Dated the 21st day of August, 1990.
-----------------------------------------
BOREAL LICENSING INC.
- and -
ROFIN SINAR LASER GmbH
-----------------------------------------
INTERNATIONAL LICENSE
AGREEMENT
-----------------------------------------
CRUICKSHANK, KARVELLAS,
XXXXXX & CONNAUTON
Barristers and Solicitors
Patent and Trademark Agents
#300 Albrumac Business Centre
0000 - 00 Xxxxxx
Xxxxxxxx, Xxxxxxx X0X 0X0
XXXXXX
#0000, Xxx Xxxxxx Xxxxxx IV
000 - 0xx Xxxxxx
Xxxxxxx, Xxxxxxx X0X 0X0
XXXXXX
SOLICITOR'S FILE: 9685-01/MPJK
4441F/0047I
I N D E X O F A R T I C L E S
---------------------------------
ARTICLE DESCRIPTION PAGE NO.
------- ----------- --------
ARTICLE I DEFINITIONS...........................................................................2
ARTICLE II LICENSE GRANT.........................................................................4
ARTICLE III TERM OF AGREEMENT AND TERMINATION.....................................................6
ARTICLE IV ROYALTIES, PAYMENTS AND CHARGES.......................................................7
ARTICLE V DELIVERY.............................................................................11
ARTICLE VI TECHNICAL SUPPORT BY BOREAL..........................................................11
ARTICLE VII RELATED PATENTS......................................................................11
ARTICLE VIII PROSECUTION OF THE CORRESPONDING PATENTS.............................................12
ARTICLE IX WARRANTY OF NO INFRINGEMENT CLAIMS BY THIRD
PARTIES..............................................................................12
ARTICLE X INFRINGEMENT OF THE LICENSED PATENTS.................................................13
ARTICLE XI DENTAL LASER SYSTEM JOINT DEVELOPMENT................................................13
ARTICLE XII OWNERSHIP OF LICENSED PATENTS, PROPRIETARY AND
CONFIDENTIAL INFORMATION ............................................................14
ARTICLE XIII EVENTS OF DEFAULT: REMEDIES.........................................................14
ARTICLE XIV RECORDS, REPORTS AND AUDITS..........................................................15
ARTICLE XV PATENT MAINTENANCE...................................................................15
ARTICLE XVI GENERAL PROVISIONS...................................................................15
EXECUTION............................................................................19
INTERNATIONAL LICENSE AGREEMENT
-------------------------------
THIS INTERNATIONAL LICENSE AGREEMENT made effective as of this 1st day
of July, 1990.
BY AND BETWEEN:
BOREAL LICENSING INC., a corporation
organized and existing under the laws of
the Province of Alberta, and having a
principal place of business at 00000 -
000 Xxxxxx, Xxxxxxxx, Xxxxxxx, Xxxxxx,
X0X 0X0 (herein called "Boreal"),
- and -
ROFIN SINAR LASER GmbH, a corporation
organized and existing under the laws of
West Germany, having a principal place
of business at Xxxxxxxxxxxxxxxx 00, X.X.
Xxx 000000, X-0000 Xxxxxxx 74, West
Germany, (herein called "Rofin"),
WHEREAS:
A. Dr. John Tulip has invented a certain laser technology described in United
States Patent #4,719,639, Carbon Dioxide Slab Laser, issued January 12, 1988,
relating to the design of a carbon dioxide slab laser as described in said
patent;
B. Dr. John Tulip has also effected corresponding patent applications in
Canada, Japan and Europe.
C. Boreal Laser Inc. has acquired by assignment from Dr. John Tulip his entire
right, title and interest to said patent and the corresponding patent
applications.
D. Dr. John Tulip has invented certain additional technology related to the
design of carbon dioxide slab lasers related to said patent which he wishes to
protect by means of patent applications in the United States, Canada, Japan,
Europe, and in other jurisdictions.
E. Boreal Laser Inc. has acquired by assignment from Dr. John Tulip his entire
right, title and interest to said related patents including the right to make
applications therefore in any patent office.
- 2 -
F. Boreal Laser Inc. has granted an exclusive license to Xxxx Zeiss Canada
Limited ("Zeiss") under the said patent and corresponding patents for medical,
scientific and veterinary applications only.
G. Except for the Zeiss Agreement, Boreal Laser Inc. has granted the sole and
exclusive right to license the said patent, corresponding patents and additional
related technology to Boreal which right includes the right to grant the present
license to Rofin including the right of sublicense as granted hereunder to
Rofin.
H. Rofin wishes to acquire an exclusive license to make, use and sell laser
units as come within the scope of the said patent, corresponding patents and
related patents for industrial applications, certain dental applications and
certain military or aerospace applications as more specifically set out herein
but excluding any license to make, use or sell any such laser units for medical,
scientific and veterinary applications.
I. Boreal is desirous of granting an exclusive license to Rofin to make, use
and sell laser units as come within the scope of the said patent, corresponding
patents or any related patents on the terms set out herein and represents that
it is entitled to grant such exclusive license.
J. Rofin is desirous of undertaking responsibility for the manufacture, use,
marketing, sale, installation and servicing of the laser units in the
Territories as set out herein.
K. Rofin represents that it has sufficient facilities, resources and personnel
in the Territories to properly and adequately manufacture, use, market, sell,
install and service the laser units within the Territory, and to perform its
obligations under this Agreement, and is not precluded by any existing
arrangement, contractual or otherwise, from entering into this Agreement.
L. Boreal and Rofin wish to formalize their preliminary agreement made April
25, 1990 and attached hereto as Exhibit "B".
NOW THEREFORE, for and in consideration of the covenants and premises
herein recited, it is understood and agreed as follows:
ARTICLE I DEFINITIONS
---------------------
1.01 In this Agreement including this Article:
(a) "Affiliated Company" shall mean and include any company or legal
entity at least twenty-five (25%) percent of whose outstanding
equity or equity stock is now or hereafter owned or controlled by
Rofin, either directly or indirectly; Siemens Aktiengesellschaft,
Munich, West Germany; and any company or other legal entity at least
fifty (50%) percent of whose outstanding equity or equity stock is
now or hereafter owned or controlled by Siemens Aktiengesellschaft.
A company
- 3 -
or other legal entity shall be deemed to be an affiliated company
only so long as such ownership or control exists as herein
described.
(b) "Arm's Length" shall mean a relationship between Rofin and a
customer under which the customer is not an Affiliated Company of
Rofin nor under the legal, actual or financial control, directly or
indirectly, of Rofin.
(c) "Base Royalty Product" shall mean all components making up the Laser
Unit constituting the complete laser light producing system (from
socket to beam) including the laser head and power supply and any
replacement laser tubes, but specifically excluding the controls or
other parts for repairs.
(d) "Corresponding Patents" shall mean applications for letters patent
corresponding to the subject matter of the Patent filed in the
patent offices in Canada, Europe and Japan.
(e) "Laser System" or "Laser Systems" shall mean apparatus, product or
device containing one or more Laser Units and including one or more
of the Base Royalty Product and also including any controls,
housing, stand and instrumentation for the operation of the
apparatus, product or device.
(f) "Laser Unit" or "Laser Units" shall mean an apparatus, product,
device or process as comes within the scope of the Licensed Patents
and which, except for this License, would constitute an infringement
of any one or more valid, unexpired claim of any Licensed Patents
granted and issued in any country where such Laser Unit or Laser
Units are either manufactured, used, or sold and includes any
replacement laser tubes.
(g) "Licensed Patents" shall mean the Patent, all Corresponding Patents
and any Related Patents or any of them.
(h) "Minimum Annual Royalties" shall mean the minimum performance
requirements set forth in Article IV, which Rofin acknowledges are
reasonable.
(i) "Net Sales" shall mean that proportion of the net amount of monies
or equivalent received by Rofin from the Sale of Base Royalty
Product to a third party with whom Rofin deals at Arm's Length,
excluding sales taxes, turn-over or transfer taxes, import, export
and excise taxes, custom duties, discounts actually allowed to the
customer, shipping costs, packaging costs, and returns for credit
attributable to the Base Royalty Product. Where Rofin carries out
Sales to a party with whom it does not deal at Arm's Length, then
the Net Sales shall be based on the price charged to the customers
of such third party by the party with whom Rofin does not deal at
Arm's Length except where such customer does also not deal at Arm's
Length with Rofin in which case the price established in an open
market between Rofin and a party with whom Rofin does deal at Arm's
Length shall determine the Net Sales Price.
- 4 -
(j) "Patent" shall mean United States Patent No. 4,719,639 issued
January 12, 1988, a copy of which is attached as Exhibit "A" to this
Agreement, including any counterpart, subsidiary, re-issue or
continuation thereof.
(k) "Related Patents" shall mean all patents which issue with a subject
matter related to the Patent resulting from a patent application
henceforth filed by or on behalf of Boreal for which Rofin (or
another Licensee of Boreal) undertakes to and does pay prosecution
fees and attorney expenses or undertakes to pay prosecution fees and
attorney expenses in the event another licensee of Boreal who was
making payments of such fees and expenses ceases making such
payments.
(l) "Sale" or "Sales" shall mean all sales, licensing, leasing, rental,
barter, trade or other exchange of Laser Units or Laser tubes for
valuable consideration and which will be or can be measured in money
or money's worth terms.
(m) "Sell" or "Sells" shall mean to make Sales.
(n) "Sold" shall mean to have made Sales.
(o) "Territory" shall mean the geographical area or areas related to
each licensed application as set forth in this Agreement.
ARTICLE II LICENSE GRANT
------------------------
INDUSTRIAL APPLICATIONS
-----------------------
2.01 Boreal hereby grants to Rofin, and Rofin hereby accepts, subject to
the terms and conditions provided in this Agreement, a world-wide exclusive
license under the Licensed Patents of Boreal to make, have made for its account,
use, and Sell Laser Units intended or sold for industrial laser application
throughout the world. The parties understand the term industrial applications
shall comprise but not be limited to the following examples of laser technology
application: cutting, welding, scribing, drilling, surface treatment, soldering,
brazing, marking and engraving, melting, vaporizing, material analyzing,
material testing, measuring technology heating of material, hot machining,
removing of material, forming of layers on material, alloying, dispersing,
hardening of material, curing of plastic material.
MILITARY AND AEROSPACE APPLICATION IN EUROPE
--------------------------------------------
2.02 Boreal hereby grants to Rofin, and Rofin hereby accepts, subject to
the terms and conditions provided in this Agreement, an exclusive license under
the Licensed Patents to make, have made for its account, use, and Sell Laser
Units intended and sold for military or aerospace laser applications to
customers based in Europe only. Boreal shall retain all rights in relation to
military and aerospace customers based other than in Europe.
DENTAL APPLICATIONS OUTSIDE NORTH AMERICA
-----------------------------------------
2.03 Boreal hereby grants to Rofin, and Rofin hereby accepts, subject to
the terms and conditions provided in this Agreement, an option to obtain an
exclusive license under the
- 5 -
Licensed Patents to make, have made for its account, use, and Sell Laser Units
intended and sold for dental laser applications outside of North America only.
DENTAL APPLICATIONS IN NORTH AMERICA
------------------------------------
2.04 Boreal hereby grants to Rofin, and Rofin hereby accepts an option to
obtain an exclusive license under Licensed Patents, to Sell Laser Units intended
and Sold for dental laser applications in North America, subject to the terms
and conditions provided in this Agreement. If the option is exercised by Rofin,
the license for Rofin to Sell Laser Units in North America only regarding dental
laser applications shall apply to Laser Units made outside of North America in
the event and only to the extent Boreal or a company affiliated with or
subsidiary to Boreal is unable to fulfill the Sales demand of Rofin for such
Laser Units for dental applications in North America.
SUBLICENSING
------------
2.05 Rofin may in accordance with the provisions of this Article 2.05, at
its option, sublicense the benefits and burdens of this License Agreement to an
Affiliated Company. Furthermore, Rofin may sublicense the benefits and burdens
of this license agreement to other parties subject to the prior written approval
or Boreal which approval shall not be unreasonably withheld. Rofin shall cause
any sublicensee to comply with all relevant obligations under this Agreement and
inform Boreal about the sublicense. Rofin shall continue to be responsible to
Boreal for compliance by such sublicencee with the provisions of this Agreement.
Specifically, Rofin shall be responsible for payment of royalties or other
payments to be made in accordance with the terms of this Agreement whether
arising from activities of Rofin or from any sublicensee of Rofin. While the
parties contemplate that Rofin shall be responsible for any sublicensee's
compliance with the terms of this License Agreement including particularly
payment of royalties as contemplated herein, Rofin shall not be responsible for
any damages resulting from breach of the terms of the sublicense agreement by a
sublicensee. In the event of such breach, Rofin shall take immediate steps to
enforce the terms of the sublicense agreement or terminate the sublicense as
appropriate and will inform Boreal of the steps it is taking in this regard.
MEDICAL, SCIENTIFIC OR VETERINARY APPLICATIONS
----------------------------------------------
2.06 This Agreement does not include, and Rofin shall not by virtue of
this Agreement obtain, the right to make, use, market or sell in any manner
whatsoever any Laser Units for any medical, scientific or veterinary
applications.
EXCLUSIVE LICENSEE
------------------
2.07 Except as set out in Article II, Boreal shall not appoint additional
Licensees:
(a) Within the world for industrial applications; or
(b) For use, manufacture or Sales to military and aerospace applications
customers in Europe; or
- 6 -
(c) Outside of North America, subject to Article 2.03 herein, for dental
applications, if Rofin exercises its option in Article 2.03 herein;
or
(d) In North America, subject to Article 2.04 herein, for dental
applications, if Rofin exercises its option in Article 2.04 herein;
during the term of this Agreement for any of the Licensed Patents while this
Agreement remains in full force and effect with respect to such Licensed
Patents. Rofin hereby expressly acknowledges and agrees that this Agreement
places no restrictions on Boreal's right to use, market, distribute, license or
Sell any Laser Units outside the specific Territories or applications specified
herein to or for the benefit or use by Boreal or any third party Boreal may
select at its sole discretion.
RESPECT FOR TERRITORY LICENSED
------------------------------
2.08 Subject to the grant of license to Rofin herein, Rofin shall have no
right to make, use, market or Sell in any manner whatsoever any Laser Units for
applications not specifically licensed to Rofin herein and specifically:
(a) No license for military and aerospace applications other than in
Europe; and
(b) Unless Rofin exercises its option in Articles 2.03 and 2.04 herein,
no dental applications whatsoever.
ARTICLE III TERM OF AGREEMENT AND TERMINATION
---------------------------------------------
3.01 Upon execution by Boreal and Rofin, the term of this Agreement shall
be effective as of July 1, 1990 and shall continue in force until terminated by
the agreement of the Parties or unless terminated earlier pursuant to the
provisions herein.
3.02 The rights granted to Rofin under this Agreement may be terminated
in their entirety by Boreal at any time following the occurrence of any Event of
Default, as defined in Article XIII herein. The rights granted to Rofin under
this Agreement shall be deemed terminated sixty (60) days after a written notice
of such default is provided pursuant to paragraph 16.09 and which default
remains unresolved.
3.03 Upon termination, for any reason, or expiration of the rights
granted to Rofin under this Agreement, Rofin will immediately cease any use,
manufacture or Sale of Laser Units except that:
(a) Rofin shall be entitled to service or repair Laser Units previously
sold to customers even after such termination or expiration;
- 7 -
(b) Rofin shall be entitled to complete any written, signed and binding
contractual obligations which Rofin had entered into prior to notice
of the termination or expiration, but only if:
(i) Rofin informs Boreal of the nature of the contract and number
of Laser Units involved; and
(ii) pays to Boreal all of the royalties payable in respect of such
Laser Units; and
(c) Such Laser Units as have been manufactured by Rofin prior to notice
of termination or expiration may be sold by Rofin subject to payment
of the royalties contemplated herein to Boreal.
3.04 In the event of termination of this Agreement or of Rofin's rights
under this Agreement, Rofin will pay to Boreal within sixty (60) days thereof
all sums due and owing to Boreal under this Agreement. Pursuant to the
provisions of paragraph 3.03, Rofin performs any written, signed and binding
contractual obligations or sells laser units manufactured prior to notice of
termination or expiration then Rofin shall pay to Boreal all sums due and owing
to Boreal and contemplated under this Agreement in respect of those transactions
in the time frames contemplated under this Agreement and shall provide Boreal
with the reports contemplated under this Agreement in respect of such
transactions.
3.05 Any rights of use of the Laser Units Sold by Rofin to a third party
prior to expiration or termination of this Agreement shall continue in full
force notwithstanding such expiration or termination, provided that such Laser
Units were Sold to such third party and Boreal has been paid any amounts due to
Boreal in relation to such Sales.
3.06 Upon termination or expiration of the rights granted to Rofin under
this Agreement for any reason, each party agrees to continue its cooperation and
to effect an orderly termination of the relationship. Rofin will immediately
cease holding itself out or presenting itself as having the right to make, use,
market or Sell Laser Units (except for Laser Units already manufactured by Rofin
which Rofin is entitled to sell also after termination) and will fully report to
Boreal concerning the status of negotiations with potential customers and the
status of services Rofin is obligated to provide existing customers.
3.07 The covenants contained in this Article III shall survive the
termination or expiration of this Agreement or termination of the rights granted
to Rofin under this Agreement.
3.08 Unless sooner terminated in accordance with the provisions of
Article III herein, this Agreement shall subsist and continue in force for so
long as any of the Licensed Patents is valid and subsisting.
ARTICLE IV ROYALTIES, PAYMENTS AND CHARGES
------------------------------------------
4.01 In consideration of the license granted hereunder, Rofin agrees to
make payments to Boreal in accordance with the following schedule. In this
schedule the designation "$" herein means Canadian dollars and the designation
"DM" means West German marks or equivalent
- 8 -
amount converted into European currency units ("ECU") at such time as ECU become
the sole legal tender for the Federal Republic of Germany (regardless of by what
name that nation state shall be known in the future) with such conversion
occurring at the then official published rate of exchange of DM or ECU. The rate
of exchange to be applied in the transactions contemplated in this Article shall
be that rate of exchange prevailing on the last day of the quarter (when the
quarterly calculation is made).
TIME PERIOD PAYMENT
----------- -------
July 1, 1990-June 30, 1992 In consideration of the exclusive nature of the license
granted hereunder Rofin shall pay Boreal the sum of
$360,000.00 for purchase of those exclusive rights subject to
the terms hereof by making payments of $15,000.00 for each
month thereof payable on or before the last day of each such
month.
July 1, 1992-December 31, 1993 Rofin shall pay Boreal a royalty of 4% of the Net Sales price
of each Base Royalty Product, manufactured or Sold in such
countries where the Licensed Patents are valid and issued to
the extent the gross revenues of such Base Royalty Product
Sales based upon cumulative Net Sale prices exceeds
$750,000.00 during July 1, 1992 to December 31, 1992 or
$1,500,000.00 during January 1, 1993 to December 31, 1993.
January 1, 1994-December 31, 1998 Rofin shall pay Boreal on quarterly basis a royalty of 4% of
the Net Sales price of such Base Royalty Product, manufactured
or Sold in such countries where the Licensed Patents are valid
and issued. The royalty amount on an annual basis paid to
Boreal shall not be less than $180,000.00 annually. If the
royalty amount paid is less than $180,000.00 annually, Boreal
shall have the right, subject to the provisions of Article
4.08, to notify Rofin in writing that its license rights under
the patents shall be converted from exclusive to non-exclusive
license rights and the License Agreement shall continue on
such basis.
January 1, 1999 - termination Rofin shall pay Boreal on a quarterly basis a royalty of 3% of
the Net Sales price of Base Royalty Product, manufactured or
Sold in such countries where the Licensed Patents are valid
and issued based upon cumulative annual Sales of such units up
to 20,000,000 DM; 2% based upon Sales of 20,000,000 DM up to
and including 60,000,000 DM;
- 9 -
and 1% based upon Sales over 60,000,000 DM. The annual royalty
payments during this period shall be equal to or greater than
$180,000.00 annually or Boreal shall have the right, subject to
the provisions of Article 4.08, to convert the license rights
granted to Rofin from exclusive to non-exclusive and the
License Agreement shall continue on such basis.
4.02 "The Minimum Annual Royalties" for the applicable times of this
Agreement shall be:
TIME PERIOD MINIMUM ANNUAL ROYALTIES APPLICABLE
----------- -----------------------------------
July 1, 1990 to There is no minimum annual royalty
December 31, 1993 applicable to this period.
January 1, 1994 to $180,000.00 annually
December 31, 1998
January 1, 1999 to termination $180,000.00 annually
4.03 In addition to any records and reports to be submitted by Rofin to
Boreal pursuant to Article XIV, Rofin shall notify Boreal ninety (90) days after
the end of each quarter of the total royalties due to Boreal for the preceding
quarter and shall supply Boreal with a detailed report as set forth in Article
XIV. The exchange rate to be used in calculations to determine contributions to
the Minimum Annual Royalties shall be that rate prevailing on the last day of
the calendar quarter in which Rofin invoiced its customers or distributors. If
Rofin shall fail to pay Boreal within ninety (90) days after the end of each
quarter, Rofin shall pay interest on amounts owed to Boreal at a rate of eight
(8%) percent per annum calculated on a daily basis for each day payment is
delayed from the date payment was first due to Boreal. Amounts received by
Boreal hereunder shall first be credited against any unpaid interest accrued
pursuant to this paragraph 4.03, and accrual of such interest shall be in
addition to and without limitation of any and all additional rights or remedies
which Boreal may have hereunder or at law or in equity. Notwithstanding the
reporting contemplated in this paragraph 4.03, Rofin shall make monthly payments
to Boreal of at least 1/12th the Minimum Annual Royalties applicable for the
period with a quarterly accounting and adjustment for such monthly prepayment of
royalties. Such monthly payments shall be on the basis of 1/12th of the previous
year's Minimum Annual Royalty applicable.
4.04 Rofin shall make all payments to Boreal by wire transfer according
to the following instructions unless notified in writing to the contrary by
Boreal:
Pay to: Boreal Licensing Inc.
Canadian Dollar Account No. 13-04119
Canadian Imperial Bank of Commerce
00000 Xxxxxx Xxxxxx
Xxxxxxxx, Xxxxxxx, XXXXXX
- 10 -
4.05 All costs incurred by Boreal at the request of Rofin with respect to
promotion, installation and support of the Licensed Patents, including but not
limited to travel, accommodation and living expenses, shall be borne by Rofin.
4.06 Rofin shall apply diligent efforts, subject to applicable laws and
regulations, to secure the transfer and conversion of the royalties payable in
the equivalent of Canadian dollars. If the conversion into and remittance of the
Canadian dollar equivalent in any such instance is not lawful, Rofin shall cause
the payment of such royalty to be made by the deposit thereof in the currency of
the country to the credit and account of Boreal or its nominee in any commercial
bank or trust company of Boreal's choice located in that country.
4.07 In the event that a withholding or other tax is imposed on a royalty
due hereunder, the amount of royalty payment shall be the amount due less the
amount of such tax actually paid by Rofin on Boreal's behalf. Rofin shall
furnish Boreal copies of all official receipts at least annually for any such
taxes and charges deducted from payments hereunder and shall cooperate with
Boreal in any claim made by Boreal for recovery of any such withholding tax or
other related taxes.
4.08 If at the end of each year of the Agreement Rofin has not paid to
Boreal Royalties in an amount at least equal to the Minimum Annual Royalty for
that year, then Rofin shall at its sole discretion within ninety (90) days of
the end of said year either pay to Boreal an amount equal to the difference
between the aggregate amount of Royalties paid to Boreal and the Minimum Annual
Royalty for said year (the "Royalty Shortfall") or notify Boreal that such
payment will not be made and that Boreal has the immediate right to terminate
the exclusive nature and rights under this Agreement.
4.09 Rofin hereby agrees to meet the Minimum Annual Royalty within each
of the time periods specified herein. Any Sales credited in any calendar year
toward satisfaction of the Minimum Annual Royalty cannot, however, be credited
again in the following year toward the satisfaction of the Minimum Annual
Royalty.
4.10 In the event that Boreal does convert this License Agreement or any
grant of license herein, from an exclusive right to a non-exclusive right,
pursuant to this Article IV, and shall then grant to a third party a further
non-exclusive license of such rights as are covered by this License Agreement
under royalty conditions (rate, basis and method of calculation) more favourable
than those contained in this License Agreement, Rofin shall, at its option, have
the benefit of such more favourable conditions from the effective date of such
other non-exclusive license.
4.11 In the event that on final appeal a Court of competent jurisdiction
holds that essential claims of the Licensed Patents are invalid, the parties
shall review the overall impact of that decision and shall agree upon an
adjustment of the royalties payable herein. Failing such agreement, the parties
shall submit the resolution of this matter to arbitration as contemplated under
this Agreement and provide the arbitrators with all such information as they may
find necessary or desirable in an effort to establish such adjusted royalty
amounts.
- 11 -
ARTICLE V DELIVERY
--------------------
5.01 Boreal will ship or otherwise deliver to Rofin one complete set of
the Licensed Patents.
ARTICLE VI TECHNICAL SUPPORT BY BOREAL
----------------------------------------
6.01 Boreal shall, on request of Rofin, provide during the term of this
Agreement consulting services, training and technical support with respect to
the licensed subject matter, which support may include but not be limited to
assistance in the use, manufacture or sale of Laser Units and Boreal shall
provide the consulting, training and technical support with regard to the
licensed subject matter required under this Agreement at Boreal's normal
consulting rate to Rofin. Rofin shall also be responsible for any travel,
accommodation and reasonable living expenses of Boreal's personnel providing any
such consulting, training or technical support services to or for Rofin.
ARTICLE VII RELATED PATENTS
-----------------------------
7.01 Dr. John Tulip has made or may make additional inventions directly
related to the field of slab gas lasers and directly related to the applications
licensed to Rofin hereunder, the licensing rights to which have been acquired by
Boreal ("Related Inventions"). Boreal is entitled to all licensing rights for
such Related Inventions and Related Patents which issue. This Agreement does not
affect any inventions of Dr. John Tulip not related to the field of slab gas
lasers. Boreal wishes to make application for letters patent in the appropriate
patent offices in the United States of America, Canada, Japan, Europe and
elsewhere in respect of such Related Inventions on the basis set out in this
Article VII.
7.02 Boreal agrees to disclose in confidence the specification, draft of
proposed claims and related technical information for any Related Inventions to
Rofin for review by Rofin. Rofin agrees to maintain in confidence and not
disclose to any third party nor use for any purpose except as contemplated
herein any such confidential information as has been disclosed hereunder to
Rofin by or on behalf of Boreal.
7.03 For all Related Inventions made by Dr. John Tulip before the
Effective Date of this Agreement and for one (1) year thereafter and if Rofin
wishes to benefit from the inclusion of such Related Inventions in and as part
of its exclusive rights and license under this Agreement, then Rofin shall
reimburse to Boreal the drafting, filing, prosecution costs and attorneys' fees
paid by Boreal in respect of such Related Inventions. To the extent that Rofin
does pay such costs and fees to Boreal, then any patent which issues in relation
to any Related Invention covered by this Article 7.03 and for which such
payments have been made by Rofin shall be included in and form part of the
Related Patents subject to the same terms as in this License Agreement including
any restrictions on scope of application.
7.04 For all Related Inventions made by Dr. John Tulip more than one (1)
year after the Effective Date of this Agreement which Rofin wishes to be
included in and as part of its exclusive rights and license under this
Agreement, then Rofin and Boreal shall come to mutually agreeable terms on
consideration or compensation to Boreal for such rights. Boreal contemplates
- 12 -
that consideration or compensation which may be satisfactory to it may include
cash payments, cross licensing of Rofin technology or that of Affiliated
Companies and payment of drafting, filing, prosecution costs and attorneys' fees
in respect of patent applications for such Related Inventions. To the extent
that Rofin and Boreal do come to mutually acceptable terms, then any patent
which issues in relation to such Related Inventions covered by this Article 7.04
and for which Boreal has received its compensation or consideration pursuant to
the agreement Rofin, shall be included in and form part of the Related Patents
subject to the same terms as in this License Agreement including any
restrictions on scope of application.
7.05 From time to time Boreal may wish to incur drafting, filing and
prosecution costs and attorneys' fees for any applications for letters patent of
Related Inventions referred to in Article 7.03. To the extent that Zeiss pays or
agrees to pay such costs and fees then Boreal shall not submit a request to
Rofin for payment of such costs and fees and, nevertheless, Rofin shall be
entitled to benefit from the inclusion of any such patent for any such Related
Invention which issues, as part of the Related Patents in this Agreement and
subject to the same terms as in this License Agreement including any
restrictions of scope of application. In the event that, for any reason, Zeiss
fails to or refuses to pay such costs and fees, Boreal shall immediately inform
Rofin and Rofin shall, at its option, have the right to pay such costs and fees
and thereby benefit from inclusion of any such patents which issue as part of
the Related Patents herein subject to the same terms as in this License
Agreement including any restrictions of scope on application.
ARTICLE VIII PROSECUTION OF THE CORRESPONDING PATENTS
-------------------------------------------------------
8.01 Boreal shall continue to prosecute the Corresponding Patent
applications and shall consult with Rofin in respect of any decisions which may
affect the validity, enforceability or strength of any of the Corresponding
Patents which may issue. Rofin agrees to reimburse Boreal's prosecution costs
and attorneys fees for prosecution of any of the Corresponding Patents incurred
after July 1, 1990.
ARTICLE IX WARRANTY OF NO INFRINGEMENT CLAIMS BY THIRD PARTIES
----------------------------------------------------------------
9.01 Boreal and Rofin agree that reasonable legal expenses and costs in
the defence of an infringement suit brought against Rofin and based solely upon
the licensed subject matter shall be shared equally by Rofin and Boreal,
although Rofin shall have the exclusive right to control such litigation and
Boreal's contributions shall be subject to the maximum amount of payments
received by Boreal under this License Agreement.
9.02 Rofin shall keep Boreal fully informed as to the progress of the
action, prospects for settlement and other matters relevant to any such action.
9.03 To the extent damages or costs are recovered by Rofin in such a
suit, Rofin shall reimburse Boreal on a pro-rata basis up to the amount of
Boreal's contribution.
9.04 Boreal has no input or control over the ultimate design of Laser
Systems or Laser Units manufactured by Rofin under this Agreement and therefore
Boreal shall have no responsibility arising from any claim based on, in whole or
in part, the design, quality of
- 13 -
manufacture or related to the Sale, marketing or installation of Laser Units as
contemplated under this Agreement.
ARTICLE X INFRINGEMENT OF THE LICENSED PATENTS
------------------------------------------------
10.01 Rofin shall have a right to bring, maintain and settle patent
infringement suits under the Licensed Patents against third parties. The costs
and legal expenses of such a suit shall be borne by Rofin when Rofin brings the
lawsuit. Boreal agrees to join any such lawsuit brought by Rofin at Rofin's
expense. Boreal or Dr. John Tulip will assist and cooperate with Rofin in any
such lawsuit, as requested by Rofin with Rofin to pay the reasonable expenses of
Boreal or Dr. John Tulip incurred in connection with such assistance.
10.02 Subject to the prior written approval of Rofin (which approval may
not be unreasonably withheld), Boreal shall have the right to bring, maintain
and settle patent infringement suits under the Licensed Patents against third
parties. The costs and legal expenses of such a suit shall be borne by Boreal
when Boreal brings the lawsuit. Boreal will permit Rofin to be named as a party
to any lawsuit brought by Boreal. Rofin will assist and cooperate with Boreal in
any such lawsuit, as requested by Boreal, with Boreal to pay the reasonable
expenses of Rofin incurred in connection with such assistance.
10.03 To the extent damages are recovered in a patent infringement suit
under the Licensed Patents against third parties, the party bringing the lawsuit
and paying the costs and legal expenses of such a suit shall have the exclusive
right to collect such damages. To the extent that Rofin and Boreal share the
costs and expenses of bringing the suit then Boreal and Rofin shall share the
damages or other award or settlement payment arising from that lawsuit in the
same proportion to which they shared the costs and expenses of bringing the
action.
ARTICLE XI DENTAL LASER SYSTEM JOINT DEVELOPMENT
--------------------------------------------------
11.01 If Rofin exercises its options in Articles 2.03 and 2.04, then
Boreal and Rofin shall enter into an agreement respecting the joint development
of a world-wide standard design for a dental Laser System based on the Licensed
Patents. Pursuant to the provisions of the Preliminary Agreement it is
contemplated by the parties that such agreement will be executed between the
parties or between Boreal or its nominee and the dental division of Siemens AG
pursuant to which Siemens AG will be made the exclusive distributor in North
America of Laser Systems intended for dental applications which are manufactured
by Boreal Laser Inc. or its nominee. The right and option of Rofin in Articles
2.03 and 2.04 may be exercised by Rofin or Siemens AG up to and until December
31, 1990. The parties contemplate that to the extent that Boreal or its nominee
is unable to fill the demand of Rofin or the dental division of Siemens AG for
such Laser Systems for dental applications in North America, then Rofin or the
dental division of Siemens AG shall have the right to sell in North America such
Laser Systems intended for dental applications as are made outside of North
America required to fill the demand. The parties contemplate that the Joint
Development Agreement will also deal with the terms of the exclusive
distribution arrangement as contemplated in this Article.
- 14 -
ARTICLE XII OWNERSHIP OF LICENSED PATENTS,
--------------------------------------------
PROPRIETARY AND CONFIDENTIAL INFORMATION
----------------------------------------
12.01 Rofin acknowledges that all information and material supplied to
Rofin under this Agreement shall remain the sole property of Boreal.
12.02 The parties acknowledge that all information supplied under this
Agreement shall remain the sole property of the transmitting party.
12.03 The receiving party will keep confidential the information received
from the other party and not use such information for any purposes except as
contemplated in this Agreement. This obligation, however, does not apply to
information which the receiving party can prove:
(a) to be freely available from the public domain;
(b) it had owned prior to receipt from the transmitting party;
(c) to have legally received from a third party without obligation of
confidence; or
(d) to have developed independently from the information developed from
the other party.
12.04 Rofin shall be entitled to transmit confidential information
received from Boreal under this Agreement to its sublicencees after the
sublicencees have bound themselves to the same obligations of confidence as
stipulated above. Rofin shall provide Boreal with copies of all contractual or
other commitments by such sublicencees in this regard.
ARTICLE XIII EVENTS OF DEFAULT: REMEDIES
------------------------------------------
13.01 The occurrence of any of the following events shall be an "Event of
Default" hereunder:
(a) Rofin fails to satisfy the payment obligations herein with respect
to the Licensed Patents or otherwise in any applicable time period;
or
(b) Rofin violates any of the provisions of Article II herein, which
paragraph relates to Rofin's licensed applications and specific
Territories under Licensed Patents; or
(c) Rofin breaches its obligations of confidence in respect of
confidential information provided to Rofin by Boreal pursuant to the
provisions of this Agreement; or
(d) Rofin shall fail to perform or observe any other term, covenant, or
agreement contained in this Agreement other than a term, covenant or
agreement specified elsewhere in this paragraph 13.01.
13.02 The parties shall not be liable or deemed to be in default for any
delay or failure to perform their obligations hereunder if such failure results
from an act of God over which the parties have no reasonable control such as
hurricane, earthquake, tornado, fire, storm, blizzard,
- 15 -
war, civil unrest or terrorist act. The parties shall in no event be liable for
loss of profit, goodwill or other special or consequential damages suffered by
the other party. Each party's liability for any claim for damages under this
Agreement shall be limited to direct damages and shall not exceed the payments
which have been paid for the Licensed Patents that are the subject of the
dispute.
13.03 Unless otherwise provided herein, the right of either party to
terminate this Agreement or any rights granted under this Agreement shall not be
affected in any way by its waiver of or failure to take action with respect to
any previous default.
ARTICLE XIV RECORDS, REPORTS AND AUDITS
-----------------------------------------
14.01 Rofin shall maintain complete, clear and accurate records to enable
all payments due to Boreal hereunder to determined.
14.02 Royalty payments to be made as contemplated under this Agreement
shall be accompanied by a statement giving information sufficient to determine
the Net Sales by Rofin or a Sublicensee as well as the royalty payments due.
14.03 Rofin shall keep written books of account in which it shall record
the exact amount of Laser Units manufactured and sold by virtue of this
Agreement. Boreal shall have the right by means of an accountant or auditor
appointed by it and approved by Rofin (which approval shall not be unreasonably
withheld) to inspect these books of account and to examine whether they are
consistent with the general accounts of the Licensee. If the parties cannot
agree on the appointment of such accountant or auditor, the parties shall accept
an accountant or auditor appointed by an association of chartered accountants or
certified public accountants. The cost of such inspection and examination shall
be borne by Boreal unless an error of greater than 5% of the total royalties due
for any payment period is found as a result of the audit or accounting review in
which case the cost shall be borne and paid for by Rofin. The right of Boreal to
inspect the records and accounts of Rofin or Affiliated Company or other
sublicensee shall survive the termination or expiration of this Agreement or the
termination of the rights of Rofin under this Agreement for a period of 6 months
thereafter.
ARTICLE XV PATENT MAINTENANCE
-------------------------------
15.01 Boreal agrees to maintain in force the Licensed Patents in all
jurisdictions in which the Licensed Patents have issued by paying maintenance
fees. Rofin agrees to reimburse to Boreal the maintenance fees, costs and
attorneys fees paid by Boreal in accordance with the provisions of this Article
XV after July 1, 1990.
ARTICLE XVI GENERAL PROVISIONS
--------------------------------
COOPERATION OF PARTIES
----------------------
16.01 Each party shall give its full cooperation to the other in achieving
and fulfilling the terms of this Agreement and to that end each party shall give
all consents and information
- 16 -
and execute all such documents as may reasonably be required to so fulfill and
achieve these purposes, including such as may be required by government laws or
regulations.
NO PARTNERSHIP OR AGENCY
------------------------
16.02 Nothing in this Agreement shall be construed to make the parties
hereto partners, joint venturers, representatives or agents of each other nor
shall either party so hold itself out. All employees, agents, contractors or any
other persons employed or retained by Rofin to assist Rofin in the performance
of the obligations hereunder shall be solely those of Rofin and have no
relationship to Boreal. No representation or act of Rofin or its employees,
agents or contracts will be binding upon Boreal.
ENTIRE AGREEMENT
----------------
16.03 This Agreement is made and accepted subject to the stipulations and
conditions herein together with such other provisions, agreements or conditions
as may be attached hereto. This Agreement (and the Exhibits hereto and any other
documents delivered pursuant hereto) constitutes the entire agreement among the
parties with respect to the subject matter hereof and supersedes all prior
statements or agreements, written or oral, among the parties with respect to the
subject matter hereof.
AMENDMENT
---------
16.04 No amendment, modification, termination, or waiver of any provision
of this Agreement (and the Exhibits hereto and other documents delivered
pursuant hereto) nor consent to any departure therefrom, shall in any event be
effective unless the same shall be in writing and signed by an authorized
representative of both Boreal and Rofin, and then such waiver or consent shall
be effective only in the specific instance and for the specific purpose for
which given.
ASSIGNMENT
----------
16.05 Rofin may not assign or transfer this Agreement or any interest
herein (including without limitation rights and duties or performance) except as
set forth in section 2.05.
CROSS REFERENCE
---------------
16.06 To the extent any information required to the furnished in any
Exhibit attached hereto is contained in any other Exhibit or document attached
hereto or incorporated herein by reference, such information shall be deemed to
be included in all such Exhibits in which it is required to be furnished,
provided such presentation is not confusing or misleading.
GOVERNING LAW
-------------
16.07 This Agreement shall be deemed to be a contract made under the laws
of the Province of Alberta and for all purposes shall be governed by and
construed in accordance with the laws of said Province.
- 17 -
WAIVER
------
16.08 The failure of either party to exercise any right or option it is
granted herein, or to require the performance of any term of this Agreement, or
the waiver of either party of any breach of this Agreement, shall not prevent a
subsequent exercise or enforcement of such terms or be deemed a waiver of any
subsequent breach of the same or any other term of this Agreement.
ADDRESSES FOR NOTICES
---------------------
16.09 All notices, requests, demands and other communications provided for
hereunder shall be in writing and mailed, telexed (with confirmed answerback),
or hand delivered to such party addressed
if to Boreal:
00000 - 000 Xxxxxx
Xxxxxxxx, Xxxxxxx, Xxxxxx
X0X 0X0
Fax: (000) 000-0000
ATTENTION: PRESIDENT
---------------------
if to Rofin
Xxxxxxxxxxxxxxxx 00
P.O. Box 740360
D-2000 Xxxxxxx 00
Xxxx Xxxxxxx
Fax: 000000000000
ATTENTION: TECHNICAL DIRECTOR
------------------------------
or such other address as shall be designated by such party in a notice to the
other party, complying as to delivery with the terms of this paragraph.
EXECUTION IN COUNTERPARTS
-------------------------
16.10 This Agreement may be executed in any number of counterparts each of
which when so executed and delivered shall be deemed to be an original and all
of which taken together shall constitute but one and the same instrument.
HEADINGS
--------
16.11 All section and paragraph headings used in this Agreement are for
convenience only and shall not effect the construction of this Agreement. All
references to gender shall include masculine or feminine, as the case may be.
The singular shall include the plural, and the plural shall include the
singular.
- 18 -
ENGLISH LANGUAGE
----------------
16.12 This Agreement has been executed in the English Language, and any
interpretation or construction of this Agreement shall be based solely on the
English language official text.
EQUITABLE RELIEF
----------------
16.13 Notwithstanding any other provision of this Agreement, Rofin
expressly agrees that Boreal shall be entitled to apply for and obtain equitable
relief (including, without limitation, injunctive relief and specific
performance) without any requirement to post a bond as a condition for such
relief in any court of competent jurisdiction to prevent a breach of this
Agreement but only in cases as are described in Article 13.01(b) or (c) of this
Agreement. The final decision, however, shall be made by the arbitration
procedures as set out in Article 16.14. The institution of arbitration
proceedings shall not be a condition precedent to the exercise of Boreal's
rights to equitable relief.
ARBITRATION
-----------
16.14 Any differences or disputes arising from this Agreement regarding
its performance shall be settled by amicable efforts by both parties. An attempt
to arrive at a settlement shall be deemed to have failed as soon as one of the
parties to this Agreement so notifies the other party in writing. If an attempt
at settlement has failed, and subject to the provisions of Article 16.13, the
differences or disputes shall be finally settled under the Rules of Conciliation
and Arbitration of International Chamber of Commerce in Paris ("Rules") by three
arbitrators appointed in accordance with the Rules. The place of arbitration
shall be at such a place as agreed by the parties or if the parties do not
agree, at such place selected by the arbitrators other than Canada or West
Germany. The procedural law of this place shall apply where the Rules are
silent. The arbitral award shall be substantiated in writing. The arbitral
tribunal shall decide on the matter of costs of the arbitration.
- 19 -
COMPLIANCE WITH APPLICABLE EXPORT CONTROLS
------------------------------------------
16.15 Rofin agrees to comply with all applicable West German laws,
regulations, rulings, or executed orders relating to the exportation or
importation of any technology licensed to Rofin in this Agreement. Further,
should an export permit be required under the laws of Canada for export of the
technology to Rofin contemplated under this Agreement then Rofin will reimburse
Boreal's reasonable costs and attorneys' fees to acquire such export permit.
IN WITNESS WHEREOF the parties hereto have caused their duly
authorized officers to execute this Agreement as of the dates and in the places
set out below.
EXECUTED this 21st day of BOREAL LICENSING INC.
August, 1990, in the City of PER:/S/ Hinrich Martinen
Edmonton, Alberta, Canada ------------------------------------
EXECUTED this 31 day of ROFIN SINAR LASER GmbH
August, 1990, in Hamburg, PER:/S/ Johann Goergmaier
West Germany ------------------------------------
