[CONFIDENTIAL TREATMENT REQUESTED, CONFIDENTIAL PORTIONS OF THIS AGREEMENT HAVE
BEEN REDACTED AND HAVE BEEN SEPARATELY FILED WITH THE COMMISSION]
AGREEMENT EXHIBIT 10.17
This Agreement is made on 10 February 2000
between:
UNILEVER PLC, an English company having its principal place of business at
Xxxxxxxx Xxxxx, Xxxxxxxxxxx, Xxxxxx XX0X 0XX, Xxxxxxx, and UNILEVER NV a
Netherlands company having its principal place of business at Xxxxx 000, 0000 XX
Xxxxxxxxx, Xxxxxxxxxxx (hereinafter collectively "Unilever")
and:
THERASENSE INC, a California corporation having its principal place of business
at 0000 Xxxxx Xxxx Xxxx, Xxxxxxx, Xxxxxxxxxx 00000, Xxxxxx Xxxxxx (hereinafter
"Licensee")
WHEREAS:
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A. Unilever is in possession directly or indirectly of certain Patent Rights
relating to biosensors.
B. The Licensee has requested a non-exclusive licence under the Unilever
Patent Rights, and the parties have agreed thereto on the terms hereinafter
set forth.
NOW THEREFORE IT IS HEREBY AGREED:
---------------------------------
1. DEFINITIONS:
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1.1 "Affiliate" shall mean any company which owns, is owned by or is commonly
owned with the Licensee. Ownership shall mean the control of the voting
rights attaching to over 50% of the voting shares of the company concerned.
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1.2 "Patent Rights" shall mean the Unilever patent applications and patents set
forth in the Schedule hereto, and patents based on or claiming priority
from any of those patent applications and patents, as well as any
substitution, division, continuation, continuation-in-part, re-examination
or reissue thereof.
1.3 "Territory" shall mean all countries where the Patent Rights are valid and
subsisting.
1.4 "Licensed Product" shall mean any electrochemical biosensor for analysis of
markers for diabetes in a liquid sample, covered by or made in accordance
with, or adapted for use as claimed in any granted patent or published
patent application within the Patent Rights.
1.5 The "Effective Date" shall mean the date of this Agreement.
1.6 "First Commercial Sale" shall mean the first offering for sale by the
Licensee or its Affiliates of Licensed Product for immediate delivery to an
unrelated third party, and shall not include the building up of inventories
at Licensee or Affiliates or pre-introduction announcements of anticipated
products of Licensee.
2. GRANT OF LICENCE
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2.1 Unilever hereby grants to the Licensee and Licensee hereby accepts with
effect from the Effective Date a non-exclusive *** licence under the
Patent Rights in the Territory to make, have made for it, use and sell
Licensed Products according to the terms set out in this Agreement.
2.2 There will be no right to sub-licence without prior written consent of
Unilever.
*** Confidential Treatment Requested.
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2.3 The licence to the Licensee shall not be assigned or otherwise transferred
in whole or in part to any third party, except that the rights and
obligations of the Licensee may be exercised by Affiliates, provided that
the Licensee will remain wholly responsible and accountable to Unilever for
the performance by each Affiliate of any such rights and obligations and
the Licensee shall inform Unilever in writing before any Affiliate is
nominated to exercise such rights and obligations.
3. *** ROYALTY FEE
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3.1 In consideration of the licence rights to be granted by Unilever in Clause
2 hereof, Licensee will pay to Unilever by bank transfer to the account
identified in Clause 4.1 hereof, non-returnable payments as follows:
*** upon signature of this Agreement;
*** within 10 days after the date of the First Commercial Sale, or on
15th March 2000, whichever shall be earlier;
***
***
***
The Licensee shall promptly notify Unilever in writing to the address in
clause 6.3, the date when the second payment is to be made.
*** Confidential Treatment Requested
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4. ACCOUNTS
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4.1 All payments due hereunder shall be made in US Dollars by bank credit
transfer to:
Correspondent Bank: Citibank, New York
Swift address: ***
For the account of: CITIBANK, London
Swift address: ***
In favour of: Unilever UKCR
Account: ***
or otherwise as Unilever shall direct. Unilever NV hereby confirm that
Unilever PLC may make a valid and binding receipt on its behalf. Any
payments which are sent to Unilever more than fifteen (15) days beyond
their due dates as indicated in clause 3.1, shall bear interest at fifteen
(15) percent per annum from the date on which payment was due to the date
on which payment is received by Unilever.
4.2 All payments provided for under this Agreement shall be made to Unilever in
full, provided however that in the event and only to the extent that any
sum payable hereunder is subject to direct taxes levied or assessed by any
government authority under the law of the country from which the remittance
is made, and a treaty exists with that country and the country where the
remittance is received or there is other provision for the avoidance of
double taxation, the Licensee has the right to deduct from the payment any
such taxes and the Licensee shall for each such deduction provide to
Unilever a certificate or other documentary evidence executed by the
appropriate official or relevant government authority to enable Unilever to
claim relief from double taxation on such payments. All payments due under
this Agreement are exclusive of value added tax, or equivalent taxes where
applicable.
*** Confidential Treatment Requested
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5. TERMINATION
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5.1 The Licensee may terminate the licence granted in this Agreement at any
time upon ninety (90) days written notice subject to payment of paid-up
royalty as indicated in clause 3.1 until the actual date of termination.
5.2 Upon any default by the Licensee in the performance of any material
obligation to be performed under the Agreement, Unilever may give written
notice specifying the matter in default, and unless the default is cured
within sixty (60) days following the giving of notice, Unilever may
forthwith terminate the Agreement and the licence rights granted
hereunder.
5.3 Unilever may terminate the licence rights of the Licensee forthwith if the
Licensee shall be declared bankrupt or shall enter into liquidation or
receivership or equivalent state.
5.4 In the event that Licensee challenges, directly or indirectly, any Patent
Right outside the territory of the USA, Unilever shall have the right to
terminate the license under this Patent Right immediately in the country
in which the Patent Right is challenged.
5.5 In all instances, in the event that Licensee challenges any Patent Right
in any country in the Territory, including the USA, Licensee will still be
obliged to continue paying the royalties due under this Patent Right as
set forth in Clause 3.
5.6 Unilever may terminate the licence rights of the Licensee forthwith if the
Licensee manufactures, uses or sells any product which is covered by the
Patent Rights in the country of such manufacture, use or sale, other than
a Licensed Product. Such termination will be effective thirty (30) days
after Unilever provides written notice to Licensee.
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specifying breach of this provision, unless during such notice period the
default is cured by Licensee.
5.7 Termination pursuant to Clauses 5.1 to 5.6 hereof shall not relieve either
party of any obligations accrued prior to the termination, nor rescind or
give rise to any right to rescind anything done or any payments made
hereinunder prior to the time of such termination.
5.8 Unless sooner terminated as provided above, the license rights granted
hereunder shall continue until expiration of the last to expire of the
patents within the Patent Rights.
6. GENERAL PROVISIONS
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6.1 This Agreement supersedes all previous oral and written agreements between
the parties, and this Agreement constitutes complete resolution of all
issues relating to the Patent Rights and is the only and entire
understanding existing between the parties with respect to the subject
matter of this Agreement. Any amendment thereto shall be in writing and
signed by the parties.
6.2 The provisions of this Agreement shall be deemed separable, and if any part
of this Agreement is rendered void, invalid, or unenforceable, such
rendering shall not affect the validity or enforceability of the remainder
of the Agreement unless the part or parts which are void, invalid or
unenforceable shall substantially impair the value of the whole Agreement
to either party.
6.3 All notices and reports shall be sent to the parties at the addresses shown
below. Such notice or report shall be deemed received when sent addressed
to the party at the address shown below by recorded delivery or registered
mail or by express service prepaid or by facsimile or telex confirmed by
mail within seven (7) days. The addresses for
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notices and reports may be changed by timely written notice to the other
party.
For the Licensee: VP Business Development
THERASENSE Inc
0000 Xxxxx Xxxx Xxxx
Xxxxxxx
XX 00000
Xxxxxx Xxxxxx
For Unilever: The Senior Agreements Officer
UNILEVER PLC
Patent Division
Xxxxxxxx Xxxxx
Xxxxxxxxxx
Xxxxxxxxxxxx XX00 0XX
Xxxxxxx
6.4 Unilever PLC and Unilever NV represent and warrant that they own all right
title and interest in and to the Patent Rights or are otherwise authorised
to enter into this Agreement, and that the patent applications in the
Patent Rights were made in good faith, and Unilever is not aware of grounds
which invalidate the Patent Rights, but Unilever expressly do not warrant
the validity of any of the Patent Rights.
6.5 Unilever expressly does not warrant that any Licensed Product is free from
infringement of any third party patent or other intellectual property
rights. The Licensee accepts full responsibility for the manufacture, use
and sale of all Licensed Products and Unilever shall not be liable to the
Licensee or any Affiliate or any customers thereof for the consequences of
such manufacture, use or sale, and the Licensee shall defend, hold harmless
and indemnify Unilever from any and all damages, costs (including
reasonable attorney's fees) or judgements of any kind which arise from such
manufacture, use or sale of Licensed Product.
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6.6 The Licensee shall not make any use of the Unilever name or any trademark
of Unilever or of any of its subsidiaries or affiliates, in connection with
the manufacture, use, promotion or sale of Licensed Products or otherwise
without the prior written consent of Unilever.
6.7 The parties hereto shall keep the terms of this Agreement confidential and
shall not now or hereafter divulge these terms to any third party except:
(a) with the prior written consent of the other party; or
(b) to any governmental body having jurisdiction to call therefor;
provided, however that the disclosing party shall consult with the
other party prior to any disclosure and the two parties shall
cooperate in good faith to minimise any unnecessary disclosure to such
government body; or
(c) subject to (d) below, as otherwise may be required by law or legal
process, including to legal and financial advisors in their capacity
of advising a party in such matters; or
(d) during the course of litigation so long as the disclosure of such
terms and conditions are restricted in the same manner as is the
confidential information of other litigating parties and so long as
(a) the restrictions are embodied in a court-entered Protective Order
and (c) the disclosing party informs the other party in writing at
least ten (10) days in advance of the disclosure; or
(e) in confidence to legal counsel, accountants, banks and financing
sources and their advisors solely in connection with bona fide
financial transaction, or
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(f) as required to comply with regulatory requirements of any governmental
or quasi-governmental institution.
6.8 No licence is hereby granted to the Licensee for making any Product falling
within the Patent Rights other than the Licensed Product.
6.9 In the performance of their obligations under this Agreement, the status of
the parties, including its employees and agents, shall be that of
independent contractors and not as employees or agents, or fiduciaries of
the other party, and as such, neither party shall have the right to make
any commitments for or on behalf of the other party. Nothing in this
Agreement shall create any association, partnership or joint venture
between the parties.
6.10 Failure by either party to enforce any provision of this Agreement shall
not be construed as a waiver of such provision and shall not affect the
validity of the Agreement or any part thereof or the right of that party to
enforce any provision thereof.
6.11 This Agreement shall be deemed to be made in and shall be construed in
accordance with the laws of England for all matters (other than scope and
validity of the Patent Rights which shall be construed and governed in
accordance with the laws of the jurisdiction in which the Patent Rights
have been granted).
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IN WITNESS WHEREOF, the parties hereto have caused this Agreement to be executed
in three originals.
UNILEVER PLC
BY: SIGNATURE HERE
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TITLE:
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UNILEVER NV
BY (1): SIGNATURE HERE
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TITLE:
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BY (2): SIGNATURE HERE
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TITLE:
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THERASENSE, INC.
BY: SIGNATURE HERE
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TITLE: Vice President, Business Development
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