Exhibit 10.10
LICENSE AGREEMENT
This Agreement is made as of the 15 day of January 2002, between The RiceX
Company, a Delaware corporation located at 0000 Xxxx'x Xxxxxx Xxxxx, Xx Xxxxxx
Xxxxx, Xxxxxxxxxx 00000 (hereinafter called "Licensor"), and NutraStar
Technologies Incorporated, a Nevada corporation located at 0000 Xxxx'x Xxxxxx
Xxxxx, Xx Xxxxxx Xxxxx, Xxxxxxxxxx 00000 (hereinafter called "Licensee").
RECITALS
A. Licensor and Licensee are parties to an exclusive distribution agreement
(the "Distribution Agreement") dated as of December 12, 2001 and agree that this
license agreement (the "License Agreement") is entered into pursuant to the
Distribution Agreement and that the terms of the Distribution Agreement are
hereby incorporated by reference into this License Agreement.
B. Licensor is the owner of the trademarks as defined below and has the
exclusive right to license such trademarks.
C. Licensor is the owner of the patents as defined below and has the
exclusive right to license such patents.
D. Both parties desire that Licensor grant and Licensee acquire a license
in, to and under Licensor's right, title and interest in and to such trademarks
and patents upon the following terms and conditions, which terms and conditions
shall govern the use by Licensee of such trademarks and patents.
NOW, THEREFORE, in consideration of the foregoing and of the mutual
covenants and undertakings stated in the Distribution Agreement and hereinafter
set forth, and the payment to Licensor of the royalties, fees, or other payments
set forth in the Distribution Agreement and other good and valuable
consideration the sufficiency of which the parties acknowledge, it is agreed
between the parties as follows:
1. Definitions. Capitalized terms shall have the meaning set forth below.
1.1 Combined Products. The term "Combined Products" shall mean any material,
composition, ingredient, or product that is the result of Licensee adding to,
combining, changing, modifying or otherwise utilizing any of the Products (with
the exception of the sale, offer for sale, marketing, or distribution of the
Products by themselves) with Licensee's own materials, compositions,
ingredients, or other products.
1.2 Confidential Information. The term "Confidential Information" shall mean any
and all proprietary or confidential information of Licensor or Licensee which
may be exchanged between the parties at any time and from time to time during
the term of this License Agreement or the Distribution Agreement and which the
parties have either marked as "Confidential" or conveyed under the express
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understanding that such information is confidential. Information shall not be
considered confidential to the extent that it:
a. Is publicly disclosed through no fault of any party hereto, either before or
after it becomes known to the receiving party; or
b. Was known to the receiving party prior to the Effective Date set forth in the
Distribution Agreement, which knowledge was acquired independently and not from
the disclosing party (or such party's employees), to the extent that the
receiving party can show documentary evidence of such knowledge; or
c. Is subsequently disclosed to the receiving party in good faith by a third
party who has a right to make such disclosure; or
d. Has been published by a third party as a matter of right.
1.3 Field. The term "Field" shall mean the nutraceutical and human market.
1.4 Intellectual Property. The term "Intellectual Property" shall mean the
Trademarks, Patents, Patent Rights, and Inventions collectively.
1.5 Inventions The term "Inventions" shall mean all proprietary technical
information, software, trade secrets, developments, discoveries, know-how,
methods, techniques, formulae, processes and other proprietary ideas, whether or
not patentable or copyrightable, that are conceived of, discovered, developed or
reduced to practice, in whole or in part, by or for Licensor related to the
Products or Combined Products.
1.6 Patents. The term "Patents" shall mean the patents identified in Exhibit A
attached hereto and as set forth in Section 4(d) of the Distribution Agreement.
1.7 Patent Rights. The term "Patent Rights" shall mean all of Licensor's rights,
title and interest arising out of or resulting from (i) any and all U.S. and
foreign patent applications and patents covering the Inventions, (ii) the
patents and patent applications listed on Exhibit A attached hereto, (iii) all
claims of continuations-in-part directed solely to subject matter specifically
described in the Inventions, and (iv) divisionals, continuations, reissues,
reexaminations, renewals and extensions of any patent or application set forth
in (i)-(iii) above, so long as said patents have not been held invalid and/or
unenforceable by a court of competent jurisdiction from which there is no appeal
or, if appealable, from which no appeal has been taken. Exhibit A shall be
amended promptly by mutual agreement of the parties as any additional Patent
Rights arise.
1.8 Products. For purposes of this License Agreement, the term "Products" shall
collectively mean rice soluble and rice bran fiber concentrate, the "Products"
pursuant to the Distribution Agreement, and all forms of the stabilized rice
bran referred to in Section 2(a) and Exhibit A-1 of the Distribution Agreement.
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1.9 Term. The "Term" of this License Agreement and the licenses granted
hereunder shall be for the same period as the term of the Distribution
Agreement.
1.10 Territory. As set forth in Section 6 of the Distribution Agreement, the
term "Territory" shall mean the United States of America and all of its
territories and any additional countries or regions of countries that the
parties mutually agree upon in writing.
1.11 Trademarks. As set forth in Section 4(c) of the Distribution Agreement, the
term "Trademarks" shall mean the "MIRACHOL(R)," "MAXE(R)," and "RICEX(R)"
trademarks collectively.
2. Trademark License Grant. Licensor hereby grants and agrees to grant to
Licensee, (i) the exclusive license, including the right to sublicense pursuant
to the terms of Section 4.2 hereof, in the Territory to use the trademarks
"MIRACHOL(R)" and "MAXE(R)" in the Territory and (ii) the non-exclusive license
to use the "RICEX(R)" trademark in the Field during the Term. Licensee agrees
that the Trademarks shall be used and displayed only in such form and manner as
shall be specifically approved by Licensor.
3. Patent License Grant. Licensor hereby grants and agrees to grant to Licensee
the exclusive license, including the right to sublicense pursuant to the terms
of Section 4.3 hereof, in the Territory and in the Field, in, to and under all
of Licensor's right, title and interest to and under the Patents and Patent
Rights, to import, to use, to offer for sale, and to sell, modify, have
modified, market, and distribute directly or indirectly and through multiple
channels of distribution, the Products and Combined Products and to have those
rights exercised on its behalf, during the Term and subject to the provisions of
this License Agreement.
4. License Terms and Conditions.
4.1 Display of the Trademarks. Licensee is hereby required to imprint the RICEX
trademark brand on all Products or Combined Products sold by Licensee pursuant
to the Distribution Agreement. In addition, wherever and whenever possible and
applicable, Licensee is hereby required to affix the MIRACHOL and MAXE
trademarks on Products or Combined Products. Licensee is hereby required to
imprint the applicable Trademarks to or on packaging, advertising, promotional,
and all other materials sold, used, or distributed in connection with the
Products or Combined Products. Licensee hereby agrees to limit its use of the
Trademarks to the Territory and to the Products or Combined Products, packaging,
advertising, promotional, and other materials related thereto, all in accordance
with the foregoing and according to quality standards approved by Licensor as
set forth in Section 4.7 hereof.
4.2 Sublicense of Trademarks. Licensee's rights and obligations with respect to
the Trademarks under this Agreement may not be sublicensed by Licensee without
the prior written consent of Licensor, which consent shall not be unreasonably
withheld. Upon prior written consent of Licensor, Licensee may grant a
sublicense only for the performance of any acts to be performed by Licensee that
are contemplated under this Agreement. Any such sublicense shall be subject to
comparable applicable restrictions, exceptions, quality control, termination,
confidentiality, and other provisions contained in this License Agreement, and
provided further, that Licensee shall remain secondarily liable to Licensor for
the fulfillment of all of Licensee's obligations under this License Agreement.
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4.3 Sublicense of Patents. In the event Licensor is unable to provide Licensee
with the quantity of Products required by Licensee pursuant to the Distribution
Agreement and Licensor cannot cure such deficiency within sixty (60) days notice
of such deficiency from Licensee at any time during this License Agreement,
Licensor hereby grants to Licensee the right to grant a sublicense in and to the
Patents, Patent Rights, and Inventions to make or have Products made until such
time as the deficiency is cured by Licensor. Any such sublicense shall be
subject to comparable applicable restrictions, exceptions, quality control,
termination, confidentiality, and other provisions contained in this License
Agreement, and provided further, that Licensee shall remain secondarily liable
to Licensor for the fulfillment of all of Licensee's obligations under this
License Agreement.
4.4 Title. All rights in the Intellectual Property other than those specifically
granted herein are reserved to Licensor for its own use and benefit. Licensee
acknowledges that it shall not acquire any rights of whatsoever nature in the
Intellectual Property as a result of Licensee's use thereof, and that all use of
the Intellectual Property by Licensee shall inure to the benefit of Licensor.
Licensor agrees that it shall not, directly or indirectly, during the term of
this License Agreement or thereafter, attack the ownership by Licensor of the
Intellectual Property or the validity thereof or attack the validity of the
license herein granted to it. Licensee recognizes that the Products are not sold
but, rather licensed, by Licensor to Licensee and that the price indicated for
the Products in the Distribution Agreement is a license fee and not a purchase
price. All right, title, and interest in and to the Products and other
intellectual property rights related thereto at all times remain the sole and
exclusive property of Licensor. Any modifications, updates, improvements, or
adaptations to the Intellectual Property, no matter by whom made or paid for,
shall remain the property of Licensor. Upon Licensor's request, Licensee shall
promptly execute any documents deemed necessary or appropriate by Licensor to
confirm said ownership of such modifications, updates, improvements, or
adaptations to the Intellectual Property in Licensor. Licensee shall not use or
authorize the use of the Intellectual Property in any manner other than as
specifically permitted under this License Agreement.
4.5 Unauthorized Use. The license granted herein is granted solely to Licensee
and is not, by implication or otherwise, granted to any partner, subsidiary,
affiliate, or sublicensee (except as otherwise set forth herein) of Licensee.
Licensee shall not copy, distribute, reproduce, use, or allow access to the
Intellectual Property except as explicitly permitted under this License
Agreement and will not modify, adapt, prepare derivative works from , decompile,
reverse engineer, disassemble or otherwise attempt to use the Intellectual
Property in any manner not specifically authorized hereunder.
4.6 Licensee's Diligence. Licensee hereby acknowledges that Licensee shall use
it's best efforts to develop and manufacture the Products and Combined Products
and that Licensee shall use it's best efforts to sell, offer for sale,
distribute, import, market, advertise, and otherwise exploit the Products and
Combined Products. In addition, Licensee hereby acknowledges that it shall not
at any time during the Term of this License Agreement sell, offer for sale,
distribute, import, market, advertise, or otherwise exploit any material or
product that competes, either directly or indirectly, with any Products or
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Combined Products hereunder. At anytime during the Term, in the event that
Licensee fails to perform its obligations under this Section 4.6 in the sole
discretion of Licensor for a period of ninety (90) consecutive days, Licensor
shall have the right to terminate this License Agreement with immediate effect
upon written notice to Licensee.
4.7 Quality Control. Licensor or its representatives shall have the right, at
all reasonable times, to inspect the Combined Products and any marketing,
advertising, packaging, or other materials related thereto (collectively the
"Goods"). Licensee agrees to establish quality standards and shall submit such
standards to Licensor for Licensor's approval. Licensee agrees to: comply with
those quality standards approved by Licensor and maintain a level of quality in
the Goods so that such Goods as of the date of sale or other distribution shall
be of good and merchantable quality and fit for the purpose for which the Goods
are sold or otherwise distributed and will meet all applicable federal, state,
local, and international laws, rules and regulations; to remedy such quality
deficiencies as Licensor or its representatives may find and bring to Licensee's
attention; and upon request by Licensor, to provide samples of the Trademarks in
use to assist Licensor in maintaining quality control. If Licensor reasonable
determines that such Goods are not of the level of quality required by this
License Agreement, Licensee shall make such modifications to the use of the
Intellectual Property as reasonably requested by Licensor. In the event that
Licensee fails to make such modifications for a period of sixty (60) days,
Licensor may terminate this License Agreement pursuant to Section 9.2 hereof.
4.8 Foreign Registration. Licensee agrees to register this License Agreement
with any applicable foreign governmental agency that requires such registration,
and Licensee shall pay all costs and legal fees in connection therewith, and
such registration shall not be considered a violation of Section 5 hereof. In
addition, Licensee shall be responsible for satisfying all foreign laws
affecting this License Agreement and the sale of Products, Combined Products, or
other materials associated therewith which Licensee sells outside of the United
States.
5. Intellectual Property Administration.
5.1 Intellectual Property Prosecution and Maintenance. Licensor shall have
responsibility for and prepare all application filings, prosecution documents,
provide all maintenance and Licensee shall pay all fees and expenses, including
legal fees, relating to the Intellectual Property. Licensee shall provide
Licensor with all information in its possession necessary or useful for the
filing and prosecution of such Intellectual Property and shall cooperate fully
with Licensor so that Licensor may establish and maintain such rights. Attorneys
chosen by Licensor shall handle all filings and prosecutions on behalf of
Licensor. In the event Licensor declines to prepare necessary documents and fees
to apply for, prosecute or maintain any of the Intellectual Property, Licensee
shall have the right to pursue the same at Licensee's expense. Licensor shall
give sufficient and timely notice to Licensee of its decision not to prepare the
necessary documents and fees to apply for, prosecute or maintain any
Intellectual Property so as to permit Licensee to apply for, prosecute and
maintain such Intellectual Property. In such event, Licensor shall provide
Licensee with all information necessary or useful for the filing and prosecution
of such Intellectual Property and shall cooperate fully with Licensee so that
Licensee may establish and maintain such rights.
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5.2 Power of Attorney. In the event that either party is unable to provide the
necessary cooperation required to file, maintain, or prosecute the Intellectual
Property pursuant to Section 5.1 hereof, each party hereby irrevocably
designates and appoints the other party and its officers and agents as it's
agent and attorney in fact, to act for and in it's behalf and stead to execute
and file any such applications and documents, and to do all other lawfully
permitted acts to further the prosecution and issuance of letters patent,
copyright, or trademark registrations or transfers thereof with the same legal
force and effect as if executed by the other party.
5.3 Intellectual Property Marking. To the extent required by applicable law,
Licensee shall xxxx or require its sublicensees or other third parties to xxxx
all Products or Combined Products or their containers in accordance with the
applicable marking laws affecting the Intellectual Property.
5.4 Foreign Registration. Licensee agrees to register this License Agreement
with any applicable foreign governmental agency that requires such registration,
and Licensee shall pay all costs and legal fees in connection therewith, and
such registration shall not be considered a violation of Section 5.1. In
addition, Licensee shall be responsible for satisfying all foreign laws
affecting its sale of Products or Combined Products outside of the United
States.
6. Infringement Actions.
6.1 Prosecution and Defense of Infringements. Each party shall promptly provide
written notice to the other of any suspected infringement of any claims in the
Intellectual Property, or misuse, misappropriation, theft or breach of
confidence of other proprietary rights in the Intellectual Property by a third
party of which it is aware. Licensor shall have the right, but not the
obligation, to prosecute any and all infringements of any Intellectual Property
and to defend all charges of infringement arising as a result of the exercise of
Licensor's rights by Licensee, its sublicensees, or other third parties.
Licensor may enter into settlements, stipulated judgments or other arrangements
respecting such infringement, at its own expense, but only with the prior
written consent of Licensee, which consent shall not be unreasonably withheld.
Licensee shall permit any action to be brought in its name if required by law,
and Licensor shall hold Licensee harmless from any costs, expenses or liability
respecting all such infringements or charges of infringement. Licensee agrees to
provide reasonable assistance that Licensor may require in any litigation
arising in accordance with the provisions of this License Agreement. In the
event Licensor fails to prosecute any such infringement within a period of
ninety (90) days after receiving notice or otherwise having knowledge of such
infringement, then Licensee shall have the right to prosecute such infringement
on its own behalf.
6.2 Allocation of Recovery. Any damages or other recovery from an infringement
action undertaken by either party pursuant to Section 6.1: (i) shall first be
used to reimburse the parties for the costs and expenses incurred in such
action, and shall thereafter be allocated between the parties as follows, (ii)
shall be allocated pro rata to the parties in an amount equal to the damages and
expenses actually incurred by each, (iii) then any remainder amount shall be
remitted to the party undertaking the infringement action.
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7. Warranties, Indemnifications, and Limitations of Liability.
7.1 Authority. Each party warrants and represents to the other party that it has
the requisite authority, ability, and capabilities to enter into this License
Agreement and to perform all of its obligations thereunder.
7.2 Licensee Commercialization. Licensee warrants and represents to Licensor
that Licensee has sufficient capacity to manufacture the Combined Products and
sell, offer for sale, market, advertise, distribute, and import the Products and
Combined Products, and otherwise fulfill its obligations under this License
Agreement with respect to the exploitation and commercialization of the Products
and Combined Products.
7.3 Manufacturing Standard. Each party represents and warrants that the products
it manufactures shall be manufactured in a workmanlike manner, shall comply with
then current industry standards and will be free from defects in workmanship.
7.4 Consents and No Pending Matters. Each party hereby represent and warrants
that (i) it has the full right, power, and authority to enter into and be bound
by all of the terms and conditions of this License Agreement, and to carry out
all of it's obligations under this License Agreement, without the approval or
consent of any other person or entity, (ii) the entering into of this License
Agreement, and the carrying out of that party's obligations under this License
Agreement is not prohibited, restricted or otherwise limited by any contract,
agreement or understanding entered into by that party, or by which that party is
bound, with any other person or any governmental authority or entity, (iii)
there is no contract, agreement, understand or judgment entered into by a party,
or by which that party is bound, which if enforced, terminated, or modified,
would be in derogation of, contrary to, or adversely affect any of the rights
acquired or to be acquired hereunder by either party, and (iv) there is no
action, suit, proceeding, or investigation pending or currently threatened
against either party which, if adversely determined, would restrict or limit
that party's right to enter into and be bound by this License Agreement.
7.5 Insurance and Indemnifications.
(a) Each of the parties shall be responsible for its own errors and
omissions and shall indemnify, defend, and hold harmless the other party and the
other party's shareholders, directors, officers, employees, agents, affiliates,
successors, sublicensees, and assigns (collectively, the "Indemnitees"), against
and from all claims and losses incurred, suffered by, or imposed upon the
Indemnitees and arising out of the indemnifying party's own activities, acts or
omissions, except to the extent due to the negligent acts or omissions, willful
misconduct, recklessness of, or violation of applicable laws by, the
Indemnitees. In furtherance thereof, each party shall defend, indemnify, and
hold harmless the other and its shareholders, directors, officers, employees,
agents, affiliates, successors, and assigns (collectively, the "Indemnitees"),
against and from all claims and losses incurred, suffered by, or imposed upon
the Indemnitees to the extent arising out of any breach of any of the other
party's covenants, representations and warranties under this Agreement.
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(b) Licensee shall obtain and maintain a product liability insurance
policy with coverage in an amount equal to Five Million Dollars ($5,000,000)
naming Licensor as an additional insured.
(c) Licensee agrees to defend, indemnify, and hold Licensor harmless
against any loss, liability, damage, cost, or expense (including reasonable
legal costs and fees) arising out of any claims or suits, whatever their nature
and however arising, which may be brought or made against Licensor by reason of
or arising from (i) any breach of any term, condition, obligation,
representation, or warranty of this Agreement by Licensee; or (ii) any
allegation of product liability or personal injury arising from or relating to
the Combined Products or other products or materials of Licensee that differ
from the Products in the form and manner provided by Licensor to Licensee or
arising from the development, testing, manufacture, use, sale, offer for sale,
importation, exportation, storage, handling, transportation, distribution or any
other disposition of any Product or Combined Product and other materials related
thereto conducted by Licensee. In no event may Licensee enter into any third
party settlement agreements which would in any manner whatsoever affect the
right of, or bind, Licensor in any manner to said third party, without the prior
written consent of Licensor.
7.6 Limited Warranty. Licensor hereby represents and warrants that it has full
right and power to enter into this License Agreement. LICENSOR MAKES NO OTHER
WARRANTIES OTHER THAT THOSE EXPRESSLY PROVIDED FOR HEREIN. LICENSOR MAKES NO
EXPRESS OR IMPLIED WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE AS TO LICENSOR'S INTELLECTUAL PROPERTY RIGHTS OR ANY PRODUCT. LICENSOR
MAKES NO WARRANTY OR REPRESENTATION AS TO THE VALIDITY OR SCOPE OF LICENSOR'S
INTELLECTUAL PROPERTY RIGHTS, RELATED TECHNOLOGY, OR THAT ANY PRODUCT WILL BE
FREE FROM AN INFRINGEMENT ON PATENTS OR OTHER INTELLECTUAL PROPERTY RIGHTS OF
THIRD PARTIES.
7.7 Merchantability. TO THE MAXIMUM EXTENT PERMITTED BY APPLICABLE LAW, LICENSOR
DISCLAIMS ALL OTHER WARRANTIES, EITHER EXPRESS OR IMPLIED, INCLUDING BUT NOT
LIMITED TO IMPLIED WARRANTIES OF TITLE, NONINFRINGEMENT, MERCHANTABILITY AND
FITNESS FOR A PARTICULAR PURPOSE, WITH RESPECT TO THE PRODUCTS.
7.8 Limits on Liability. Licensor's liability for damages of any kind is limited
to any amounts paid to Licensor by Licensee under the Distribution Agreement
during the year in which the damages occur.
IN NO EVENT SHALL EITHER PARTY BE LIABLE FOR INCIDENTAL, SPECIAL, CONSEQUENTIAL,
OR PUNITIVE DAMAGES, INCLUDING, BUT NOT LIMITED TO LOST REVENUE OR PROFITS, IN
CONNECTION WITH THIS AGREEMENT OR ITS BREACH, OR ARISING FROM THE RELATIONSHIP
OF THE PARTIES OR THE CONDUCT OF BUSINESS BETWEEN THEM, EVEN IF EITHER PARTY WAS
ADVISED OF THE POSSIBILITY OF SUCH DAMAGES.
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8. Confidentiality.
8.1 Treatment of Confidential Information. The parties agree that during the
Term and so long as the Confidential Information under this License Agreement
remains confidential after this License Agreement terminates, a party receiving
Confidential Information of the other party will (i) maintain in confidence such
Confidential Information to the same extent such party maintains its own
proprietary industrial information, and in any event not less than reasonable
care, (ii) not disclose such Confidential Information to any third party without
prior written consent of the other party, and (iii) not use such Confidential
Information for any purpose except those permitted by this License Agreement.
For the purposes of this License Agreement, Confidential Information is deemed
to include (but not be limited to) all unpatented Licensor Inventions, or
Licensee technology that have been disclosed to Licensor or Licensee.
Notwithstanding the foregoing, it shall not be a violation of this Section 8.1
for a receiving party to disclose Confidential Information that is required to
be disclosed by order of the US Food and Drug Administration or similar
authority or a court of competent jurisdiction, which order is final and cannot
be appealed; provided that the parties will coordinate their best efforts to
obtain confidential treatment of such information by the agency or court and
provided that the parties will coordinate their best efforts to obtain
confidential treatment of such information by the agency or court, and that the
receiving party gives prior written notice to the disclosing party of the
proposed disclosure and cooperates fully with the disclosing party to minimize
the scope of any such required disclosure, to the extent possible and in
accordance with applicable law.
8.2 Publicity. Except as otherwise provided herein or required by law, no party
shall originate any publication, news release or other public announcement,
written or oral, whether in the public press, stockholders' reports, or
otherwise, relating to this License Agreement or to any sublicense hereunder, or
to the performance hereunder or any such agreements, without the prior written
approval of the other party, which approval shall not be unreasonably withheld.
9. Termination.
9.1 Termination Upon Default. The failure of a party to perform any material
obligation required of it to be performed hereunder, and the failure to cure
such failure within sixty (60) days after receipt of notice from the other party
specifying in reasonable detail the nature of such material breach shall
constitute an event of default hereunder. Upon the occurrence of such material
default, the non-defaulting party may deliver to the defaulting party written
notice of intent to terminate, such termination to be effective upon the date
set forth in such notice, subject to the provisions of Section 10.10 hereof. The
termination rights hereunder shall be in addition to and not in substitution for
any other remedies that may be available to the non-defaulting party.
Termination pursuant to this Section 9.1 shall not relieve the defaulting party
from liability and damages to the other party for breach of this License
Agreement. Waiver by either party of a single default or a succession of
defaults shall not deprive such party of any right to terminate this License
Agreement arising by reason of any subsequent default.
9.2 Termination Upon Bankruptcy or Insolvency. This License Agreement may be
terminated by Licensor giving written notice of termination to Licensee upon the
filing of bankruptcy or bankruptcy of Licensee or the appointment of a receiver
of any of Licensee's assets, or the making by Licensee of any assignment for the
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benefit of creditors, or the institution of any proceedings against Licensee
under any bankruptcy law, provided that Licensee has not obtained a dismissal of
such action or any related proceedings within sixty (60) days of the
commencement thereof.
9.3 Rights Upon Expiration. Neither party shall have any further rights or
obligations upon the expiration of this License Agreement upon its regularly
scheduled expiration date with respect to this License Agreement, other than set
forth otherwise herein.
9.4 Rights Upon Termination. Upon termination, Licensee shall have no further
right to develop, manufacture, distribute, market, or otherwise commercialize or
exploit any Product or Combined Product, or to otherwise use any of the Patent
Rights, Trademarks, or Inventions not otherwise includable therein. Upon
termination, Licensee shall promptly return all Confidential Information,
materials, samples, documents, information, and other materials that embody or
disclose the Trademarks, Patent Rights, or Inventions not otherwise includable
therein. Any termination shall not relieve either party from any obligations
accrued to the date of such termination.
9.5 Effect of Expiration or Termination. The following provisions shall survive
the expiration or termination of this License Agreement: Sections 4.4, 5, 6, 7,
8, and 10.
10. General Provisions.
10.1 Contractual Conflict. In the event a conflict exists between the terms of
the Distribution Agreement and the terms of this License Agreement, the terms of
the Distribution Agreement shall control, except when the conflict is directly
related to the use and restrictions on use with respect to the Intellectual
Property, in that event, the terms of this License Agreement shall govern.
10.2 Governmental Approval. Licensee shall obtain all necessary governmental
approvals for the manufacture, use, sale, offer for sale, distribution, import,
marketing, advertising and other exploitation of the Products and Combined
Products.
10.3 Independent Contractors. The relationship between the parties is that of
independent contractors. Licensor and Licensee are not joint venturers,
partners, principal and agent, master and servant, employer or employee, and
have no other relationship other than independent contracting parties. Licensor
and Licensee shall have no power to bind or obligate each other in any manner,
other than as is expressly set forth in this License Agreement.
10.4 Arbitration. All disputes, controversies, and claims arising out of or
related to this License Agreement (except disputes, controversies, and claims
relating to or affecting Licensor's ownership or the validity of any
Intellectual Property or any registration thereof) shall be settled and
determined by arbitration in Sacramento, California, U.S.A. before a single
arbitrator in accordance with and pursuant to the then existing International
Arbitration Rules of the American Arbitration Association incorporating the
rules of discovery of the State of California. The arbitrator may award
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reasonable attorney's fees and expenses to the prevailing party of any
arbitration. The parties specifically waive all rights to any claims for
punitive damages against each other.
10.5 Entire Agreement; Modification. Any rights and obligations arising under
this License Agreement may not be assigned by Licensee without the prior written
consent of Licensor. This License Agreement sets forth the entire agreement and
understanding between the parties as to the subject matter hereof and supercedes
all prior or contemporaneous agreements or understandings as between the parties
relating to their subject matter. There shall be no amendments or modifications
to this License Agreement, except by a written document, which is signed by both
parties.
10.6 Headings. The headings for each article and section in this License
Agreement have been inserted for convenience of reference only and are not
intended to limit or expand on the meaning of the language contained in the
particular article or section.
10.7 Severability. Should any one or more of the provisions of this License
Agreement be held invalid or unenforceable by a court of competent jurisdiction,
it shall be considered severed from this License Agreement and shall not serve
to invalidate the remaining provisions thereof.
10.8 No Waiver. Any delay in enforcing a party's rights under this License
Agreement or any waiver as to a particular default or other matter shall not
constitute a waiver of such party's rights to the future enforcement of its
rights under this License Agreement, excepting only as to an express written and
signed waiver signed by the party against whom such waiver is being enforced as
to a particular matter for a particular period of time.
10.9 Name. Whenever there has been an assignment or a sublicense by Licensee as
permitted by this License Agreement, the reference to "Licensee" as used in this
License Agreement shall also include and refer to, if appropriate, such assignee
or sublicensee.
10.10 Notices. Any notices required by this License Agreement shall be in
writing, shall specifically refer to this License Agreement and shall be sent by
registered or certified airmail, postage prepaid, or by telefax, telex or cable,
charges prepaid, or by overnight courier, postage prepaid and shall be forwarded
to the respective addresses set forth below unless subsequently changed by
written notice to the other party:
For Licensor:
The RiceX Company
0000 Xxxx'x Xxxxxx Xxxxx
Xx Xxxxxx Xxxxx, Xxxxxxxxxx 00000
Attn: Chief Executive Officer
Phone No. 000 000-0000
Fax No. 000 000-0000
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and a copy to:
Crosby, Heafey, Xxxxx & May
0000 Xxxxxx xx xxx Xxxxx, Xxxxx 000
Xxx Xxxxxxx, Xxxxxxxxxx 00000
Attention: Xxxxxxx X. Xxxxxxx XX, Esq.
Phone No. 000 000-0000
Fax No.: 000 000-0000
For Licensee:
NutraStar Technologies Incorporated
0000 Xxxx'x Xxxxxx Xxxxx
Xx Xxxxxx Xxxxx, Xxxxxxxxxx 00000
Attn: Chief Executive Officer
Phone No. 000 000-0000
Fax No. 000 000-0000
Notice shall be deemed delivered upon the earlier of (i) when received, (ii)
three (3) days after deposit into the mail, or (iii) the date notice is sent via
telefax, telex or cable, (iv) the day immediately following delivery to
overnight courier (except Sunday and holidays).
10.11 Compliance with U.S. Laws. Nothing contained in this License Agreement
shall require or permit Licensor or Licensee to do any act inconsistent with the
requirements of any United States law, regulation or executive order as the same
may be in effect from time to time.
10.12 Force Majeure. Neither party shall be held responsible for any delay or
failure in performance hereunder caused by strikes, embargoes, unexpected
government requirements, civil or military authorities, acts of God, earthquake,
or by the public enemy or other causes reasonably beyond such party's control
and without such party's fault or negligence. In the event that a force majeure
event as described in this Section 10.12 subsists and remains unresolved for
more than ninety (90) days from the date such event arose, the party not
affected or delayed by the event shall have the right to terminate this License
Agreement upon thirty (30) days written notice to the affected party.
10.13 Governing Law. This License Agreement shall be construed and enforced in
accordance with the laws of the State of California without regard to the
conflicts of laws principles thereof.
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IN WITNESS WHEREOF, the parties have executed this License Agreement by their
duly authorized representatives as of the date set forth above.
LICENSOR: LICENSEE:
THE RICEX COMPANY NUTRASTAR TECHNOLOGIES INCORPORATED
INCORPORATED
By:_____________________________ By:___________________________
Title:___________________________ Title:_________________________
Date:___________________________ Date:_________________________
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SCHEDULE A
Patents:
Patent No. 6,126,943 "A Method for Treating Hypercholesterolmia,
Hyperlipidemia, and Atherosclerosis," published October 3, 2000
Patent No. 6,303,586 "A Method for Treating Diabetes, Hyperglycemia, and
Hypoglycemia," published October 16, 2001
Serial No. 09/624,474 "A Method for Treating Diabetes, Hyperglycemia, and
Hypoglycemia," allowed on October 2, 2001
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