Exhibit 10.4
DATED 1st September 2002
HALL EFFECT TECHNOLOGIES LIMITED
and
UNIPATH LIMITED
PATENT LICENCE AGREEMENT
2
CONTENTS
Clause ............................. Page
1. Interpretation.................................................. 1
2. Grant........................................................... 2
3. Provision of Know-How........................................... 2
4. Improvements.................................................... 2
5. Infringement.................................................... 2
6. Royalty......................................................... 3
7. Maintentance of Patents......................................... 4
8. Confidentiality................................................. 5
9. Term and Termination............................................ 5
10. Force Majeure................................................... 6
11. Notices......................................................... 6
12. Assignment and Subcontracting................................... 7
13. Disputes........................................................ 7
14. General......................................................... 7
Schedules
1. Licensed Patents.................................................. 9
2. Sales Estimate.................................................... 10
Signatories.......................................................... 11
THIS AGREEMENT is dated 1st September, 2002
BETWEEN:
(1) HALL EFFECT TECHNOLOGIES LIMITED (Registered No. 3344705) whose registered
office is at 22 The Office Village, Exchange Quays, Salford Quays, Greater
Manchester (Licensor); and
(2) UNIPATH LIMITED (Registered No. 417198) whose registered office is at Xxxxxx
Xxxxxxxx Xxxx, Xxxxxxx, XX00 0XX (Licensee).
BACKGROUND
(A) Following an R&D agreement the parties wish to market products emanating
from their joint work. The Licensor has agreed to grant and Licensee has agreed
to take a licence of certain patent rights on the terms set out in this
agreement.
IT IS AGREED:
1. Interpretation
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1.1 In this agreement:
Affiliate means, in relation to Licensee, any company which is for the time
being a holding company of that party or a subsidiary of that party or of any
such holding company;
Field of Use means medical devices for point of care testing or home testing for
measuring plasma or blood coagulation;
Improvement means any improvement enhancement or modification to the Licensed
Product or its method of manufacture;
Licensed Patents means all patent applications in the Territory which are
equivalent to and/or claim priority from application [ ] and granted patents
issuing from such applications together with all re-issues and extensions of
such granted patents;
Licensed Products means (i) units of consumable test strips for use in
determination of blood or plasma coagulation, or (ii) any other articles falling
within the scope of any of the claims of any of the Licensed Patents;
Royalty Rate shall be 2% of the Net Sales Price of each Licensed Product;
Territory means world-wide; and
Net Sales Price means the amount invoiced by the Licensee or an Affiliate of the
Licensee to an independent third party for sale of Licensed Product less any
customary trade, quantity or cash discounts, free samples, inclusions in starter
packs and non-affiliated broker's or agent's commissions actually allowed and
taken, amounts repaid or credited by reason of rebate, rejection, return,
short-dating or outdating, and less any import, value added or excise taxes and
customs duties levied and any other governmental charges made as to production,
sale, transportation, delivery or use to the extent such charges are paid by the
Licensee or Affiliate and are separately identified on invoices.
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1.2 The headings in this agreement do not affect its interpretation.
1.3 The schedules and appendices to this agreement form part of it.
2. Grant
2.1 Licensor hereby grants to Licensee an exclusive licence under the Licensed
Patents in the Field of Use to manufacture, have manufactured and to market,
distribute and sell or otherwise, Licensed Products in the Territory;
2.2 Licensee shall have the right to grant sub-licences under this agreement to
any of its Affiliates provided that each Affiliate agrees to be bound by the
terms and conditions of this agreement.
2.3 No further right or licence is granted by Licensor to Licensee by this
agreement save as expressly set out in this clause 2.
2.4 Licensor hereby undertakes not during the term of this agreement itself to
exploit the Licensed Patents in the Territory in the Field of Use or to purport
to grant others the right to do so, provided that this shall not prevent it
dealing in such Licensed Products as are supplied to it by Licensee.
3. Provision of Know-How
3.1 The Licensor shall in addition make available to the Licensee such know-how
relating to the manufacture of the Licensed Products as the Licensor has in its
possession and is reasonably required for such purpose.
3.2 Such technology and know-how furnished by Licensor under clause 3.1 shall be
used by Licensee only for the purpose as set out clause 3.1 and shall be subject
to the provisions of clause 8.
4. Improvements
4.1 If either party shall at any time devise, discover or acquire rights in any
Improvement it shall to the extent that it is not prohibited by law or by any
undertaking given to any other person or by considerations relating to the
securing of a patent promptly notify the other party in writing giving details
of it and provide its Affiliates such information or explanations as its
Affiliates may reasonably require to be able effectively to utilise the
Improvement and in any case where the party applies for a patent in respect of
any such Improvement it shall grant an irrevocable,non-exclusive, royalty-free,
worldwide licence to use and exploit such application and any patent granted
pursuant to it.
4.2 Such information as is provided by Licensor to Licensee under clause 4.1
shall be subject to the provisions of clause 8.
5. Infringement
5.1 In the event that:
(a) any Licensed Patent is attacked or being a patent application is opposed;
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(b) any application for a patent is made by or any patent is granted to a third
party by reason of which the third party may be granted or may have been granted
rights which conflict with any of the rights granted to Licensee or its
Affiliates under any Licensed Patent;
(c) any unlicensed activities are carried on by any third party which could
constitute an infringement of any Licensed Patent (which for the purposes of
this clause 5 shall be deemed to include any patent (whether in application or
granted) in respect of an Improvement of Licensor); or
(d) any application is made for a compulsory licence under any Licensed Patent,
the party to whose attention such activity has been drawn shall promptly inform
the other party of the nature and extent of such known activity, following which
Licensor and Licensee shall as soon as practicable consult together to decide
what steps shall be taken to resolve the activity.
5.2 Licensor and Licensee shall take all steps as may be agreed by them under
clause 5.1, including the institution of legal proceedings where necessary in
the name of one of the parties or in the joint names of the Licensor and
Licensee as appropriate.
5.3 If Licensor and Licensee fail to agree under clause 5.2 and subject to
clause 5.4, Licensor shall have the right to take all steps to prevent the
infringement of the Licensed Patent and Licensee shall, at Licensor's request
and expense, render all reasonable assistance within Licensee's power. Licensor
shall bear all costs in relation to any proceeding which are under the exclusive
control of the Licensor and Licensor shall be entitled to retain for its own
absolute benefit any damages, costs or other expenses awarded or recovered in
any such proceedings.
5.4 If Licensor fails within 1 month to take those steps as are mentioned under
clause 5.3 or if Licensor informs Licensee that Licensor does not intend to take
any steps under clause 5.3, Licensee shall have the right and is authorised by
Licensor to take those steps independently. In so doing Licensee shall not be
taken as acting as the agent or in any way on behalf of Licensor but Licensor
shall give all reasonable assistance at Licensee's expense to facilitate any
proceedings by Licensee. Licensee shall bear all costs but shall be entitled to
retain for its own absolute benefit any damages, costs or other expenses awarded
or recovered in any such proceedings.
5.5 Nothing in this agreement shall constitute any representation that any
Licensed Patent (if a patent application) shall proceed to grant or if granted
shall be valid.
6. Royalty
6.1 In consideration of the rights granted under clause 2, Licensee shall pay to
Licensor royalties calculated at the Royalty Rate and payable in respect of all
Net Sales Price made by Licensee and Affiliates on and after the date of this
agreement provided always that in respect of any Licensed Product manufactured
and supplied as provided above, only a single royalty in accordance with the
provisions of this agreement shall be payable in respect of such manufacture or
supply.
6.2 Royalties payable under this agreement are exclusive of any value added (or
like) tax which may be payable on them and shall be paid gross without deduction
of any withholding or other income taxes and if subject to withholding or other
income taxes Licensee shall ensure that such sum is paid to Licensor as shall,
after deduction of such withholding or other income tax, be equivalent to the
royalties otherwise payable under the agreement.
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6.3 Royalties payable under this agreement shall be paid in sterling within 30
days of the end of each successive quarterly period of three months commencing
on 1st January, 1st April, 1st July and 1st October in each year.
6.4 For the purpose of converting into sterling the local currency of Licensee
in which such royalties arise, the rate of exchange to be applied shall be the
rate of exchange applied by the (London) bankers to Licensor for the purchase of
sterling with such foreign currency as at the close of business on the date when
the relevant payment first becomes due.
6.5 At the same time as payment of any such royalties falls due Licensee shall
submit or cause to be submitted to Licensor a statement in writing recording the
calculation of such royalties payable and in particular:
(a) the number of Licensed Products which have been supplied during the previous
quarter;
(b) the number of Licensed Products which have been manufactured during the
previous quarter but not yet supplied;
(c) the Net Sales Price of each Licensed Product supplied during the previous
quarter;
(d) the amount of royalties due and payable and the amount of any tax deductible
or due to be deducted from such figure;
6.6 Licensee shall keep proper records and books of account showing the quality,
description and price of Licensed Products supplied or put into use and such
records and books shall be kept separate from any records and books not relating
solely to the Licensed Products and be open at all times to inspection and audit
by Licensor or its duly authorised agent or representative who shall be entitled
to take copies of or extracts from the same and in the event such inspection or
audit should reveal a discrepancy in the royalties paid from those payable under
this agreement Licensee shall immediately make up the shortfall and reimburse
Licensor in respect of any professional charges incurred for such audit or
inspection.
6.7 The parties believe that, at the date of this agreement, the estimate
contained in schedule 2 is a reasonable estimate of the potential sales that
might be achievable under this agreement. Both parties acknowledge that the
estimate contained in schedule 2 is a non-binding estimate and does not
constitute any representation, warranty or otherwise that those sales will
actually be realised.
6.8 The provisions of this clause 6 shall remain in effect notwithstanding
termination or expiry of this agreement until the settlement of all subsisting
claims by Licensor.
7. Maintentance of Patents
7.1 Licensor shall pay all fees and charges and do all acts and things necessary
for the maintenance of all Licensed Patents that have been granted or that
proceed to grant and do all acts and things necessary to prosecute any of the
Licensed Patents that are applications.
7.2 Licensor shall not abandon any of the Licensed Patents or allow any of them
to lapse save with the prior written consent of Licensee. Such consent not to be
unreasonably withheld.
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8. Confidentiality
8.1 Each of the parties undertakes to keep confidential and not to disclose to
any third party or to use themselves except as permitted under or in accordance
with this agreement any confidential or secret information in any form directly
or indirectly belonging or relating to the other party, its Affiliates, its or
their business or affairs, disclosed by the one and received by the other
pursuant to or in the course of this agreement, including, without limitation,
any Improvement, know-how supplied under clause 3 and the existence and terms of
this agreement (Confidential Information).
8.2 Each of the parties undertakes to disclose Confidential Information of the
other on a confidential basis only to those of its officers, employees, agents,
professional advisers, bankers and contractors, to whom and to the extent to
which, such disclosure is necessary for the purposes contemplated under this
agreement and to ensure that all such personnel are bound by obligations of
confidentiality no less onerous than those contained in this agreement.
8.3 Each party shall, upon the written request of the other, procure that, free
of expense to the other, there is forthwith returned to the other any material
in which there is recorded any Confidential Information as defined in clause
8.1.
8.4 The obligations contained in this clause 8 shall survive the expiry or
termination of this agreement for any reason for a period of 5 years from the
date of expiration or termination but shall not apply to any Confidential
Information which:
(a) is publicly known at the time of disclosure to the receiving party;
(b) after disclosure becomes publicly known otherwise than through a breach of
this agreement by the receiving party, its officers, employees, agents or
contractors;
(c) can be proved by the receiving party to have reached its hands otherwise
than by being communicated by the other party including being known to it prior
to disclosure, or having been developed by or for it wholly independently of the
other party or having been obtained from a third party without any restriction
on disclosure on such third party of which the recipient is aware, having made
due enquiry;
(d) is required by law, regulation or order of a competent authority
(including any regulatory or governmental body or securities exchange) to be
disclosed by the receiving party, provided that, where practicable, the
disclosing party is given reasonable advance notice of the intended disclosure.
9. Term and Termination
9.1 This agreement shall come into effect on the execution of this agreement
and, subject to clause 9.2, shall continue in force until the expiry of the last
to expire of the Licensed Patents and/or supplementary protection certificates
or, if being patent applications, until there is no further possibility of any
of patent applications proceeding to grant.
9.2 Without prejudice to any other rights to which it may be entitled, either
party may give notice in writing to the other terminating this agreement with
immediate effect if:
(a) the other party commits any material breach of any of the terms of this
agreement and (if such a breach is remediable) fails to remedy that breach
within 30 days of that party being notified in writing of the breach;
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(b) if an order is made or a resolution is passed for the winding up of the
other party or if an order is made for the appointment of an administrator to
manage the affairs, business and property of the other party or if a receiver is
appointed of any of the other party's assets or undertaking or if circumstances
arise which entitle the Court or a creditor to appoint a receiver or manager or
which entitle the Court to make a winding-up order or if the other party takes
or suffers any similar or analogous action in consequence of debt.
9.3 Termination of this agreement however caused shall be without prejudice to
any rights or liabilities accrued at the date of termination.
9.4 If Licensee decides the Licensed Products not to be commercial viable and
cease the marketing thereof Licensor reserves the right to convert the licence
to a non-exclusive grant of rights.
10. Force Majeure
Neither party shall be liable to the other party for any delay or
non-performance of its obligations under this agreement arising from any cause
or causes beyond its reasonable control including, without limitation, any of
the following: act of God, governmental act, war, fire, flood, explosion, civil
commotion. Subject to the affected party promptly notifying the other party in
writing of the cause of the delay or non-performance and the likely duration of
the delay or non-performance, and provided the affected party uses its
reasonable endeavours to limit the effect of that delay or non-performance on
the other party, the performance of the affected party's obligations, to the
extent affected by the cause, shall be suspended during the period that the
cause persists. If the delay or non-performance described under the first
sentence continues for a period greater than 3 months, each party shall have the
right to terminate this agreement.
11. Notices
11.1 Any notice or other document to be served under this agreement may be
delivered or sent by post or facsimile process to the party to be served at its
address set out below:
(a) to Licensor at: (b) to Licensee at:
--------------------------------- ---------------------------
22 The Office Village Priory Business Park
--------------------------------- Bedford
Exchange Quays MK44 3UP
Xxxxxxxxxx Xxxxxx Xxxxxxx
X0 0XX
--------------------------------- ---------------------------
Fax: 0000 000 0000 Fax: 00000 000000
--------------------------------- ---------------------------
Marked for attention of the Chief Marked for attention of the
Executive Officer Managing Director
--------------------------------- ---------------------------
or at any other address or facsimile number or to any other addressee as it may
have notified to the other party in accordance with this clause 11. Any notice
or other document sent by post shall be sent by prepaid first class recorded
delivery post (if within the United Kingdom) or by prepaid airmail (if
elsewhere).
11.2 In proving service of a notice or document it shall be sufficient to prove
that delivery was made or that the envelope containing the notice or document
was properly addressed and posted (either by prepaid first class recorded
delivery post or by prepaid airmail, as the case may be) or that the facsimile
message was properly addressed and despatched, as the case may be.
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12. Assignment and Subcontracting
12.1 Subject to 12.2, neither party may assign, sublicense, transfer, create a
charge over or otherwise dispose of any of its rights or transfer or otherwise
dispose of any of its obligations under this agreement without the prior written
consent of the other party which shall not be unreasonably withheld or delayed.
12.2 Nothing in this agreement shall prevent or restrict either party from
assigning, sublicensing, transferring, creating a charge over or otherwise
disposing of any of its rights or from subcontracting, transferring or otherwise
disposing of any of its obligations under this agreement to an Affiliate or to
any person acquiring the whole or any part of its business or assets.
13. Disputes
13.1 Any dispute arising out of or in connection with this agreement (Dispute),
shall be referred by either party first to the nominated representatives of each
of the parties for resolution. If the Dispute cannot be resolved by the
nominated representatives of the parties within 14 days after the Dispute has
arisen, either party may give notice to the other party in writing (Notice) that
a Dispute has arisen. Within seven days after the date of the Notice, the
Dispute shall be referred to a senior executive of each of the parties for
resolution. If the Dispute is not resolved by agreement in writing between the
parties within 14 days after the date of the Notice, the Dispute shall be
resolved in accordance with the remaining provisions of this clause 13.
13.2 Any Dispute which has not been resolved under clause 13.1 shall, at the
request of either party made within 30 days after the Notice is given, be
referred to arbitration and finally resolved by arbitration under the Controlled
Cost Rules at the Chartered Institute of Arbitration, and those rules are deemed
incorporated by reference in this agreement
13.3 This clause 13 is without prejudice to either party's right to seek interim
relief against the other party (such as an injunction) through the English
courts to protect its rights and interests, or to enforce the obligations of the
other party.
14. General
14.1 No partnership or agency: Nothing in this agreement shall be deemed to
constitute a partnership between the parties, nor constitute either party the
agent of the other party for any purpose.
14.2 Counterparts: This agreement may be executed in any number of counterparts.
This has the same effect as if the signatures on the counterparts were on a
single copy of this agreement.
14.3 Waiver: The rights of each party under this agreement (a) may be exercised
as often as necessary; (b) are cumulative and not exclusive of rights or
remedies provided by law; and (c) may be waived only in writing and
specifically. Delay in exercising or non-exercise of any such right is not a
waiver of that right.
14.4 Amendments: Any amendment of this agreement shall not be binding on the
parties unless set out in writing, expressed to amend this agreement and signed
by authorised representatives of each of the parties.
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14.5 Severability: If any term of this agreement is or becomes illegal, invalid
or unenforceable in any jurisdiction, that shall not affect (a) the legality,
validity or enforceability in that jurisdiction of any other term of this
agreement; or (b) the legality, validity or enforceability in other
jurisdictions of that or any other provision of this agreement.
14.6 Further assurance: Each party undertakes, at the request and cost and
expense of the other party, to sign all documents and to do all other acts,
which may be necessary to give full effect to this agreement.
14.7 Costs: Each party shall pay the costs and expenses incurred by it in
connection with the entering into of this agreement.
14.8 Language:
(a) Any notice given in connection with this agreement must be in English.
(b) Any other document provided in connection with this agreement must be:
(i) in English; or
(ii) (unless the parties otherwise agree) accompanied by a certified English
translation. In this case, the English translation prevails unless the document
is a statutory or other official document.
14.9 Third Party Rights: A person who is not a party to this agreement may not
enforce any of its terms under the Contracts (Rights of Third Parties) Xxx 0000.
14.10 Whole agreement:
(a) This agreement, the documents referred to in it contain the whole agreement
between the parties relating to the transactions contemplated by this agreement
and supersede all previous agreements between the parties relating to the
transactions.
(b) Subject to clause 14.10(c), each party acknowledges that in entering into
this agreement it has not relied on any representation, warranty, collateral
contract or other assurance (except those set out in this agreement and the
documents referred to in it) made by or on behalf of any other party before the
date of this agreement. Each party waives all rights and remedies which, but for
this clause 14.10, might otherwise be available to it in respect of any such
representation, warranty, collateral contract or other assurance.
(c) Nothing in clause 14.10(b) limits or excludes any liability for fraud.
14.11Jurisdiction: parties agree that, subject to clause 13, the English courts
are to have exclusive jurisdiction to settle any disputes which may arise in
connection with this agreement and that any proceedings arising in connection
with this agreement may be brought to those courts.
14.12 Governing law: This agreement is governed by English law.
THIS AGREEMENT has been signed on behalf of the parties by their duly authorised
representatives on the date which appears first on page 1.
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SCHEDULE 1
Licensed Patents
PART I - Patent Application(s)
------------------------ ---------------------- ---------------------
Application No. Title Country
------------------------ ---------------------- ---------------------
PART II - Granted Patent(s)
------------------------ ---------------------- ---------------------
Patent No. Title Country
------------------------ ---------------------- ---------------------
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SCHEDULE 2
Sales Estimate
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SIGNATORIES
/s/ Xxxx Xxxxxx
-------------------------------------------
Signed by Xxxx Xxxxxx
for HALL EFFECT TECHNOLOGIES LIMITED
/s/ Xxxxx Xxxxx
-------------------------------------------
Signed by Xxxxx Xxxxx
for UNIPATH LIMITED
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