under clauses 2.1(a) and (c) to non-exclusive rights;
or
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(d)
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terminate
this Agreement with immediate effect by giving written notice to Derma
Sciences.
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3.
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KNOW-HOW
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3.1
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Supply of
Know-How:
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(a)
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Comvita,
under the Comvita Licensing, Manufacturing and Sales Agreement signed
between the parties dated 13 February 2006, provided all Know-How in
Comvita’s possession or under its control which it deemed reasonably
necessary or desirable to enable Derma Sciences to manufacture,
distribute, promote, use and Supply in the Territory all Licensed Products
in existence as at the Commencement
Date.
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(b)
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Comvita
has continued to provide Derma Sciences with all Know-How developed since
13 February 2006 and will continue to provide to Derma Sciences at the
relevant time all relevant Know-How in Comvita’s possession, or under
Comvita’s control, reasonably necessary or desirable to manufacture,
distribute, promote, use and Supply any Licensed Product that comes into
existence after the Commencement
Date.
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3.2
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Confidentiality of
Know-How: Derma Sciences agrees that for so long as any
substantial part of the Know-How remains subject to the obligations of
confidence under the Confidentiality Agreement, it will not use that
Know-How for any purpose except as expressly licensed under this
Agreement.
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4.
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COMMERCIALISATION
|
|
4.1
|
Promote and expand
Supply: Derma Sciences will use commercially reasonable
endeavours to promote and expand the Supply of the Licensed Products to
the maximum extent throughout the Territory, and will keep full and
accurate records of all aspects of its commercialisation of the Licensed
Products.
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
10
|
|
4.2
|
Reporting: Without
limiting Derma Sciences’ obligations under clause 4.1, Derma Sciences
will, within 30 days following the end of each Reporting Period (which may
be by email), provide to Comvita an updated, written progress report
summarising:
|
|
|
(a)
|
the
activities taken by Derma Sciences during that Reporting Period to market
the Licensed Products in the Territory;
and
|
|
|
(b)
|
any
other developments of note in relation to the Licensed Products, or the
market for the Licensed Products.
|
Comvita’s
receipt or approval of any such plan will not be taken to waive or qualify Derma
Sciences’ obligations under clause 4.1.
|
4.3
|
Marketing
plans:
|
|
|
(a)
|
Derma
Sciences will promote the Licensed Products in the Territory in accordance
with a marketing plan to be proposed by Derma Sciences annually and
reviewed by Comvita.
|
|
|
(b)
|
The
proposed marketing plan for the period ending on 31 December 2010 will be
provided by Derma Sciences to Comvita within five Business Days following
the Commencement Date.
|
|
|
(c)
|
Marketing
plans for subsequent 12 month periods will be provided by Derma Sciences
to Comvita by no later than 60 days following the beginning of the
relevant 12 month period covered by the marketing
plan.
|
|
|
(d)
|
The
parties will endeavour to mutually agree on all the terms of the marketing
plans, but Derma Sciences will make all final
decisions.
|
|
4.4
|
Transfer customer
details: Comvita will following the Commencement
Date:
|
|
|
(a)
|
transfer,
assign or provide (as the case may be) to Derma Sciences its and its
related companies’ existing customer lists and agreements relating to any
Licensed Products, including in particular
by:
|
|
|
(i)
|
arranging
for its affiliate Medihoney Europe Limited to enter into an assignment
agreement with Derma Sciences in respect of the distribution agreements
with ApoFit Arzneimittelvertrieb GMBH (Germany) and Sorbion Mayrhofer GMBH
(Austria), on terms to be agreed;
and
|
|
|
(ii)
|
arranging
for its affiliate Comvita HK Limited to enter into an assignment agreement
with Derma Sciences in respect of the distribution agreement with Adaltis
Healthcare (H.K) Limited (Hong Kong), on terms to be agreed;
and
|
|
|
(b)
|
use
commercially reasonable efforts to assist Derma Sciences in transitioning
to Derma Sciences on terms to be agreed the existing customers of Comvita
and its related companies in the Territory who purchase Licensed
Products.
|
|
4.5
|
European
Union: With respect to the European Union, Derma
Sciences will:
|
|
|
(a)
|
by
no later than 1 April 2010 appoint a manager for the European Union who
will be responsible for ensuring the promotion and expansion of the Supply
of the Licensed Products in the European
Union;
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
11
|
|
|
(b)
|
ensure
that at least [*]% of the total royalties payable under clause 6.1 for all
Supplies of the Licensed Products during the calendar year 2010 are
generated from the Supply of the Licensed Products in the European Union
(“European
Royalties”); and
|
|
|
(c)
|
for
Supplies during the five succeeding years following the calendar year
2010, increase European Royalties by [*]% per annum per year
(e.g., if European Royalties for 2010 are $[*] then the minimum European
Royalties for 2011 will be $[*], and for 2012 will be
$[*]).
|
|
|
(d)
|
Solely
for determining compliance with clause 4.5(b) and for establishing the
base European Royalties for clause 4.5(c), the 2010 European Royalties
shall determined as follows: Derma Sciences’ total European sales for 2010
shall be divided by the number of days that Derma Sciences was selling for
its account in Europe. The resulting sum shall be multiplied by 365 and
then multiplied by the applicable royalty percentage under clause 6.1.
Notwithstanding the above, the royalties payable by Derma shall be
calculated based on actual sales.
|
|
4.6
|
Minimum European
Royalties:
|
|
|
(a)
|
If
the European Royalties payable for any calendar year are less than the
minimum European Royalties payable for that calendar year under clauses
4.5(b) or 4.5(c) (“Minimum European Royalties”),
then:
|
|
|
(i)
|
Derma
Sciences may, at its sole option, pay to Comvita the amount by which the
European Royalties for that calendar year are less than the relevant
Minimum European Royalties;
|
|
|
(ii)
|
Derma
Sciences will pay such amount within 30 days following the end of the
relevant calendar year; and
|
|
|
(iii)
|
upon
making such payment Derma Sciences will be deemed to have achieved its
obligation for that calendar year.
|
|
|
(b)
|
If:
|
|
|
(i)
|
Derma
Sciences fails to comply with clause 4.5(a) by the due date;
or
|
|
|
(ii)
|
the
European Royalties payable for any calendar year are less than the Minimum
European Royalties for that calendar year, and Derma Sciences does not
meet its obligation for that calendar year by making a payment under
clause 4.6(a)(i) by the due date,
|
then
Comvita may with immediate effect on giving written notice to that effect to
Derma Sciences either:
|
|
(iii)
|
convert
the rights granted under clauses 2.1(a) and (c) in respect of the European
Union to non-exclusive rights; or
|
|
|
(iv)
|
terminate
all rights granted under this Agreement in respect of the European Union,
and with effect from the date of such termination the definition of
“Territory” will be deemed to exclude the European
Union.
|
[*]
Redacted pursuant to a request for confidential treatment submitted to the
SEC.
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
12
|
|
4.7
|
Commercial
launch: Derma Sciences agrees that if, by the dates set
forth in and for the countries specified in clause 4.8, it has not
achieved the bona fide commercial launch of the Licensed Products (for
reasons other than failure to obtain any relevant regulatory approval
despite reasonable commercial efforts to do so), such commercial launch to
be evidenced by:
|
|
|
(a)
|
the
development of a formal bona fide marketing plan, including the
appointment of one or more bona fide distributors for the Licensed
Products; and
|
|
|
(b)
|
the
achievement of the First Commercial Sale of a Licensed Product in such
country,
|
then
Comvita may with immediate effect on giving written notice to that effect to
Derma Sciences either:
|
|
(c)
|
convert
the rights granted under clauses 2.1(a) and (c) in respect of that country
to non-exclusive rights; or
|
|
|
(d)
|
terminate
all rights granted under this Agreement in respect of that country, and
with effect from the date of such termination the definition of
“Territory” will be deemed to exclude that
country.
|
|
4.8
|
Launch
dates: For the purposes of clause 4.7, the commercial
launch dates are:
|
|
|
(a)
|
for
each of Japan, Singapore, and South Africa: 31 December 2013;
and
|
|
|
(b)
|
for
all other countries in the Territory: 31 December
2018.
|
|
5.
|
STANDARDS
OF MANUFACTURE
|
|
5.1
|
Approved
standards:
|
|
|
(a)
|
Derma
Sciences will manufacture the Licensed Products in accordance with the
standards and specifications provided by Comvita from time to time or
otherwise approved by Comvita in
writing.
|
|
|
(b)
|
Derma
Sciences may not distribute, promote, use or Supply any Licensed Product
that does not comply with such standards and
specifications.
|
|
5.2
|
Samples and
data:
|
|
|
(a)
|
At
least 20 Business Days before the First Commercial Sale of a particular
Licensed Product, Derma Sciences must submit to Comvita for the purposes
of verifying compliance with any standards and specifications approved or
provided by Comvita under clause
5.1(a):
|
|
|
(i)
|
a
reasonable number of samples of that Licensed Product;
and
|
|
|
(ii)
|
any
testing data required by Comvita to verify that such Licensed Product has
been manufactured to those standards and
specifications.
|
|
|
(b)
|
Without
limiting clause 5.2(a), Derma Sciences will provide Comvita with a
reasonable number of additional samples of any Licensed Product
manufactured by Derma Sciences as and when requested by Comvita following
the date of such First Commercial Sale, in order to verify compliance with
the standards and specifications.
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
13
|
|
|
(c)
|
All
costs incurred by Derma Sciences in supplying any samples or data under
this clause 5.2, including all costs of freight and insurance, will
be the responsibility of Derma Sciences. Risk in any such
samples or data will not pass to Comvita until delivery of them to
Comvita.
|
|
5.3
|
Approvals: Derma
Sciences will:
|
|
|
(a)
|
apply
in its own name for any licences, approvals, permits and applications
required by any governmental authority or agency in the Territory in
connection with the development, manufacture, importation, distribution,
promotion, use or Supply of the Licensed Products in the
Territory;
|
|
|
(b)
|
provide
Comvita with copies of any licences, approvals, permits and applications
under clause 5.3(a) requested by Comvita;
and
|
|
|
(c)
|
comply
with all applicable laws and regulations in the Territory in the
development, manufacture, importation, distribution, promotion, use or
Supply of the Licensed Products.
|
|
5.4
|
Inspection: Derma
Sciences will itself, and will ensure that its permitted sub-licensees,
permit Comvita or its representative to inspect the manner of manufacture
and the quality control systems of Derma Sciences and any such
sub-licensees relating to the Licensed
Products.
|
|
5.5
|
Markings:
|
|
|
(a)
|
Derma
Sciences will ensure that all Licensed Products Supplied under this
Agreement are marked with:
|
|
|
(i)
|
details
of the relevant applications and registrations comprising the Patent
Rights and Trade Marks; and
|
|
|
(ii)
|
clear
and prominent statements that the Licensed Products are manufactured and
Supplied by Derma Sciences under licence from
Comvita.
|
|
|
(b)
|
Derma
Sciences must obtain Comvita’s prior written approval
of:
|
|
|
(i)
|
all
markings and statements under clause 5.5(a);
and
|
|
|
(ii)
|
any
use of any secondary marks or other words, designs, slogans or symbols on
or in connection with the Licensed
Products.
|
|
6.
|
PAYMENTS
|
|
6.1
|
Royalties: In
consideration of the rights granted under this Agreement, Derma Sciences
will pay to Comvita the following
royalties:
|
|
|
(a)
|
a
royalty being a percentage of the aggregate Net Sales Value of all
Licensed Products Supplied by Derma Sciences in the Territory, as
calculated in the table below:
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
14
|
|
Amount of Net Sales Value
|
Royalty
Percentage
|
|
|
Less
than US$[*] of Net Sales Value generated in any calendar
year
|
[*]%
|
|
|
US$[*]
or more but less than US$[*] of Net Sales Value generated in any calendar
year
|
[*]%
|
|
|
US$[*]
or more Net Sales Value generated in any calendar year
|
[*]%
|
Where
sales of the Licensed Products are made in a currency other than US dollars,
such local currency will be converted into US dollars at a rate of exchange
equal to the average of the daily exchange rate reported on Bloomberg for the
purchase of US dollars from that local currency over the relevant Reporting
Period;
|
|
(b)
|
an
additional royalty to the royalty specified in the table in clause 6.1(a),
being [*]% of the Net Sales Value of each Gel Sheet Product Supplied by
Derma Sciences in the Territory, for so long as Comvita is obligated to
pay a royalty in an amount equal to or more than the additional royalty to
its licensor with respect to such
Supply;
|
|
|
(c)
|
an
additional royalty to the royalty specified in the table in clause 6.1(a),
being [*]% of the Net Sales Value of each Honey Gel Product Supplied by
Derma Sciences in the Territory, for so long as Comvita is obligated to
pay a royalty in an amount equal to or more than the additional royalty to
its licensor with respect to such Supply;
and
|
|
|
(d)
|
an
additional royalty to the royalty specified in the table in clause 6.1(a),
being [*]% of the Net Sales Value of each Licensed Product Supplied by
Derma Sciences in the Territory that has not been manufactured using
Medical Honey supplied solely by Comvita under the Medical Honey Supply
Agreement, provided that this additional royalty will not be payable if
Derma Sciences has purchased that Medical Honey from another supplier
because Comvita has failed to supply Derma Sciences with its demand for
Medical Honey pursuant to clause 2.5(a) of the Medical Honey Supply
Agreement.
|
|
6.2
|
Royalty
calculations: In determining the royalties payable under
clause 6.1, the following provisions will
apply:
|
|
|
(a)
|
the
royalty percentage to be used for the first Reporting Period of each
calendar year will be the royalty percentage that applied at the end of
the previous calendar year. If at any time during any calendar
year the total Net Sales Value generated by Derma Sciences equals an
amount that would mean a higher royalty percentage would be payable by
Derma Sciences, Derma Sciences will at the end of the Reporting Period in
which such event occurred:
|
|
|
(i)
|
use
the higher royalty percentage when calculating the royalties payable to
Comvita for such Reporting Period;
and
|
[*]
Redacted pursuant to a request for confidential treatment submitted to the
SEC.
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
15
|
|
|
(ii)
|
pay,
within 30 days following the end of that Reporting Period, an additional
amount equal to the difference between the royalties that would have been
paid by Derma Sciences for any previous Reporting Periods in that same
calendar year had the higher royalty percentage applied, and the royalties
that were actually paid by Derma Sciences for such Reporting
Periods;
|
|
|
(b)
|
if
at the end of a calendar year, the royalty percentage used for calculating
royalties during the first three Reporting Periods of that calendar year
is determined to have been higher than the royalty percentage that should
have been used by Derma Sciences (“Lower Royalty”), then Derma
Sciences:
|
|
|
(i)
|
will
use the Lower Royalty for determining the royalties payable to Comvita for
the final Reporting Period of that calendar year;
and
|
|
|
(ii)
|
may
deduct from such royalties so determined an amount equal to the difference
between the royalties actually paid by Derma Sciences to Comvita for the
first three Reporting Periods of that calendar year, and the royalties
that would have been paid by Derma Sciences for such Reporting Periods had
the Lower Royalty applied;
|
|
|
(c)
|
only
one royalty will be payable on any Licensed Product that is both a Gel
Sheet Product and a Honey Gel Product under clauses 6.1(b) and
(c). If a Licensed Product is both a Gel Sheet Product and a
Honey Gel Product, the additional royalty to the royalty specified in the
table in clause 6.1(a) will be [*]% of the Net Sales
Value;
|
|
|
(d)
|
for
the avoidance of doubt, the royalties payable for Licensed Products that
are Honey Gel Products or Gel Sheet Products under clauses 6.1(b) or (c)
are in addition to those payable under clauses 6.1(a) and (d);
and
|
|
|
(e)
|
for
the avoidance of doubt, Derma Sciences will pay to Comvita the royalties
specified in clause 6.1 in respect of Licensed Products Supplied anywhere
in the Territory, including in countries where no Patent Rights
exist.
|
|
6.3
|
Commercial arm’s-length
percentages: The parties agree and acknowledge
that:
|
|
|
(a)
|
the
royalty percentages referred to in clause 6.1 are commercial arm’s-length
percentages; and
|
|
|
(b)
|
the
parties would have agreed to those percentages if this Agreement had been
the only arrangement between them.
|
|
6.4
|
Date for
payment: Derma Sciences will pay the sums due under
clause 6.1 within 30 days following the end of each Reporting Period in
respect of Licensed Products Supplied by Derma Sciences during that
Reporting Period.
|
|
6.5
|
Combination
products: If:
|
|
|
(a)
|
any
Licensed Product is incorporated in any product Supplied by Derma
Sciences; or
|
|
|
(b)
|
any
Licensed Product is Supplied together with any other product as a bundle
or package,
|
[*]
Redacted pursuant to a request for confidential treatment submitted to the
SEC.
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
16
|
then the
Net Sales Value of such Licensed Product will be deemed to be the fair market
value of the Licensed Product in that country of Supply when Supplied
separately.
|
6.6
|
Method of
payment: Derma Sciences will pay all royalties in US
dollars to the credit of a bank account to be designated in writing by
Comvita.
|
|
6.7
|
Taxes and
deductions:
|
|
|
(a)
|
All
royalties payable under this Agreement will be exclusive of any goods and
services taxes or value-added taxes, which, where applicable, will be paid
in addition.
|
|
|
(b)
|
All
royalties payable under this Agreement will be paid without deduction or
set-off of any kind, and without deduction of income tax or other taxes,
charges or duties that may be imposed, except for any taxes, charges or
duties that Derma Sciences is required by law to
deduct.
|
|
|
(c)
|
If
Derma Sciences is required by law to make any such deduction, it will
provide Comvita with such certificates or other documents as it can
reasonably obtain to enable Comvita to obtain appropriate relief from
double taxation of the payment in
question.
|
|
6.8
|
Default
interest: If Derma Sciences fails to pay any amount
payable under this Agreement by the due date for payment, Comvita may
charge interest on the outstanding amount at the rate of 12% per annum.
Interest will be calculated on a daily basis from the due date until the
date of actual payment
|
|
6.9
|
Minimum
Royalty:
|
|
|
(a)
|
Without
prejudice to and in addition to Comvita’s rights under clauses 4.6, 4.7 or
6.9(d), if in any calendar year the royalties payable under clause 6.1 are
less than the Minimum Royalty for that calendar
year:
|
|
|
(i)
|
Derma
Sciences may, at its sole option, pay to Comvita the amount by which the
royalties for that calendar year are less than the Minimum
Royalty;
|
|
|
(ii)
|
Derma
Sciences will pay such amount within 30 days following the end of the
relevant calendar year; and
|
|
|
(iii)
|
if
Derma Sciences fails to make the payment provided for in this clause
6.9(a)(i) by the due date, Comvita may elect to terminate this Agreement
with immediate effect by notice in writing to Derma
Sciences.
|
|
|
(b)
|
The
rights and obligations of the parties under clause 6.9(a) will be
suspended if:
|
|
|
(i)
|
Derma
Sciences has been enjoined or otherwise legally restrained from selling or
marketing more than 50% of the Licensed Products in either the United
States or the European Union, until such time as the injunction or other
legal restriction has been lifted;
|
|
|
(ii)
|
Comvita
is in material breach of any representation, warranty or covenant in the
Medical Honey Supply Agreement; or
|
|
|
(iii)
|
an
event of Force Majeure occurs materially affecting the ability of Derma
Sciences to market and sell all of the Licensed Products in either the
United States or the European
Union.
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
17
|
|
|
(c)
|
If
any of the events set forth in clause 6.9(b) occurs,
then:
|
|
|
(i)
|
the
rights and obligations of the parties under clause 6.9(a) will remain
suspended only for so long as the relevant conditions prevail;
and
|
|
|
(ii)
|
if
only a portion of the calendar year is affected by the conditions, the
Minimum Royalty payable for such year will be pro-rated
accordingly.
|
|
|
(d)
|
Without
prejudice to and in addition to Comvita’s rights under clauses 4.6, 4.7 or
6.9(a), if over any period of five consecutive calendar years (excluding
any calendar years during which the rights and obligations of the parties
under clause 6.9(a) have been suspended for the entire calendar year
pursuant to clause 6.9(b)), the total royalties payable under clause 6.1
(before any payments under clause 6.9(a) have been made) are less than the
sum of the Minimum Royalty payable for all of those five consecutive
calendar years, Comvita may elect to terminate this Agreement with
immediate effect by notice in writing to Derma
Sciences.
|
|
6.10
|
Royalties
statement: Derma Sciences will provide to Comvita a
written royalties statement within 30 days following the end of each
Reporting Period. The royalties statement must contain the following
information:
|
|
|
(a)
|
the
types of Licensed Product Supplied during the relevant Reporting
Period;
|
|
|
(b)
|
the
quantity of each type of Licensed Product Supplied during the relevant
Reporting Period;
|
|
|
(c)
|
the
total Net Sales Value of each type of Licensed Product Supplied during the
relevant Reporting Period, expressed both in the currency of receipt and
in US dollars and showing the conversion rates
used;
|
|
|
(d)
|
a
breakdown showing which royalties have been generated from the Supply of
Licensed Products in the European
Union;
|
|
|
(e)
|
the
total amount of royalties payable for the relevant Reporting Period;
and
|
|
|
(f)
|
the
amount of any taxes withheld or deducted from the royalties
payable,
|
and must
be in a format reasonably approved or specified by Comvita.
|
6.11
|
Monthly
statement: Derma Sciences will also provide to Comvita
within ten days following the end of each calendar month a written report
of:
|
|
|
(a)
|
the
Net Sales Value generated during that calendar month;
and
|
|
|
(b)
|
the
royalties payable to Comvita.
|
|
6.12
|
Maintenance of
records: Derma Sciences
will ensure that it keeps detailed and up to date records and accounts
showing the quantity, description, price and date of Licensed Products
Supplied under this Agreement. Such records and accounts must
be:
|
|
|
(a)
|
kept
at its normal place of business;
|
|
|
(b)
|
kept
separate from any records and accounts not relating solely to the Licensed
Products; and
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
18
|
|
|
(c)
|
sufficient
to ascertain the royalties due under this Agreement and to verify any
royalties statement given under clause
6.10.
|
|
6.13
|
Inspection of
records: Derma Sciences must ensure that all records and
accounts under clause 6.12 are made available for inspection by a
representative of Comvita, if reasonably requested by
Comvita. The following terms and conditions will apply to any
such inspection:
|
|
|
(a)
|
Comvita
must give reasonable notice to Derma Sciences of any such
inspection;
|
|
|
(b)
|
only
one such inspection will be permitted each calendar
year;
|
|
|
(c)
|
Comvita’s
representative will be entitled to take copies of or extracts from such
records and accounts; and
|
|
|
(d)
|
Comvita
will be responsible for Comvita’s representative’s charges, unless
Comvita’s representative certifies that there is an inaccuracy of more
than 5% in any royalties statement given under clause 6.10, in which case
Derma Sciences will pay Comvita’s representative’s charges for that
inspection.
|
|
6.14
|
Incorrect
payment: If, following any inspection under clause 6.13,
Comvita’s representative determines that Derma Sciences has underpaid the
amount of royalties payable to Comvita under this
Agreement:
|
|
|
(a)
|
Comvita’s
representative will provide to Derma Sciences a written report of his or
her determination. Such report will show how Comvita’s representative has
calculated the underpayment; and
|
|
|
(b)
|
within
five Business Days following receipt of the written determination, Derma
Sciences will pay to Comvita the unpaid amount. Derma Sciences will at the
same time pay interest on such amount in accordance with clause
6.8.
|
|
6.15
|
Duration of rights and
obligations: The rights and obligations of the parties
under clauses 6.12 to 6.14 will continue in force for a period of three
years after termination or expiration of this Agreement for any
reason.
|
|
7.
|
IMPROVEMENTS
|
|
7.1
|
Notification: If
Derma Sciences devises any Improvements then Derma Sciences will notify
Comvita and provide Comvita with full details of the same in
writing.
|
|
7.2
|
Severable
Improvements:
|
|
|
(a)
|
Severable
Improvements devised by either party during the Term outside the scope of
the R&D Agreement, and all Intellectual Property Rights in and to such
Severable Improvements, will be exclusively owned by the party who devised
them or their nominee. For the avoidance of doubt, under the
R&D Agreement all Research Results and all Intellectual Property
Rights therein will be owned by Comvita or its
nominee.
|
|
|
(b)
|
Derma
Sciences will be free to exploit the Severable Improvements owned by it
under this clause 7.2 as it may determine at its absolute
discretion.
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
19
|
|
|
(c)
|
All
Severable Improvements owned by Derma Sciences or its nominee under this
clause 7.2 will be licensed to Comvita on a perpetual, irrevocable,
worldwide, royalty-free, non-exclusive, transferable, sub-licensable
basis. The licence will be subject to a limitation so that, for
so long as this Agreement remains in force and the rights granted under
clauses 2.1(a) and (c) remain exclusive to Derma Sciences, Comvita will
not be permitted to use or exploit the Severable Improvements, or any
Intellectual Property Rights in and to such Severable Improvements, to
make, use, import, offer to Supply or Supply Licensed Products that are
not also OTC Products in the
Territory.
|
|
7.3
|
Non-Severable
Improvements:
|
|
|
(a)
|
All
Non-Severable Improvements devised by Comvita or Derma Sciences during the
Term, and all Intellectual Property Rights in and to such Non-Severable
Improvements, will be exclusively owned by Comvita or its nominee, and
will be licensed to Derma Sciences on the terms and conditions of this
Agreement.
|
|
|
(b)
|
Subject
to clause 7.3(a), Derma Sciences will have no claim over any Non-Severable
Improvements, or over any Intellectual Property Rights
therein.
|
|
8.
|
INTELLECTUAL
PROPERTY
|
|
8.1
|
Filing and
prosecution:
|
|
|
(a)
|
Comvita
will at its own expense use reasonable endeavours to obtain and maintain
reasonable and appropriate patent and trade xxxx coverage in the Territory
in respect of the Patent Rights and Trade Marks, but all decisions as to
the filing, prosecution and maintenance of any such patents and trade
marks will be made by Comvita, after due and proper consultation with
Derma Sciences, at Comvita’s sole
discretion.
|
|
|
(b)
|
Derma
Sciences agrees that the patent and trade xxxx coverage in existence as at
the Commencement Date is reasonable and appropriate for those Licensed
Products set out in
Schedule 3.
|
|
|
(c)
|
Comvita
will endeavour to file patent and trade xxxx applications in the United
States of America, Japan and Europe, and any other countries agreed by the
parties in writing, in respect of any Improvements
that:
|
|
|
(i)
|
are
patentable;
|
|
|
(ii)
|
justify
the cost of patent protection; and
|
|
|
(iii)
|
are
licensed to Derma Sciences under this
Agreement.
|
|
8.2
|
Infringements:
|
|
|
(a)
|
Comvita
represents and warrants as at the Commencement Date that it is only aware
of an Infringement by Brightwake Limited (trading as Advancis Medical) and
a potential Infringement by Manuka Medical Limited. Details of
this Infringement and potential Infringement have been provided by Comvita
to Derma Sciences prior to the Commencement
Date.
|
|
|
(b)
|
Following
the Commencement Date each party will tell the other party without delay
if it becomes aware of any Infringement. The parties will then discuss the
best way to deal with the
Infringement.
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
20
|
|
|
(c)
|
The
parties agree that it is their intention to collaborate together in
dealing with Infringements, and to share in the costs incurred and damages
awarded on a 50/50 basis. If agreement cannot be
reached:
|
|
|
(i)
|
Comvita
or its licensor will have the right but not the obligation at its own cost
to take such action as it thinks appropriate;
and
|
|
|
(ii)
|
Derma
Sciences will agree to assist and if necessary be joined in any suit to
enforce the relevant Intellectual Property Rights, subject to Derma
Sciences being indemnified and secured as to costs, expenses, damages and
liability.
|
|
|
(d)
|
Any
damages or other amounts received from an action by Comvita under clause
8.2(c) will be for the sole account of Comvita or its
licensor.
|
|
|
(e)
|
If
Comvita or its licensor does not wish to take such action or fails to do
so within a reasonable period in the circumstances, Derma
Sciences:
|
|
|
(i)
|
will
have the right but not the obligation to take such action at its own cost;
and
|
|
|
(ii)
|
may
join Comvita or its licensor to any relevant proceedings to the extent
necessary for the purpose.
|
In doing
so, Derma Sciences will not be regarded as acting on behalf of Comvita or its
licensor, but Comvita or its licensor will give all reasonable help at Derma
Sciences’ expense to facilitate any such Infringement proceedings by Derma
Sciences.
|
|
(f)
|
Derma
Sciences will:
|
|
|
(i)
|
keep
Comvita fully informed of all matters relating to such
proceedings;
|
|
|
(ii)
|
indemnify
Comvita or its licensor against all costs, expenses, damages and liability
in connection with such proceedings;
and
|
|
|
(iii)
|
get
Comvita’s or its licensor’s written consent before making any statement
(whether express or implied) about the validity or enforceability of any
Patent Rights, Know-How or Trade Marks, or any liability of Comvita or its
licensor.
|
|
|
(g)
|
Any
damages or other amounts received from an action by Derma Sciences under
clause 8.2(e) will be for the sole account of Derma
Sciences.
|
|
8.3
|
Third Party Infringement
Claims:
|
|
|
(a)
|
Each
party will tell the other party without delay if it becomes aware of any
Third Party Infringement Claim. The parties will then discuss the best way
to deal with the Third Party Infringement
Claim.
|
|
|
(b)
|
If
Derma Sciences receives or is subject to a Third Party Infringement Claim
that relates to either:
|
|
|
(i)
|
a
Licensed Product or any part of a Licensed Product, that is not claimed in
any Patent Right; or
|
|
|
(ii)
|
the
making, using or Supplying of a Licensed Product in a territory other than
the United States of America, the European Union, Australia or New
Zealand,
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
21
|
then
Derma Sciences will defend or settle such claim at its sole
expense.
|
|
(c)
|
If
Derma Sciences receives or is subject to a Third Party Infringement Claim
that relates to either:
|
|
|
(i)
|
a
Licensed Product or any part of a Licensed Product, that is claimed in any
Patent Right that exists in the country in which the Third Party
Infringement Claim is brought; or
|
|
|
(ii)
|
the
making, using or Supplying of a Licensed Product in the United States of
America, the European Union, Australia or New
Zealand,
|
then:
|
|
(iii)
|
Derma
Sciences will be solely responsible for the first US$20,000 of out of
pocket expenses reasonably incurred by it in dealing with such Third Party
Infringement Claim;
|
|
|
(iv)
|
subject
to paragraph (iii) above, Comvita will reimburse Derma Sciences for half
of the out of pocket expenses reasonably incurred by Derma Sciences in
dealing with such Third Party Infringement Claim, up to a maximum of
US$500,000 in total for all Third Party Infringement Claims received by
Derma Sciences during the Term; and
|
|
|
(v)
|
the
parties will establish a committee to make decisions in relation to
dealing with such Third Party Infringement Claim. The committee
will appoint appropriate counsel to represent Derma Sciences and/or
Comvita (as the case may be) in defending or settling such Third Party
Infringement Claim.
|
|
|
(d)
|
In
defending or settling any Third Party Infringement Claim under this clause
8.3, Derma Sciences must get Comvita’s or its licensor’s written consent
before making any statement (whether express or implied) about the
validity or enforceability of any Patent Rights, Know-How or Trade Marks,
or any liability of Comvita or its
licensor.
|
|
9.
|
TRADE
MARKS
|
|
9.1
|
Use of Trade
Marks:
|
|
|
(a)
|
Derma
Sciences will ensure that all Licensed Products Supplied by Derma Sciences
under this Agreement are marked with the Trade Marks in a prominent manner
on the front of the packaging and as otherwise reasonably required by
Comvita in writing.
|
|
|
(b)
|
Derma
Sciences will:
|
|
|
(i)
|
provide
Comvita with examples of the use of the Trade Marks on packaging materials
prior to any new use;
|
|
|
(ii)
|
use
the Trade Marks only in the form stipulated from time to time by
Comvita;
|
|
|
(iii)
|
observe
any reasonable directions given by Comvita as to the colours and size of
representations of the Trade Marks;
and
|
|
|
(iv)
|
fully
comply with all guidelines, recommendations and requirements specified by
Comvita from time to time regarding the use of the Trade
Marks.
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
22
|
|
9.2
|
Restriction:
|
|
|
(a)
|
Derma
Sciences will use the Trade Marks only for the purposes authorised in this
Agreement. In particular, Derma Sciences may not use the Trade Marks in
any way that would tend to allow them
to:
|
|
|
(i)
|
become
generic;
|
|
|
(ii)
|
lose
their distinctiveness;
|
|
|
(iii)
|
become
liable to mislead the public; or
|
|
|
(iv)
|
be
materially detrimental to or inconsistent with the good name, goodwill,
reputation and image of Comvita.
|
|
|
(b)
|
For
the avoidance of doubt, Derma Sciences may not use the Trade Marks on or
in relation to any goods or services other than the Licensed Products or
OTC Products.
|
|
9.3
|
No use in
name: Derma Sciences may not at any time without the
prior written consent of Comvita:
|
|
|
(a)
|
use
the Trade Marks as part of any corporate, business or trading name of
Derma Sciences; or
|
|
|
(b)
|
register
any company name or domain name that incorporates any of the Trade
Marks.
|
|
9.4
|
Prohibitions on Derma
Sciences: Derma Sciences may not during or after the
Term do any of the following things, either directly or
indirectly:
|
|
|
(a)
|
seek
in its own name to register or otherwise protect anywhere in the world any
trade marks identical or confusingly similar to the Trade
Marks;
|
|
|
(b)
|
adopt
or use any trade xxxx, symbol or device
that:
|
|
|
(i)
|
incorporates
the Trade Marks;
|
|
|
(ii)
|
is
deceptively or confusingly similar to the Trade Marks;
or
|
|
|
(iii)
|
unfairly
competes with the Trade Marks;
|
|
|
(c)
|
contest,
dispute or challenge in any legal proceedings or otherwise, anywhere in
the world:
|
|
|
(i)
|
Comvita’s
ownership of any of the Trade
Marks;
|
|
|
(ii)
|
any
registration or application for registration by Comvita of any trade xxxx
that is either identical or confusingly similar to any of the Trade Marks;
or
|
|
|
(iii)
|
the
validity of any of the Trade Marks;
or
|
|
|
(d)
|
allow
or assist any other person to do any of the things specified in clauses
9.4(a) to (c).
|
|
9.5
|
Goodwill: Comvita
will own all goodwill arising from Derma Sciences’ use of the Trade Marks.
To the extent that such goodwill may not be owned by Comvita, this clause
9.5 will operate as an assignment of such goodwill to
Comvita.
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
23
|
|
9.6
|
Registered
user: Derma Sciences will, if requested by Comvita,
provide all assistance reasonably required by Comvita to obtain
registration of Derma Sciences as a user of the Trade Marks in the
Territory.
|
|
9.7
|
Use by
Comvita: Derma Sciences acknowledges and agrees that
Comvita may use the Trade Marks on or in relation
to:
|
|
|
(a)
|
any
products other than the Licensed Products;
and
|
|
|
(b)
|
Licensed
Products that are also OTC
Products.
|
|
10.
|
WARRANTIES,
INDEMNITY AND LIABILITY
|
|
10.1
|
Warranties: Comvita
warrants that:
|
|
|
(a)
|
as
at the Commencement Date it is the owner or exclusive licensee of the
Patent Rights and Trade Marks;
|
|
|
(b)
|
the
Patent Rights and the Know-How are all of the Intellectual Property Rights
owned by Comvita or its licensors in order to make, use and Supply
Licensed Products under this
Agreement;
|
|
|
(c)
|
it
has not done and will not in the future do, anything that would be
inconsistent with the exercise by Derma Sciences of the rights granted to
Derma Sciences under this Agreement;
and
|
|
|
(d)
|
it
is not aware that any third party other than Comvita’s licensors owns or
claims any rights in the Patent Rights or Trade
Marks.
|
|
10.2
|
No implied
warranties:
|
|
|
(a)
|
Each
party acknowledges that:
|
|
|
(i)
|
in
entering into this Agreement, it does not rely on any representation,
warranty, term or condition except as expressly provided in this
Agreement; and
|
|
|
(ii)
|
any
conditions, warranties or other terms implied by statute or common law are
excluded from this Agreement to the fullest extent permitted by
law.
|
|
|
(b)
|
Without
limiting the scope of clause 10.2(a), Comvita does not give any warranty,
representation or undertaking:
|
|
|
(i)
|
about
the efficacy or usefulness of the Inventions or the rights licensed under
clause 2.1, or about any fitness for a particular purpose or
merchantability, other than the warranty in clause
10.1(b);
|
|
|
(ii)
|
that
the making, importation, distribution, promotion, Supply, offering to
Supply, or use of any Licensed Products in the Territory, or exercise of
any of the rights granted under clause 2.1, will not infringe the
Intellectual Property Rights or other rights of any other person;
or
|
|
|
(iii)
|
that
Comvita will bring or prosecute any Infringement proceedings, or defend or
settle any Third Party Infringement Claims, subject to clause
8.3.
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
24
|
|
10.3
|
Indemnity: Derma
Sciences will defend, indemnify, keep indemnified and hold harmless
Comvita against any and all liabilities, losses, damages, costs and
expenses of any nature arising from any third party claims asserted
against or suffered by Comvita relating to the manufacture, distribution,
promotion, use or Supply of the Licensed Products in the
Territory.
|
|
10.4
|
Exclusion of
liability: In no event will either party (“first party”)
be liable (whether in contract, tort including negligence, or otherwise)
to the other for:
|
|
|
(a)
|
loss
of revenue or profit, loss of anticipated savings, loss of goodwill or
opportunity, loss of production, loss or corruption of data or wasted
management or staff time; or
|
|
|
(b)
|
loss,
damage, cost or expense of any kind whatsoever that is indirect,
consequential, or of a special
nature,
|
arising
directly or indirectly out of this Agreement, even if the first party had been
advised of the possibility of such loss, damage, cost or expense, and even if
such loss, damage, cost or expense was reasonably foreseeable by the first
party.
|
10.5
|
Insurance:
|
|
|
(a)
|
During
the Term and for three years afterwards, Derma Sciences will maintain with
a reputable insurer insurance coverage in amounts and against risks that
are normal for businesses similar to that of Derma
Sciences.
|
|
|
(b)
|
Comvita
will be named on such insurance policies as an interested party by
reason of the indemnity
in clause 10.4.
|
|
|
(c)
|
Derma
Sciences will, upon request, provide to Comvita a certificate from the
insurer confirming the terms of such
insurance.
|
|
11.
|
TERM
AND TERMINATION
|
|
11.1
|
Commencement and
term: This Agreement will come into effect on the
Commencement Date and will continue in full force and effect in
perpetuity, unless earlier terminated pursuant to clauses 2.12,
6.9(a)(iii), 6.9(d), 11.3 to 11.6, or
13.1(b).
|
|
11.2
|
Expiration of Patent
Rights: Upon:
|
|
|
(a)
|
the
expiration of the Patent Rights in one or more of the following countries
or territories:
|
|
|
(i)
|
the
United States; and
|
|
|
(ii)
|
all
countries within the European Union;
and
|
|
|
(b)
|
the
introduction of substantial competition in such market(s) and a
significant decrease in the gross margins derived by Derma Sciences from
the sale of the Licensed Products in such
market(s),
|
Comvita
agrees to negotiate with Derma Sciences in good faith an appropriate reduction
of the royalty percentages under clause 6.1 applicable to Net Sales Value
generated in the calendar years following the calendar year in which such events
occur, and/or an adjustment of the Minimum Royalty for such following calendar
years.
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
25
|
|
11.3
|
Non-payment of
royalties: Comvita may terminate this Agreement with
immediate effect by giving written notice to Derma Sciences
if:
|
|
|
(a)
|
any
royalties (other than those subject to a good faith dispute) remain unpaid
within 30 days following their due date;
and
|
|
|
(b)
|
Derma
Sciences has been given written notice of its failure to pay and has
failed to remedy that non-payment within ten Business Days following
receipt of that notice.
|
|
11.4
|
Challenge: Comvita
may terminate this Agreement with immediate effect by giving written
notice to Derma Sciences if Derma
Sciences:
|
|
|
(a)
|
directly
or indirectly challenges the validity, enforceability or ownership
of:
|
|
|
(i)
|
any
of the Patent Rights or Trade Marks;
or
|
|
|
(ii)
|
any
Know-How,
|
whether
or not by legal proceedings; or
|
|
(b)
|
assists
any other person to do any of the things in clause
11.4(a);
|
|
11.5
|
Restraint
Agreement: This Agreement will immediately terminate on
the termination of the Restraint Agreement for any
reason.
|
|
11.6
|
Termination on material breach,
insolvency etc: Without prejudice to any other right or
remedy it may have, either party may immediately terminate this Agreement
at any time by giving to the other party notice in writing
if:
|
|
|
(a)
|
the
other party is in material breach of this Agreement and the material
breach is not remedied within 20 Business Days of the other party
receiving notice specifying the material breach and requiring its remedy,
provided that for non-payment defaults and without limiting the effect of
clauses 4.6, 4.7 or 6.9, if it is not commercially reasonable for a
material breach to be fully cured within 20 Business Days, then the cure
period shall be extended for an additional period of no greater than six
months provided the party in material breach has commenced remedying the
default and has clearly demonstrated in writing that it is diligently
pursuing and continues to diligently pursue such
cure;
|
|
|
(b)
|
the
other party ceases or threatens to cease to carry on all or substantially
all of its business or operations, is declared or becomes bankrupt or
insolvent, is unable to pay its debts as they fall due, enters into a
general assignment of its indebtedness or a scheme of arrangement or
composition with its creditors, or takes or suffers any similar or
analogous action in consequence of
debt;
|
|
|
(c)
|
a
trustee, manager, administrator, administrative receiver, receiver,
inspector under any legislation or similar officer is appointed in respect
of the whole or any part of the other party’s assets or business;
or
|
|
|
(d)
|
an
order is made or a resolution is passed for the liquidation of the other
party (other than voluntarily for the purpose of a solvent amalgamation or
reconstruction).
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
26
|
|
11.7
|
Buyback: Upon
termination or expiry of this Agreement for any reason Comvita may (but
will not be obliged to) purchase some or all of the Licensed Products in
the possession of Derma Sciences as
follows:
|
|
|
(a)
|
Comvita
must give written notice to Derma Sciences no later than ten Business Days
following the date of termination or expiry, that it is interested in
purchasing from Derma Sciences all or some of the Licensed Products in the
possession of Derma Sciences and then unsold as at the date of Comvita’s
notice;
|
|
|
(b)
|
upon
receipt of Comvita’s notice under clause 11.7(a), Derma Sciences will
allow Comvita or its representatives to have access to all such Licensed
Products in order to inspect them;
|
|
|
(c)
|
within
ten Business Days following completion of the inspection under clause
11.7(b), Comvita may elect, by giving written notice to Derma Sciences, to
purchase some or all of those Licensed
Products;
|
|
|
(d)
|
following
receipt of Comvita’s notice under clause
11.7(c):
|
|
|
(i)
|
Derma
Sciences will deliver up to Comvita or its nominee all Licensed Products
the subject of such notice. Comvita will pay all costs of
delivery of such Licensed Products;
|
|
|
(ii)
|
the
Licensed Products purchased by Comvita must be in the same condition as
they were in at the time of inspection under clause
11.7(b);
|
|
|
(iii)
|
risk
of loss of or damage to such Licensed Products will pass to Comvita upon
delivery to Comvita or its nominee;
and
|
|
|
(iv)
|
Comvita
will pay for such Licensed Products together with any delivery costs by
the later of 30 days following receipt of a valid tax invoice from Derma
Sciences, or the date of delivery;
and
|
|
|
(e)
|
the
price for the Licensed Products purchased by Comvita under this clause
11.7 will be as agreed by the parties. If the price cannot be
agreed the price will be the Cost of Production of the Licensed Products
plus 25%.
|
|
11.8
|
Consequences of
termination: On termination or expiration of this
Agreement for any reason
whatsoever:
|
|
|
(a)
|
subject
to compliance with clause 11.7, Derma Sciences will be entitled to Supply
on a non-exclusive basis any unsold or unused stocks of the
Licensed Products for a period of three months following termination or
expiration (subject to compliance with the provisions of this Agreement
including payment of the royalties under clause
6.1);
|
|
|
(b)
|
subject
to clause 11.8(a), Derma Sciences will no longer be licensed to use or
otherwise exploit in any way the Patent Rights, Trade Marks or
Know-How;
|
|
|
(c)
|
the
Recipient will, upon receipt of a written request from the Disclosing
Party, return or destroy (at the Disclosing Party’s option), all
Confidential Information in the Recipient’s possession or under the
Recipient’s control. Upon the return or destruction (as the
case may be) of all such Confidential Information, the Recipient will
provide to the Disclosing Party a certificate stating that the
Confidential Information returned or destroyed comprises all the
Confidential Information in the Recipient’s possession or under the
Recipient’s control;
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
27
|
|
|
(d)
|
Derma
Sciences will deliver up to Comvita any relevant documents,
specifications, data, materials and information supplied by Comvita to
Derma Sciences under this Agreement that are in Derma Sciences’ possession
or under the control of Derma
Sciences;
|
|
|
(e)
|
Derma
Sciences will transfer to Comvita all of Derma Sciences’ rights and
obligations under any sub-licences granted under clause 2.8, if required
by Comvita in writing;
|
|
|
(f)
|
Derma
Sciences will, as soon as reasonably possible and to the extent possible,
seek to have any product licences, approvals, permits and applications
relating to the Licensed Products in the Territory transferred into the
name of Comvita or its nominee;
|
|
|
(g)
|
the
Restraint Agreement, Medical Honey Supply Agreement and R&D Agreement
will immediately terminate, and either party may elect to terminate the
Manufacturing Agreement with immediate
effect;
|
|
|
(h)
|
the
provisions of clauses 2.8(e), 3.2, 6.1 to 6.15, 7.2(c),
8.3, 9.4, 9.5, 10.2 to 10.5, 11.7, 11.8, 12.1 to 12.6, 13.1 to
13.13, and any other clauses intended to survive termination, together
with those other provisions of this Agreement that are incidental to, and
required in order to give effect to those clauses, will remain in full
force and effect; and
|
|
|
(i)
|
subject
to this clause 11.8, and except for any rights and remedies of the parties
that have accrued before termination or expiration, including for any
prior breach of this Agreement, neither party will be under any further
obligation to the other party.
|
|
12.
|
DISPUTES
|
|
12.1
|
Mediation: In
the event of a dispute arising out of or relating to this Agreement,
including any question regarding its existence, validity or termination,
the parties will first seek settlement of that dispute by mediation in
accordance with the LCIA Mediation Procedure, which Procedure is deemed to
be incorporated by reference into this clause
12.
|
|
12.2
|
Arbitration: If
the dispute is not settled by mediation within five days of the
commencement of the mediation, or such further period as the parties may
agree in writing, the dispute will be referred to and finally resolved by
arbitration under the LCIA Rules, which Rules are deemed to be
incorporated by reference into this clause
12.
|
|
12.3
|
Language: The
language to be used in the mediation and in the arbitration will be
English.
|
|
12.4
|
Governing
law: The governing law of this Agreement will be the
substantive law of New Zealand.
|
|
12.5
|
Arbitration
procedure: In any arbitration commenced pursuant to this
clause 12:
|
|
|
(a)
|
the
number of arbitrators will be three;
and
|
|
|
(b)
|
the
seat, or legal place, of arbitration will be London,
England.
|
|
12.6
|
Interlocutory
relief: Nothing in this clause 12 will prevent either
party, at any time, from seeking any urgent interlocutory relief from a
court of competent jurisdiction in relation to any matter that arises
under this Agreement.
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
28
|
|
13.
|
GENERAL
|
|
13.1
|
Force
majeure:
|
|
|
(a)
|
Neither
party will be liable to the other party for any breach or failure to
perform any of its obligations under this Agreement where such breach or
failure is caused by anything beyond that party’s reasonable control,
including (without limitation) war, civil commotion, hostility, act of
terrorism, strike, lockout, other industrial act, weather phenomena or
other act of God, or governmental regulation or direction (“Force
Majeure”), provided that the party seeking to rely on this
clause 13.1 has:
|
|
|
(i)
|
notified
the other party as soon as reasonably practicable upon becoming aware of
an actual or potential event of Force
Majeure;
|
|
|
(ii)
|
used
all reasonable endeavours to avoid, overcome or mitigate the effects of
the event of Force Majeure as quickly as practicable;
and
|
|
|
(iii)
|
consulted
with the other party on its efforts under clause
13.1(a)(ii).
|
|
|
(b)
|
If:
|
|
|
(i)
|
as
a result of a Force Majeure a party is unable to perform any of its
material obligations under this Agreement;
and
|
|
|
(ii)
|
the
ability of such party to perform any such material obligation has
been permanently affected by such Force
Majeure,
|
then the
party not subject to the event of Force Majeure may terminate this Agreement on
giving the other party ten Business Days’ written notice.
|
|
(c)
|
Nothing
in this clause 13.1 will excuse a party from any obligation to make a
payment when due under this
Agreement.
|
|
13.2
|
Variations: No
amendment, variation or modification to this Agreement will be effective
unless it is in writing and signed by duly authorised representatives of
both parties.
|
|
13.3
|
Assignment:
|
|
|
(a)
|
Derma
Sciences may assign any or all of its rights and obligations under this
Agreement, provided it first obtains the written consent of Comvita, such
consent not to be unreasonably
withheld.
|
|
|
(b)
|
Comvita
may assign any or all of its obligations under this Agreement, provided it
first obtains the written consent of Derma Sciences, such consent not to
be unreasonably withheld.
|
|
|
(c)
|
Comvita
may assign any or all of its rights under this Agreement at any time,
without requiring the consent of Derma
Sciences.
|
|
13.4
|
No
waiver:
|
|
|
(a)
|
A
delay, neglect or forbearance by a party in enforcing any provision of
this Agreement against the other will not waive or limit any right of that
party.
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
29
|
|
|
(b)
|
No
provision of this Agreement will be considered waived by a party unless
that party waives the provision in writing.
|
|
|
(c)
|
The
parties will not treat a waiver by a party of any breach as a waiver of
any continuing or re-occurring breach, unless the parties have expressly
agreed to do so in writing.
|
|
13.5
|
Invalid
clauses: If any part of this Agreement is held to be
invalid, unenforceable or illegal for any reason, this Agreement will be
deemed to be amended by the addition or deletion of wording necessary to
remove the invalid, unenforceable or illegal part, but otherwise to retain
the provisions of this Agreement to the maximum extent permissible under
applicable law.
|
|
13.6
|
Relationship:
|
|
|
(a)
|
The
parties will perform their obligations under this Agreement as independent
contractors to each other.
|
|
|
(b)
|
Nothing
in this Agreement will create, constitute or evidence any partnership,
joint venture, agency, trust or employer/employee relationship between the
parties, unless it expressly states otherwise. Neither party
may represent, or allow anyone to represent, that any such relationship
exists between the parties.
|
|
|
(c)
|
Neither
party will have the authority to act for, or incur any obligation on
behalf of, the other party, except as expressly provided for in this
Agreement.
|
|
13.7
|
Notices:
|
|
|
(a)
|
Each
notice or other communication to be given under this Agreement (“Notice”)
must be in writing and must be:
|
|
|
(i)
|
in
the English language and clearly
legible;
|
|
|
(ii)
|
sent
by pre-paid post, facsimile (confirmed by pre-paid post) or personal
delivery to the addressee at the facsimile number, physical address, or
postal address specified in clause 13.7(b);
and
|
|
|
(iii)
|
marked
for the attention of the person or office holder (if any) specified in
clause 13.7(b).
|
|
|
(b)
|
The
initial facsimile number, address, and relevant person or office holder of
each party are, unless otherwise notified by the relevant party in writing
to the other party, as set out
below:
|
|
|
Comvita:
|
Comvita
New Zealand Limited
|
Xxxxxx
Road South
Paengaroa
NEW
ZEALAND
Facsimile: x00
0 000 0000
Attention: Chief
Executive Officer
|
|
Derma
Sciences:
|
000
Xxxxxxxx Xxxxxx
Xxxxx
000
Xxxxxxxxx
Xxx
Xxxxxx 00000
XXXXXX
XXXXXX OF AMERICA
Facsimile: x0(000)
000-0000
Attention: Chief
Executive Officer
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
30
|
|
|
(c)
|
No
Notice will be effective until received. A Notice is, however,
deemed to be received:
|
|
|
(i)
|
in
the case of posting, on the third Business Day following the date of
posting;
|
|
|
(ii)
|
in
the case of personal delivery, when received;
and
|
|
|
(iii)
|
in
the case of a facsimile, following receipt of a report from the machine on
which the facsimile was sent confirming that all pages were successfully
transmitted,
|
but any
Notice personally delivered or received by facsimile either after 5.00 pm on a
Business Day, or on any day that is not a Business Day, will be deemed to have
been received on the next Business Day.
|
|
(d)
|
Despite
clauses 13.7(a) and (c)(i), if the Notice is posted from a country other
than the country of the addressee, the method of posting must be pre-paid
airmail, and the Notice will be deemed to be received on the seventh
Business Day following the date of
posting.
|
|
13.8
|
Further
action: Each party agrees to execute, acknowledge and
deliver all instruments, make all applications and do all things, as may
be necessary or appropriate to carry out the purposes and intent of this
Agreement.
|
|
13.9
|
Announcements: Neither
party may:
|
|
|
(a)
|
make
any press or other public announcement about any aspect of this Agreement;
or
|
|
|
(b)
|
use
the name of the other party in connection with or as a result of this
Agreement,
|
without
the other party’s prior written consent.
|
13.10
|
Entire
agreement:
|
|
|
(a)
|
This
Agreement and the Confidentiality Agreement contains the whole of the
contract and understanding between the parties relating to the matters
covered by it.
|
|
|
(b)
|
This
Agreement supersedes all prior representations, agreements, statements and
understandings between the parties relating to those matters, whether
verbal or in writing.
|
|
|
(c)
|
The
parties acknowledge that they do not rely on any representation,
agreement, term or condition that is not set out in this
Agreement.
|
|
13.11
|
Counterparts:
|
|
|
(a)
|
The
parties may sign this Agreement in any number of counterparts (including
facsimile or PDF copies), and a party may enter into this Agreement by
signing any counterpart.
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
31
|
|
|
(b)
|
The
parties confirm that their signing of this Agreement by such means will be
valid and sufficient. All counterparts, when taken together,
will constitute one and the same
agreement.
|
|
13.12
|
Costs: Each
party will bear its own legal costs and expenses incurred in connection
with the preparation, negotiation and execution of this
Agreement.
|
|
13.13
|
Remedies
cumulative:
|
|
|
(a)
|
The
rights of the parties under this Agreement are
cumulative.
|
|
|
(b)
|
The
parties do not exclude any rights provided by law, unless otherwise
expressly stated in this Agreement.
|
SIGNED
|
COMVITA NEW ZEALAND
LIMITED
|
by: | /s/ Xxxxx X. Xxxxxxx |
|
Signature of Authorised
Signatory
|
||
| Xxxxx X. Xxxxxxx | ||
|
Name
of Authorised
Signatory
|
|
DERMA SCIENCES, INC
|
by: | /s/ Xxxxxx X. Xxxxxx |
|
Signature of Authorised
Signatory
|
||
| Xxxxxx X. Xxxxxx | ||
|
Name
of Authorised
Signatory
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
32
|
SCHEDULE
1
PATENTS
AND PATENT APPLICATIONS
|
Country
|
Comvita name and description
|
Number
|
||
|
Australia
|
Honey
Wax and Oil Ointment
|
2003234758
|
||
|
Germany
|
Honey
Wax and Oil Ointment
|
10337340
|
||
|
United
Kingdom
|
Honey
Wax and Oil Ointment
|
2391809
|
||
|
United
States of America
|
Honey
Wax and Oil Ointment
|
11/106,473
|
||
|
Australia
|
Hydrocolloid
composition
|
2003234758
|
||
|
Europe
|
Hydrocolloid
composition
|
06790431.8
|
||
|
United
States of America
|
Hydrocolloid
composition
|
12/091897
|
||
|
New
Zealand
|
Apinate
(Honey Impregnated Wound Dressing)
|
505514
|
||
|
Australia
|
Apinate
(Honey Impregnated Wound Dressing)
|
2001-282707
|
||
|
Australia
|
Apinate
(Honey Impregnated Wound Dressing)
|
2007100007
|
||
|
United
States of America
|
Apinate
(Honey Impregnated Wound Dressing)
|
10/312,742
|
||
|
Canada
|
Apinate
(Honey Impregnated Wound Dressing)
|
0000000
|
||
|
Xxxxx
|
Apinate
(Honey Impregnated Wound Dressing)
|
2002-505050
|
||
|
Europe
|
Manusorb
(Wound Dressings)
|
02804300.8
|
||
|
United
States of America
|
Manusorb
(Wound Dressings)
|
12/108421
|
||
|
Canada
|
Manusorb
(Wound Dressings)
|
2,469,033
|
||
|
Australia
|
Manusorb
(Wound Dressings)
|
2002365662
|
||
|
New
Zealand
|
Manusorb
(Wound Dressings)
|
545248
|
||
|
Europe
|
Manugel
(Use of Honey in Medical Dressings)
|
1237561
|
||
|
Australia
|
Manugel
(Use of Honey in Medical Dressings)
|
781878
|
||
|
United
States of America
|
Manugel
(Use of Honey in Medical Dressings)
|
6,956,144
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
33
|
|
Country
|
Comvita name and description
|
Number
|
||
|
Canada
|
Manugel
(Use of Honey in Medical Dressings)
|
2,397,614
|
||
|
Japan
|
Manugel
(Use of Honey in Medical Dressings)
|
2001-543121
|
||
|
Singapore
|
Manugel
(Use of Honey in Medical Dressings)
|
00000
|
||
|
Xxxxx
Xxxxxx
|
Xxxxxxx
(Xxx of Honey in Medical Dressings)
|
0000/0000
|
||
|
Xxx
Xxxxxxx
|
Xxxxxxx
(Xxx of Honey in Medical Dressings)
|
501687
|
||
|
New
Zealand
|
Wound
Closure Dressing (Wound Closure Dressing)
|
533121
|
||
|
Australia
|
Wound
Closure Dressing (Wound Closure Dressing)
|
2005244719
|
||
|
New
Zealand
|
Honey
Gel (A Medical Composition)
|
542258
|
||
|
Australia
|
Honey
Gel (A Medical Composition)
|
2006288017
|
||
|
Canada
|
Honey
Gel (A Medical Composition)
|
2621774
|
||
|
China
|
Honey
Gel (A Medical Composition)
|
200680032701.7
|
||
|
Europe
|
Honey
Gel (A Medical Composition)
|
060799584
|
||
|
United
States of America
|
Honey
Gel (A Medical Composition)
|
12/066,077
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
34
|
SCHEDULE
2
TRADE
MARKS
Trade
marks:
MEDIHONEY
Trade
xxxx registrations and applications:
|
Country
|
Number
|
Xxxx
|
Classes
|
|||
|
Australia
|
1077514
|
XXXXXXXXX
|
0,
0, 00
|
|||
|
Xxxxxxxxx
|
703128
|
|
5
|
|||
|
Australia
|
861941
|
|
3,
30
|
|||
|
Canada
|
553239
|
|
5
|
|||
|
China
|
4109683
|
|
5
|
|||
|
China
|
4109682
|
|
30
|
|||
|
China
|
4109684
|
|
3
|
|||
|
China
|
7147550
|
|
3
|
|||
|
China
|
7147548
|
|
5
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
35
|
|
Country
|
Number
|
Xxxx
|
Classes
|
|||
|
China
|
7147549
|
|
30
|
|||
|
Hong
Kong
|
2001B01778
|
|
5
|
|||
|
Hong
Kong
|
301205487
|
|
3,
5, 30
|
|||
|
India
|
1286029
|
|
3
|
|||
|
India
|
1286030
|
|
5
|
|||
|
India
|
1286031
|
|
30
|
|||
|
Japan
|
11-106028
|
|
0
|
|||
|
Xxxxx
Xxxxx
|
00-0000-0000000
|
|
0
|
|||
|
Xxxxx
Xxxxx
|
00-0000-0000000
|
|
5
|
|||
|
South
Korea
|
00-0000-0000000
|
|
30
|
|||
|
Malaysia
|
2004-09060
|
|
30
|
|||
|
Malaysia
|
2004-09061
|
|
5
|
|||
|
Malaysia
|
2004-09062
|
|
3
|
|||
|
New
Zealand
|
735743
|
|
3,
5, 30
|
|||
|
New
Zealand
|
605127
|
|
0
|
|||
|
Xxxxxx
|
000000
|
|
0,
0, 00
|
|||
|
Xxxxxxxxx
|
X0000000X
|
|
5
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
36
|
|
Country
|
Number
|
Xxxx
|
Classes
|
|||
|
Thailand
|
584169
|
|
3
|
|||
|
Thailand
|
584170
|
|
05
|
|||
|
Thailand
|
584171
|
|
30
|
|||
|
Taiwan
|
01150454
|
|
5
|
|||
|
Taiwan
|
01152039
|
|
30
|
|||
|
Taiwan
|
01140175
|
|
0
|
|||
|
Xxxxxx
|
00000000
|
|
0,
0, 00
|
|||
|
Xxxxxx
Xxxxxx of America
|
2694376
|
|
5
|
|||
|
European
Union
|
001386259
|
|
05
30
32
|
SCHEDULE
3
LICENSED
PRODUCTS
Honey
impregnated non adhesive alginates
|
|
·
|
rope
– 31012
|
|
|
·
|
2x2”
(5x5cm) – 31022,
|
|
|
·
|
4x5”
– 31045
|
|
|
·
|
10x10cm
|
Honey
impregnated tulle type dressings
|
|
·
|
Actilite
2x2” (5x5cm)
|
|
|
·
|
Actilite
10x10cm
|
|
|
·
|
Actilite
4x5”
|
|
|
·
|
Gauze
2x2” (5x5cm)
|
|
|
·
|
Gauze
10x10cm
|
|
|
·
|
Gauze
4x5”
|
Honeycolloid
non-adhesive sheets
|
|
·
|
2x2”
(5x5cm) – 31222
|
|
|
·
|
10x10cm
|
|
|
·
|
4x5”
– 31245)
|
Honeycolloid
adhesive sheets
|
|
·
|
2x2”
(5x5cm) – 31422
|
|
|
·
|
10x10cm
|
|
|
·
|
4x5”
– 31445
|
100%
Honey in tubes
|
|
·
|
10g
|
|
|
·
|
20g
|
|
|
·
|
25g
|
|
|
·
|
50g
|
|
|
·
|
1oz
(28.35g) – 31501
|
|
|
·
|
1.5oz
(42.52g) - 31515
|
|
|
·
|
3oz
(85.05g) -31530
|
Medihoney
Gel (honey with gelling agents) in tubes
|
|
·
|
10g
|
|
|
·
|
20g
|
|
|
·
|
25g
|
|
|
·
|
50g
|
|
|
·
|
1oz
(28.35g) – 31501
|
|
|
·
|
1.5oz
(42.52g)
|
|
|
·
|
3.0oz
(85.05g)
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
38
|
Hydrogel-based
honey Adhesive and/or non-adhesive dressings
|
|
·
|
2x2”
(5x5cm)
|
|
|
·
|
10x10cm
|
|
|
·
|
4x5”
|
Derma
Cream in tubes
|
|
·
|
15g
|
|
|
·
|
20g
|
|
|
·
|
50g
|
|
|
·
|
1oz
(28.35g) – 31501
|
|
|
·
|
1.5oz
(42.52g)
|
|
|
·
|
3.0oz
(85.05g)
|
Barrier
Cream in tubes
|
|
·
|
15g
|
|
|
·
|
20g
|
|
|
·
|
50g
|
|
|
·
|
1oz
(28.35g) – 31501
|
|
|
·
|
1.5oz
(42.52g)
|
|
|
·
|
3.0oz
(85.05g)
|
Sticking
plasters
|
|
·
|
Multiple
sizes of sticking plasters that include Medical
Honey.
|
Hydrogrel
|
|
·
|
3.8cm,
Sterile 1’s, 10/box
|
|
|
·
|
7cm
x 7cm, Sterile 1’s, 10/box
|
|
|
·
|
11cm x 11cm, Sterile 1’s,
10/box
|
|
|
·
|
15.2cm x 22.9cm, Sterile 1’s,
10/box
|
|
|
·
|
7cm x 7cm, w/adhesive border,
Sterile 1’s, 10/box
|
|
|
·
|
11cm x 11cm, w/adhesive border,
Sterile 1’s, 10/box
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
39
|
SCHEDULE
4
MEDICAL
HONEY SPECIFICATIONS
The
specifications that Medical Honey must comply with in terms of content, quality
and essential features are those specifications set out in Comvita’s Product
Specifications numbered 4460A-002, 3980A-001, 4040A-001 and 4124A-001 and
Comvita’s Product Information Sheet for Medical Honey 12+ (Code 743), copies of
which are attached as an exhibit hereto, as may be updated or revised by Comvita
from time to time after consultation with Derma Sciences.
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
40
|
SCHEDULE
5
OTC
PRODUCTS
100%
Honey in tubes (maximum retail sale carton up to 10 units)
|
|
·
|
25g
|
|
|
·
|
1oz
(28.35g) – 31501
|
|
|
·
|
1.5oz
(42.52g) – 31515
|
|
|
·
|
50g
|
|
|
·
|
3oz
(85.05g) -31530
|
Medihoney
Gel (honey with gelling agents) in tubes (maximum retail sale carton up to 10
units)
|
|
·
|
25g
|
|
|
·
|
1oz
(28.35g) – 31501
|
|
|
·
|
1.5oz
(42.52g) – 31515
|
|
|
·
|
50g
|
|
|
·
|
3oz
(85.05g) -31530
|
Derma
Cream in tubes (maximum retail sale carton up to 10 units)
|
|
·
|
15g
|
|
|
·
|
20g
|
|
|
·
|
1oz
(28.35g) – 31501
|
|
|
·
|
1.5oz
(42.52g)
|
|
|
·
|
50g
|
|
|
·
|
3.0oz
(85.05g)
|
Barrier
Cream in tubes (maximum retail sale carton up to 10 units)
|
|
·
|
15g
|
|
|
·
|
20g
|
|
|
·
|
1oz
(28.35g) – 31501
|
|
|
·
|
1.5oz
(42.52g)
|
|
|
·
|
50g
|
|
|
·
|
3.0oz
(85.05g)
|
Sticking
plasters
|
|
·
|
Multiple
sizes up to 25cm2
honeycolloid or similar patch size with maximum retail box size of 99
“sticking plaster” units
|
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
41
|
SCHEDULE
6
MINIMUM
ROYALTY
|
Calendar Year
|
Minimum Royalty To Pay
|
|
|
2010
|
[*]
|
|
|
2011
|
US$[*]
|
|
|
2012
|
US$[*]
|
|
|
2013
|
US$[*]
|
|
|
2014
|
US$[*]
|
|
|
2015
and each successive calendar year afterwards
|
The
minimum royalty will be the higher of:
(a)
the amount of royalty that Derma Sciences would have paid on [*]% of the
Net Sales Value actually generated by Derma Sciences in the previous
calendar year; and
(b)
US$[*].
|
For
example, if the Net Sales Value in 2014 was $[*] then the Minimum Royalty for
2015 would be the royalty payable on $[*] Net Sales Value ([*] x $[*] or
$[*]).
[*]
Redacted pursuant to a request for confidential treatment submitted to the
SEC.
|
exhibit
10.01 licence agmt with redactions
|
Licence
Agreement
|
42
|
