1
EXHIBIT 10.(viii)
LICENSE AGREEMENT
THIS LICENSE AGREEMENT (the "Agreement') is made and entered into this
12th day of July, 1995 and is effective as of the 12th day of July, 1995 (the
"Effective Date") by and between VIRAGEN TECHNOLOGY, INC., a Florida
corporation (the "Licensor') and VIRAGEN (SCOTLAND) LTD., a Scottish Private
Limited Company, No. 1557106 (the "Licensee").
RECITALS
A. The Licensor has the exclusive rights, by assignment or by
license, to sublicense, throughout the world, the "Proprietary Rights," as
hereinafter defined, relating to the "Licensed Property," as hereinafter
defined, which includes the "Licensed Patent Rights," as hereinafter defined,
the "Licensed Processes," as hereinafter defined, and "Licensed Technology," as
hereinafter defined, (which Licensed Technology shall specifically include the
"Confidential Information," as hereinafter defined) and which Licensed Property
is used to manufacture natural alpha interferon derived from human leukocytes.
B. The Licensee has represented and warranted to the Licensor
that the Licensee has the ability and the capacity to perform the Licensee's
obligations set forth in this Agreement and but for these representations and
warranties by the Licensee to the Licensor, the Licensor would not have entered
into this Agreement.
C. The Licensee desires to obtain an exclusive license to the
Proprietary Rights related to the Licensed Property within the "Exclusive
Territory," as hereinafter defined, and the Licensor is willing to grant such
exclusive license to the Licensee, pursuant to the terms and conditions set
forth in this Agreement.
D. The Licensee desires to obtain a non-exclusive license to the
Proprietary Rights related to the Licensed Property within the "Non-exclusive
Territory," as hereinafter defined, and the Licensor is willing to grant such
non-exclusive license to the Licensee, pursuant to the terms and conditions set
forth in this Agreement.
E. The Licensor has established a valuable reputation and
goodwill in its "Business," as hereinafter defined, and the Licensee, by virtue
of the grant of the license which is the subject matter of this Agreement,
shall become familiar with and possessed in connection with the Licensed
Property and specifically including the Confidential Information, pertaining to
the Licensor's Business which is the subject matter of this Agreement.
NOW, THEREFORE, in consideration of the mutual agreements herein made,
the Licensor and the Licensee do hereby agree as follows:
1. Recitals. The above recitals are true, complete and correct
and are herein incorporated by reference.
2. Definitions. When used in this Agreement, the following terms
shall have the meanings set forth in this Section 2 or as otherwise set forth
in this Agreement.
2
(a) "Affiliate" means any parent, subsidiary, brother or
sister company, employee, independent contractor, agent, partner, shareholder,
consultant, controlling person, co-venturer, officer, or director of a party
and shall specifically include when used with reference to a specified Person,
(i) any Person that directly or indirectly controls or is controlled by or is
under common control with the specified Person, (ii) any Person that is a
responsible employee of, an officer of, partners in or trustee of, or serves in
a similar capacity with respect to, the specified Person or of which the
specified Person is a responsible employee, officer, partner or trustee, or
with respect to which the specified Person serves in a similar capacity, and
(iii) any Person that, directly or indirectly, is the beneficial owner of 10%
or more of any class of equity interests or equity securities of the specified
Person or of which the specified Person is directly or indirectly the owner of
10% or more of any class of equity interests or equity securities. The above
definition notwithstanding, for purposes of this Agreement, the term
"Affiliate" specifically does not include the Licensor.
(b) "Agreement" means this License Agreement, as
amended, modified, or supplemented from time to time in writing.
(c) "Business" or "Business Activities" means any
activities of the Licensor now or during the effective period of this
Agreement, and specifically including the manufacture of the Licensed Products.
(d) "Confidential information" means trade secrets,
private or secret processes, methods and ideas, as they exist from time to
time, customer lists and information concerning the Licensor's products,
services, business records and plans, inventions, product design information,
price structure, discounts, costs, computer programs and listings, source codes
and/or object codes, copyrights, trademarks, proprietary information, formulae,
protocols, standard operating procedures, forms, "Documents," as hereinafter
defined, procedures, training methods, technical information, databases, data,
algorithms, marketing activities and procedures, method for operating of the
Licensor's Business, credit and financial data concerning the Licensor and the
Licensor's Clients and Client Lists (the "Client Lists"), which Client Lists
shall not only mean one or more of the names and addresses of the Clients of
the Licensor but it shall also encompass any and all information whatsoever
regarding them, including their needs, and marketing and advertising practices
and plans and information which is embodied in written or otherwise recorded
form, but it shall also include information which is mental, not physical.
(e) "Documents" means all original written, recorded, or
graphic matters whatsoever, and any and all copies thereof, including, but not
limited to: papers, books, records, tangible things, computer disks, computer
files, lab books, correspondence, telex messages, facsimiles, memoranda,
work-papers, reports, statements, summaries, analyses, evaluations, client
records and information, agreements, agendas, advertisements, manuals,
brochures, publications, directories, industry lists, schedules, price lists,
client lists, statistical records, training manuals, computer printouts, books
of account, records and invoices reflecting business operations, all things
similar to any of the foregoing however denominated. In all cases where
originals are not available, the term "Documents" shall also mean identical
copies of original documents or non-identical copies thereof.
3
(f) "European Union" (the European Common Market) means
those countries which are members of the European Union, a group of countries
which include the United Kingdom, France, Belgium, Italy, Germany, Portugal,
Spain, Norway, Sweden and Denmark or which may become members in the future.
(g) "Exclusive Territory" means for all countries
comprising the European Union; provided however that to the extent (i) that any
country other than those countries currently defined as member nations of the
EU shall subsequently become a member nation, and (ii) such country shall have
previously entered into an agreement with the Licensor, then the Licensee shall
only be entitled to a license (be it exclusive or non-exclusive) within that
country that is not contrary to the agreement between that country and the
Licensor.
(h) "Interferon" means natural alpha interferon derived
from human leukocytes.
(i) "Licensed Patent Rights" means all patents
throughout the World (including patents of importation, improvement patents,
patents and certificates of addition and utility models, composition of matter
patents, as well as divisions, reissues, continuations, renewals and extensions
of the foregoing), applications therefor, and patents which may be issued upon
such applications,
i) as to which patents or applications the
Licensor has at any time during the term of this Agreement, the right
to grant licenses of or within the scope of licenses granted in this
Agreement, and
ii) which cover inventions or designs
applicable to Licensed Processes all as set forth more fully on
Exhibit A, attached hereto and incorporated herein (and as may be
amended from time to time) to this Agreement,
(j) "Licensed Processes" means the process or processes
to manufacture the Licensed Products and specifically including
i) the standard operating procedures ("SOPs");
ii) master batch records; and
iii) protocols (including the processing prior
to purification which is commonly referred to as the 'upstream
processing' and the processing subsequent to purification which is
commonly referred to as the 'downstream processing' (collectively the
"Protocols")
to manufacture the Licensed Products which is the subject of this Agreement.
(k) "Licensed Products" means Interferon.
(l) "Licensed Property" means the Licensed Patent
Rights, the Licensed Processes and the Licensed Technology.
4
(m) "Licensed Technology" means all of the trade
secrets, know-how, show-how, inventions, patents including U.S. Patent(s) and
U.S. Patent(s) applications as set forth more fully on Exhibit B attached
hereto and incorporated herein, lab books, formulae, processes, computer
systems, methods, discoveries, business methods, Confidential Information,
expertise, copyrights, trademarks, service marks, plans, drawings, sketches,
prototypes, tooling and information of any nature whatsoever which relates to
the design, manufacture, assembly and sale of the Licensed Processes,
developed, possessed, conceived, or used by the Licensor relating to the
Licensed Processes, including any modifications, derivatives and translations
thereof.
(n) "Non-Exclusive Territory" means throughout the
World, except within the United States and its territories.
(o) "Person" means any individual, partnership,
corporation, trust or other entity.
(p) "Proprietary Rights" means any and all rights and
privileges provided under the patent, trademark, copyright, trade secret and
other laws of the United States, the individual states thereof and
jurisdictions foreign thereto throughout the World, and the goodwill associated
therewith.
3. Grant of Exclusive License.
(a) Subject to the provisions of Section 8(b) of this
Agreement, the Licensor grants to the Licensee, within the Exclusive Territory,
an exclusive license, with the right to sublicense to third parties, subject to
the prior written approval of the Licensor, which approval shall not be
unreasonably withheld, upon terms and conditions consistent with this
Agreement, for the lives of such Licensed Property, as applicable, to utilizing
the Proprietary Rights and the Licensed Property in connection with the
manufacture and distribution of the Licensed Products. This exclusive right and
license herein granted shall apply to all Proprietary Rights and Licensed
Property which the Licensor now owns or controls, or hereafter may own or
control and which relate to the Licensed Property, and to all information and
Documents, and specifically Confidential Information, which the Licensor now
owns or controls or hereafter may own or control and which relate to the
Licensed Property.
(b) The Licensee's rights, duties and obligations shall
be in accordance with and governed by that certain Manufacturing and License
Agreement (the "Scottish Agreement") between the Licensee and the Scottish
National Blood Transfusion Service (the "Manufacturer"). A copy of the Scottish
Agreement is attached hereto as Exhibit C and incorporated herein; provided,
however, that the terms and conditions of this Agreement shall not, in any
manner, be affected in the event of a termination of the Scottish Agreement for
whatever reason.
(c) The manufacture and/or distribution of the Licensed
Products shall be in accordance with all laws, rules and regulations
promulgated by the respective regulatory and/or governmental agencies and/or
authorities including, without limitation, those of the EU and the United
kingdom.
5
4. Grant of Non-Exclusive License.
(a) Subject to the provisions of Section 5(b) of this
Agreement, the Licensor grants to the Licensee, within the Non-Exclusive
Territory, a non-exclusive, personal, non-assignable license, but with the
right to sub-license to third parties, subject to the prior written approval of
the Licensor, which approval shall not be unreasonably withheld, upon terms and
conditions consistent with this Agreement, for the lives of such Licensed
Property, as applicable, to utilizing the Proprietary Rights and the Licensed
Property in connection with the manufacture and distribution. of the Licensed
Products. This non-exclusive right and license herein granted shall apply to
all Proprietary Rights and Licensed Property which the Licensor now owns or
controls, or hereafter may own or control and which relate to the Licensed
Property, and to all information and Documents, and specifically Confidential
Information, which the Licensor now owns or controls or hereafter may own or
control and which relate to the Licensed Property.
(b) The manufacture and/or distribution of the Licensed
Products shall be in accordance with all laws, rules and regulations
promulgated by the respective regulatory and/or governmental agencies and/or
authorities including, without limitation, those of the EU and the United
Kingdom.
(c) Except as set forth in Section 8(b)(i), the Licensee
shall have the non-exclusive right to sell the Licensed Products worldwide.
5. Sale and Distribution of the Licensed Products. The Licensor
and the Licensee specifically agree that all Licensed Products produced or
manufactured by the Manufacturer shall be distributed and/or sold exclusively
by or through the Licensee.
6. Obligations of the Licensee.
(a) The obligations to be performed by the Licensee in
connection with the grant of the license contemplated by this Agreement is to
manufacture and distribute or supervise the manufacture and distribution of the
Licensed Products utilizing the Licensed Property, and in accordance with all
applicable laws, rules, and regulations promulgated by the appropriate
regulatory agencies which govern the Licensed Property and the Licensed
Products and specifically in accordance with the current Good Manufacturing
Practices, as may be determined by the EU and/or United kingdom regulatory
agencies; regulatory agencies; SOPs, Protocols or other procedures promulgated
by the EU, the United kingdom, or other countries, as applicable, and each of
their respective regulatory or governing agencies, as applicable (collectively
the "Procedures").
(b) At all times relevant hereto, the Licensor shall use
the Licensed Property in accordance with all Procedures, as set forth more
fully in Section 6(a) of this Agreement.
(c) The Licensee shall use its best efforts to comply
with ISO9000 standards as promulgated by the appropriate country where the
Licensed Products are being manufactured or distributed.
6
(d) The Licensee shall only use the Licensed Property in
the manner contemplated by this Agreement, unless otherwise agreed to in
writing by the Licensor, which approval by the Licensor shall not constitute a
waiver of the Licensor's rights or the duties under any provision of this
Agreement.
(e) The Licensee shall at all times cause to appear, in
connection with any of the Licensed Property on or within all advertising,
instructional, informational, promotional or display material either bearing or
incorporating the Licensed Property, all required legal notices as required
pursuant to all Federal and international copyright, trademark and patent laws
and as required by the Licensor.
(f) To preserve Licensors identification with the
Licensed Property and to avoid confusion by the public, the Licensee agrees not
to associate other Persons or entities or personalities with the Licensed
Property hereunder in connection with the services or the advertising or
display thereof on which the Licensed Property is used.
(g) The Licensee shall cooperate fully and in good faith
with the Licensor for the purpose of securing and preserving the Licensee's (or
any grantor of Licensee's) rights in and to the Licensed Property and
Proprietary Rights in connection with the Licensed Property. In the event there
has been no previous registration of the Licensed Property and/or any
Proprietary Rights related thereto, the Licensee shall, at Licensor's request
and expense, register such as a patent, copyright, trademark and/or service
xxxx in the appropriate class, in the name of the Licensee. The Licensee
further agrees to use its best efforts to obtain signatures of inventors
associated with or employed by the Licensee in order to secure any and all
patent rights, as may be reasonably required.
7. Obligations of the Licensor. Subject to the provisions set
forth in this Agreement, at the Licensee's cost and expense, the Licensor shall
provide the Licensee with the Licensed Property which shall specifically
include the know-how and show-how as to the Licensed Patent Rights, the
Licensed Processes, and the Confidential Information, and which shall include
all knowledge and information relating to any equipment unique to the Licensed
Property and a sufficient amount of personnel to train the Licensee in the
Licensed Property.
8. Royalties.
(a) Royalties to be Paid by the Licensee to the
Licensor.
i) Initial Royalty Prepayment and Deposit. The
Licensee shall prepay and deposit with the Licensor, within six (6)
months from the Effective Date, a royalty payment of Two Million
Dollars (US$2,000,000).
ii) Continuing Royalty.
a) Subject to the prepayment of
royalty payments described in Section 8(a)(i) above,
commencing one year from the Effective Date, the Licensee
shall pay to the Licensor the greater of (i) Two Million
Dollars (US$2,000,000)
7
annually or (ii) Ten Percent (10%) of the Licensee's gross
revenues (as determined pursuant to US General Accepted
Accounting Principles) of the Licensee, until such time as
the sum of Eighteen Million Dollars (US$18,000,000) in
royalty payments have been received by the Licensor from the
Licensee; at which time
b) the Licensee shall pay to the
Licensor royalty payments equal to Eight Percent (8%) of its
gross revenues (as determined pursuant to US Generally
Accepted Accounting Principles) of the Licensee until such
time as the sum of Twenty-Five Million Dollars
(US$25,000,000) in royalty payments have been received by the
Licensor from the Licensee; at which time
c) the Licensee shall pay to the
Licensor royalty payments equal to Five Percent (5%) of its
gross revenues (as determined pursuant to US Generally
Accepted Accounting Principles) of the Licensee thereafter.
(b) Royalties to be Paid by the Licensor to the Licensee.
i) During the term of this Agreement, in the
event that the Licensor grants an exclusive license to one or more
entities to distribute and/or manufacture the Licensed Products
outside the Licensee's Exclusive Territory (except the United States
and its territories), then the Licensee shall receive a royalty
payment equal to Five Percent (5%) of the gross revenues (as
determined pursuant to US Generally Accepted Accounting Principles)
generated by such exclusively licensed licensee(s) pursuant to such
exclusive license granted by the Licensor; and provided further that
the Licensee shall not distribute or sell any the Licensed Products
within such exclusively licensed territory.
ii) During the term of this Agreement, in the
event that the Licensor grants a non-exclusive license to one or more
entities to distribute and/or manufacture the Licensed Products
outside of the EU (except the United States and its territories), then
the Licensee shall receive a royalty payment equal to Two Percent (2%)
of the gross revenues (as determined pursuant to US Generally Accepted
Accounting Principles) generated by such non-exclusive licensee(s)
pursuant to such non-exclusive license granted by the Licensor.
iii) During the term of this Agreement, in the
event that the Licensor (A) manufactures or distributes the Licensed
Products within the United States or any of its territories or (B)
grants a license or licenses to one or more entities to manufacture or
distribute the Licensed Products within the United States or any of
its territories, then the Licensee shall receive a royalty payment
from the Licensor equal to Two Percent (2%) of the gross revenues (as
determined pursuant to US Generally Accepted Accounting Principles)
generated by such non-exclusive licensee(s) pursuant to such
agreements.
(c) Other Products Resulting from Scottish Agreement. In
the event that other biopharmaceutical products are developed and are
manufactured by, through or as a result of the Scottish Agreement, then all
revenues generated as a result of any licensing, distribution, sale and/or
otherwise of such products shall be divided between the Licensor and the
Licensee on a
8
50%/50% basis; provided, however, that any and all costs and/or expenses
incurred in connection with such licensing, distribution, sale or otherwise of
such products shall be borne equally between the Licensor and the Licensee,
subject to the prior consent of both parties.
(d) Commencement of Payments. Except as to the initial
royalty payment and deposit in the aggregate amount of Two Million Dollars
(US$2,000,000) described in Section 8(a)(i) of this Agreement, all royalty
payments to be paid pursuant to this Section 8 shall accrue until such time as
the Licensed Products have been approved for distribution and sale by the
respective regulative or governing authority at which time all royalty payments
shall be paid as described on Exhibit D attached hereto and incorporated
herein.
9. Accounting.
(a) Within thirty (30) days following each calendar
quarter and within thirty (30) days from the date of termination of this
Agreement, the appropriate party shall furnish the other party with an
accounting (prepaid in accordance with Generally Accepted Accounting
Principles) of all amounts due pursuant to Section 8 of this Agreement.
(b) Concurrent with the furnishing of each accounting,
Licensee shall pay to Licensor the amounts due to the Licensor for that quarter
pursuant to Section 8 of this Agreement.
(c) For purposes of this Agreement, payments shall
accrue at the time when Licensed Products are shipped from the Licensee's
warehouse or from the warehouse of an agent of the Licensee, whichever is
earlier.
(d) The appropriate party shall keep accurate books of
account and shall permit independent auditors appointed by the other party, at
reasonable intervals during ordinary business hours, to inspect such books of
account to the extent reasonably necessary to ascertain the accuracy of the
accounting hereunder, such inspection being at the inspecting party's expense.
(e) It is agreed that nothing contained in this
Agreement shall be construed as an assignment or grant of any right, title or
interest in or to the Licensed Property, it being understood that all rights
relating thereto are reserved by the Licensor, except for the license hereunder
to the Licensee of the right to use and utilize the Licensed Property only as
specifically and expressly provided in this Agreement.
(f) The Licensor shall retain title to the Licensed
Property and to any derivative works, modifications, improvements, translations
and new discoveries pertaining to it, whether or not patented, copyrighted or
trademarked, as applicable, by the Licensor. The Licensee's use of the Licensed
Property shall inure to the benefit of the Licensor and the Licensee shall not
at any time acquire any rights in any of the Licensed Property by virtue of any
use the Licensee may make of such Licensed Property, and which shall
specifically include any proprietary rights originated, conceived, created or
developed by the Licensee or with the assistance of others, as a result of the
Licensed Property.
9
(g) All rights created by or arising from the use of the
Licensed Property by the Licensee shall be and remain the sole and exclusive
property of the Licensor except in connection with the Licensed Property.
(h) The Licensee shall execute the document or documents
necessary to evidence such ownership interest of the Licensor in any rights or
title set forth in this Section 9.
10. Representations and Warranties of the Licensor. The Licensee
represents and warrants:
(a) The Licensor is a Florida corporation, duly
organized and validly existing and in good standing under the laws of the State
of Florida and has full corporate power to own, lease and operate its
properties and assets and to carry on its business as and where it is now being
conducted, to enter into this Agreement and to consummate the transactions
contemplated hereby.
(b) The officers of the Licensor have taken all action
required by law to authorize the execution and delivery of this Agreement and
the transactions contemplated hereby. The execution, delivery and performance
of this Agreement constitutes the valid and binding Agreement of the Licensor
enforceable in accordance with its terms. Neither the execution and delivery of
this Agreement, the consummation of the transaction contemplated hereby, nor
the fulfillment of or compliance with the terms and provisions of this
Agreement conflict with or result in a breach of any of the terms, conditions
or provisions of any corporate restriction to which the Licensor is a party or
by which it is bound.
(c) No representation and warranty by the Licensor in
this Agreement and no statement in this Agreement or any document or
certificate furnished or to be furnished to the Licensee pursuant hereto
contains or will contain any material untrue statement, or omits or will omit
to state a material fact necessary in order to make the statements contained
therein not misleading.
(d) The Licensor represents and warrants that with
respect to the Licensed Property, it has the legal power to extend the rights
granted to the Licensee pursuant to this Agreement and that it has not made any
commitments to others inconsistent with or in derogation of such rights.
11. Representations and Warranties of the Licensee. The Licensee
represents and warrants:
(a) The Licensee is a Scottish Private Limited Company,
No. 1557106, duly organized, validly existing and in good standing under the
laws of the Country of Scotland, and has full corporate power to own, lease and
operate its properties and assets and to carry on its business as and where it
is now being conducted, to enter into this Agreement and to consummate the
transactions contemplated hereby.
(b) The officers of the Licensee have taken all action
required by law to authorize the execution and delivery of this Agreement and
the transactions contemplated hereby.
10
The execution, delivery and performance of this Agreement constitutes the valid
and binding Agreement of the Licensee enforceable in accordance with its terms.
Neither the execution and delivery of this Agreement, the consummation of the
transaction contemplated hereby, nor the fulfillment of or compliance with the
terms and provisions of this Agreement, conflict with or result in a breach of
any of the terms, conditions or provisions of any corporate restriction to
which the Licensee is a party or by which it is bound.
(c) No representation and warranty by the Licensee in
this Agreement and no statement in this Agreement or any document or
certificate furnished or to be furnished to the Licensor pursuant hereto
contains or will contain any untrue statement, or omits or will omit to state a
fact necessary in order to make the statements contained therein not
misleading.
(d) The Licensee represents and warrants that it has the
capacity to manufacture the Licensed Products in accordance with the terms and
conditions set forth and contemplated in and by this Agreement and that it has
not made any commitments to others inconsistent with or in derogation of such
rights.
12. Notification of Potential or Actual Infringement. The
Licensee shall notify the Licensor, in writing, of any possible infringements
or imitations by others of the Licensed Property, or properties similar to
those covered in this Agreement which may come to the Licensee's attention and
provide the Licensor with all information which it has relating to such claim
at the time of sending such notice. The Licensor shall endeavor to investigate
unauthorized uses by others of their respective licensed property brought to
its attention by the Licensee. The Licensor shall have the sole right to
determine whether or not any action shall be taken on account of any such
infringements or imitations.
13. Cooperation by Licensee. In the event there may be possible
infringements or imitations, the Licensee agrees to cooperate fully and in good
faith with the Licensor Partner at the Licensors request, to the extent
necessary in the procurement of any protection or to protect any of the
Licensor's rights with regard to that Licensor's Licensed Property and/or
Proprietary Rights in the Licensed Property.
14. Indemnification.
(a) By the Licensor. The Licensor shall indemnify and
hold the Licensee harmless from and against any and all losses, claims, damages
and liabilities, jointly or severally, to which the Licensee may become subject
under any applicable Federal or state law, or otherwise related to or arising
out of any provision or obligation contemplated by this Agreement and the
performance by the Licensor of the services contemplated by this Agreement, and
shall reimburse the Licensee for all reasonable expenses (including reasonable
counsel fees and expenses) as they are incurred in connection with the
investigation of, preparation for or defense of any pending or threatened claim
or any action or proceeding arising therefrom, whether or not the Licensee is a
party thereto. In the event that the foregoing indemnity is unavailable or
insufficient to hold the Licensee harmless, then the Licensor shall contribute
to amounts paid or payable by the Licensee in respect of such losses, claims,
damages and liabilities in such proportion as appropriately reflects
11
the relative benefits received by, in fault of, the Licensee in connection with
the matters as to which such losses, claims, damages and liabilities relate and
other equitable considerations.
(b) By the Licensee. The Licensee shall indemnify and
hold the Licensor harmless from and against any and all losses, claims, damages
and liabilities, jointly or severally, to which the Licensor may become subject
under any applicable Federal or state law, or otherwise related to or arising
out of any provision or obligation contemplated by this Agreement and the
performance by the Licensee of the services contemplated by this Agreement, and
shall reimburse the Licensor for all reasonable expenses (including reasonable
counsel fees and expenses) as they are incurred in connection with the
investigation ot preparation for or defense of any pending or threatened claim
or any action or proceeding arising therefrom, whether or not the Licensor is a
party thereto. In the event that the foregoing indemnity is unavailable or
insufficient to hold the Licensor harmless, then the Licensee shall contribute
to amounts paid or payable by the Licensor in respect of such losses, claims,
damages and liabilities in such proportion as appropriately reflects the
relative benefits received by, in fault of, the Licensor in connection with the
matters as to which such losses, claims, damages and liabilities relate and
other equitable considerations.
15. Non-Disclosure of Confidential Information.
(a) The Licensee acknowledges that the Licensor's
Confidential Information are valuable, special and unique assets of the
Licensor, access to and knowledge of which are essential to the performance of
the Licensee hereunder. In light of the highly competitive nature of the
industry in which the Licensor's Business is conducted, the Licensee agrees
that all Confidential Information, heretofore or in the future obtained by the
Licensee as a result of the Licensee's association with the Licensor shall be
considered confidential.
(b) Excluded from the Confidential Information, and
therefore not subject to the provisions of this Agreement, shall be any
information which:
i) At the time of disclosure, is in the public
domain as evidenced by printed publications;
ii) After the disclosure, enters the public
domain by way of printed publication through no fault of the Licensee
Contractor or those in privity with it;
iii) The Licensee can show by written
documentation was in its possession at the time of disclosure and
which was not acquired directly or indirectly from the Licensor; or
iv) The Licensee can show by written
documentation was acquired, after disclosure, from a third party who
did not receive it from the Licensor, and who had the right to
disclose the information without any obligation to hold such
information confidential.
v) The Licensee acknowledges that, as between
the Licensor and the Licensee, the Confidential Information and any
and all rights and privileges provided under
12
the trademark, copyright, patent, trade secret and other laws of the
United States, the individual states thereof, and jurisdictions
foreign thereto, and the goodwill associated therewith, are and at all
times will be the property of the Licensor.
vi) The Licensee agrees that it shall:
a) Hold in confidence and not disclose
or make available to any third party any such Confidential
Information unless so authorized in writing by the Licensor;
b) Exercise all reasonable efforts to
prevent third parties from gaining access to the
Confidential Information;
c) Not use, directly or indirectly,
the Confidential Information in any respect of its business,
except as necessary to evaluate the information;
d) Restrict the disclosure or
availability of the Confidential Information to those of the
Licensee's Affiliates and/or sublicensees who have a need to
know the information in order to achieve the purposes of this
Agreement;
e) Not copy or modify any
Confidential Information without prior written consent of the
Licensor.
f) Take such other protective
measures as may be reasonably necessary to preserve the
confidentiality of the Confidential Information; and
g) Relinquish and require all of its
Affiliates and/or sublicensees to relinquish all rights it
and its Affiliates and/or sublicensee may have in any
matter, such as drawings, documents, models, samples,
photographs, patterns, templates, molds, tools or
prototypes, which may contain, embody or make use of the
Confidential Information; promptly deliver to the Licensor
any such matter as the Licensor may direct at any time; and
not retain any copies or other reproductions thereof.
vii) The Licensee further agrees:
a) That it shall promptly disclose in
writing to the Licensor all ideas, inventions, improvements
and discoveries which may be conceived, made or acquired by
the Licensee or its sublicenses and/or Affiliates as the
direct or indirect result of the disclosure by the Licensor
of the Confidential Information to the Licensee;
b) That all such ideas, inventions,
improvements and discoveries conceived, made or acquired by
the Licensee, alone or with the assistance of others,
relating to the Confidential Information, shall be the
property of the Licensor and shall be treated as Confidential
Information in accordance with the provisions hereof
13
and that Licensee shall not acquire any intellectual property
rights under this Agreement except the limited right to use
set forth in this Agreement.
c) That Licensee and its sublicensees
and/or Affiliates shall assist in the preparation and
execution of all applications, assignments and other
documents which the Licensor may deem necessary to obtain
patents, copyrights and the like in the United States and in
jurisdictions foreign thereto, and to otherwise protect the
Licensor.
(c) Upon written request of the Licensor, the Licensee
shall return to the Licensor all written materials containing the Confidential
Information. The Licensee shall also deliver to the Licensor written statements
signed by the Licensee certifying all materials have been returned within five
days of receipt of the request.
16. Covenants as Essential Elements of this Agreement. It is
understood by and between the parties hereto that the foregoing covenants by
the Licensee contained in Section 15 of this Agreement shall be construed to be
agreements independent of any other element of the Licensee's services to the
Licensor. The existence of any other claim or cause of action, whether
predicated on any other provision in this Agreement, or otherwise, as a result
of the relationship between the parties shall not constitute a defense to the
enforcement of the covenants in this Agreement against the Licensee.
17. Remedies.
(a) The Licensee acknowledges and agrees that the
Licensor's remedy at law for a breach or threatened breach of any of the
provisions of Section 15 herein would be inadequate and the breach shall be per
se deemed as causing irreparable harm to the Licensor. In recognition of this
fact, in the event of a breach by the Licensee of any of the provisions of
Section, the Licensee agrees that, in addition to any remedy at law available
to the Licensor, including, but not limited to monetary damages, the Licensor,
without posting any bond, shall be entitled to obtain, and the Licensee agrees
not to oppose the Licensor's request for equitable relief in the form of
specific performance, temporary restraining order, temporary or permanent
injunction or any other equitable remedy which may then be available to the
Licensor.
(b) The Licensee acknowledges that the granting of a
temporary injunction, temporary restraining order or permanent injunction
merely prohibiting the use of Confidential Information would not be an adequate
remedy upon breach or threatened breach of Section 15 and consequently agrees,
upon proof of any such breach, to the granting of injunctive relief prohibiting
any form of competition with the Licensor. Nothing herein contained shall be
construed as prohibiting the Licensor from pursuing any other remedies
available to it for such breach or threatened breach.
(c) In the event that the Licensee shall be in violation
of the any of the provisions of Section 15, then the time limitation during
which breach or breaches should occur, and in the event the Licensor should be
required to seek relief from such breach in any court or
14
other tribunal, then the covenant shall be extended for a period of time equal
to the pendency of such proceedings, including appeal.
(d) The Licensee specifically acknowledges that to the
extent there is a violation of Section 15, the Licensee and the Person
violating Section 15 shall be jointly and severally liable to the Licensor for
any damages to the Licensor.
18. Attorneys' Fees. The Licensee agrees that in the event that
the Licensor is required to engage an attorney to enforce the terms of the
covenants in Sections 15 of this Agreement, the Licensee shall pay all costs
and expenses of that attorney or firm, whether or not a complaint or suit is
filed with any court of competent jurisdiction.
19. Term. The term of this Agreement shall begin as of the
Effective Date and shall continue for a period of fifteen (15) years, which
term shall be automatically renewed for two successive fifteen (15) year
periods.
20. Termination.
(a) Immediate Termination. This Agreement may be
terminated immediately by the Licensor upon the occurrence of any of the
following events:
i) The willful engagement in misconduct that
is materially injurious to the Licensor, monetarily or otherwise;
ii) An act or acts (a) constituting a felony,
under the laws of the United States or any state thereof or (b)
causing the Licensee to lose any of the Licensee's professional
licenses necessary to the performance of the Licensee's obligations
set forth in this Agreement.
iii) Insolvency, liquidation or bankruptcy of
Licensee, whether voluntary or involuntary or equivalent;
iv) Appointment of a trustee or receiver for
Licensee (or equivalent).
(b) The waiver of any default under this Agreement by
Licensor shall not constitute a waiver of the right to terminate and/or cancel
this Agreement for any subsequent or like default, and the exercise of the
right of termination/cancellation shall not impose any liability by reason of
termination/cancellation nor have the effect of waiving any damages to which
Licensor might otherwise be entitled.
21. Effect on Prior Agreements. This Agreement supersedes any and
all prior or written agreements in their entirety between the Licensor and the
Licensee, which shall be void and of no further force and effect after the date
of this Agreement.
22. Notices. Any and all notices, designations, consents, offers,
acceptances or other communication provided for herein shall be given in
writing and delivered in person or by
15
registered or certified mail, return receipt requested, directed to the address
shown below, unless notice of a change of address is furnished:
If to the Licensor:
VIRAGEN TECHNOLOGY, INC.
0000 Xxxx 00xx Xxxxxx
Xxxxxxx, Xxxxxxx 00000
Attn: Xxxxxx Xxxxx, President
With a copy to:
ATLAS, XXXXXXXX, TROP & BORKSON, P.A.
New River Center, Suite 1900
000 X. Xxx Xxxx Xxxxxxxxx
Xxxx Xxxxxxxxxx, XX 00000
Attn: Xxxxx Xxxxxxxxx, Esq.
If to the Licensee:
VIRAGEN (SCOTLAND) LTD.
0000 Xxxx 00xx Xxxxxx
Xxxxxxx, Xxxxxxx 00000
Attn: Xxxxxx X. Xxxxxx, Managing Director
With a copy to:
XXXXXX XXXXXXX & CO. SOLICITORS
Xxxxxxxxx Xxxxx House
0/0 Xxxxxxxxxx Xxxxxx
Xxxxxxx, Xxxxxxxx X0 0XX
Attn: Xxxxx Xxxxxx, Esq.
23. Waiver. Unless agreed in writing, the failure of either
party, at any time, to require performance by the other of any provisions
hereunder shall not affect its right thereafter to enforce the same, nor shall
a waiver by either party of any breach of any provision hereof be taken or held
to be a waiver of any other preceding or succeeding breach of any term or
provision of this Agreement. No extension of time for the performance of any
obligation or act shall be deemed to be an extension of time for the
performance of any other obligation or act hereunder.
24. Complete Agreement. This Agreement contains the entire
agreement between the parties hereto with respect to the contents hereof and
supersedes all prior agreements and understandings between the parties with
respect to such matters, whether written or oral. Neither this Agreement nor
any term or provision hereof may be changed, waived, discharged or amended in
any manner other than by an instrument in writing, signed by the party against
which the enforcement of the change, waiver, discharge or amendment is sought.
25. Counterparts. This Agreement may be executed in two or more
counterparts, each of which shall be deemed an original but all of which shall
constitute but one Agreement.
16
26. Binding Effect/Assignment. This Agreement shall be binding
upon the parties hereto, their heirs, legal representatives, successors and
assigns. This Agreement shall not be assignable by the Licensee but shall be
assignable by the Licensor (i) to any successor in interest of the Licensor; or
(ii) in connection with the sale, transfer or other disposition of its business
or to any of the Licensor's Affiliates controlled by or under common control
with the Licensor.
27. Governing Law. This Agreement shall become valid when
executed and accepted by the Licensor and, shall be construed pursuant to the
laws of the United States and more particularly pursuant to the laws of the
State of Florida, without giving effect to any conflict of laws principles.
28. Headings. The headings of the sections are for convenience
only and shall not control or affect the meaning or construction or limit the
scope or intent of any of the provisions of this Agreement.
29. Survival. Any termination of this Agreement shall not,
however, affect the ongoing provisions of this Agreement which shall survive
such termination in accordance with their terms.
30. Severability. Whenever possible, each provision of this
Agreement will be interpreted in such manner as to be effective and valid under
applicable law, but if any provision of this Agreement is held to be invalid,
illegal or unenforceable in any respect under any applicable law or rule in any
jurisdiction, such invalidity, illegality or unenforceability will not affect
any other provision or any other jurisdiction, but this Agreement will be
reformed, construed and enforced in such jurisdiction as if such invalid,
illegal or unenforceable provision had never been contained herein.
31. Enforcement. Should it become necessary for any party to
institute legal action to enforce the terms and conditions of this Agreement,
the successful party will be awarded reasonable attorneys' fees at all trial
and appellate levels, expenses and costs.
32. Construction. This Agreement shall be construed within the
fair meaning of each of its terms and not against the party drafting the
Agreement and related Exhibits and documents.
17
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first above written in Dade County, Florida, U.S.A.
WITNESS: THE LICENSOR:
VIRAGEN TECHNOLOGY, INC.
/s/ Xxxxxxxx Xxxxxxxx
--------------------------------
By: /s/ Xxxxxx Xxxxx
------------------------------------
Xxxxxx Xxxxx, President
THE LICENSEE:
VIRAGEN (SCOTLAND) LTD.
/s/ Xxxxxx Xxxxxxx
--------------------------------
By: /s/ Xxxxxx X. Xxxxxx
------------------------------------
Xxxxxx X. Xxxxxx, Managing Director
18
EXHIBIT A
INVENTIONS OR DESIGNS APPLICABLE TO LICENSED PROCESSES
19
EXHIBIT B
PATENT RIGHTS
20
EXHIBIT C
MANUFACTURING AND LICENSE AGREEMENT
BETWEEN
VIRAGEN (SCOTLAND) LTD.
AND THE
SCOTTISH NATIONAL BLOOD TRANSFUSION SERVICE
21
EXHIBIT D
SCHEDULE OF PAYMENTS
