EXHIBIT 10.1
STRATEGIC PARTNERSHIP AGREEMENT
THIS STRATEGIC PARTNERSHIP AGREEMENT (this "Agreement"), effective as of
July 14, 2005, is made by and between BRIDGETECH HOLDINGS INTERNATIONAL, INC., a
Delaware corporation ("Distributor"), and BIOFIELD CORP., a Delaware corporation
("COMPANY"), (COMPANY together with Bridgetech, the "Parties").
WITNESSETH
WHEREAS, COMPANY is in the business of providing the BIOFIELD(R) Breast
Cancer Diagnostic System (the "Product" or "Products") which consists of a CE
approved device and sensors, and which is intended to distinguish malignant from
benign disease with a statistically significant difference in women with
suspicious breast lesions detected by physical examination and/or by
mammography;
WHEREAS, Distributor has established several entities that focus on the
resale and distribution of medical devices in the People's Republic of China
(the "PRC"), the Hong Kong Special Administrative Region of the PRC, the
Republic of China (Taiwan), Vietnam, and Singapore (together, the "Territory").
WHEREAS, Distributor wishes to obtain a right of first refusal to exclusive
distribution rights to the product in Japan, India, Indonesia, and Australia ;
(together the "Other Asian Territories");
WHEREAS, the Parties wish to form a strategic partnership in order to
facilitate the sale and distribution of the Product in the Territory;
NOW THEREFORE, in consideration of the premises and of the mutual covenants
contained in this Agreement, and for other good and valuable consideration, the
receipt and adequacy of which is hereby acknowledged, the Parties agree as
follows.
1. The Project.
1.1 Purpose. The purpose of this Agreement is to provide for:
(a) the distribution of the Product in the Territory;
(b) the granting to Distributor of the right to distribute and market
the Product in the Territory, subject to the terms and conditions
of this Agreement;
(c) the granting to Distributor of a right to first refusal to
exclusive distribution rights to the Product in the Other Asian
Territories that are not under contract with Biofield as of the
above-referenced effective date of this Agreement; and
(d) manufacturing rights are not granted under this agreement, and
will be considered under separate agreement.
(All of the activities listed in Section 1.1 of this Agreement shall
be collectively referred to as the "Project").
2 Project Terms.
2.1 Preferred Relationship. Except to the extent prohibited by applicable
law, rules and regulations:
(a) The clinical research organization owned by Distributor shall be
the exclusive provider of clinical research services relating to
the Product to COMPANY in the Territory, during the Project Term
at no cost to COMPANY.
2.2 Distribution. Except to the extent prohibited by applicable law, rules
and regulations:
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(a) Subject to the terms and conditions of this Agreement,
Distributor shall have (1) exclusive distribution rights to the
Product in the Territory and (2) a right of first refusal to
exclusive distribution rights to the Product in the Other Asian
Territories under terms to be mutually decided in writing between
the Parties after a negotiation in good faith. Distributor and
any of its affiliates shall not distribute the Product outside of
the Territory. Distributor shall not knowingly directly or
indirectly distribute the Product for resale outside the
Territory by sales of the Product to (a) any of its affiliates,
(b) any third party that intends to sell the Product outside the
Territory or (c) any third party or affiliate of Distributor that
COMPANY has informed Distributor may be selling or distributing,
directly or indirectly, the Product outside of the Territory.
(b) Distributor's Cost. The cost that Distributor shall pay COMPANY
for each of the Products shall initially be determined as cost of
goods plus thirty-five (35%) percent ("Distributor's Cost").
COMPANY may modify the Distributor's Cost at any time upon not
less than ninety (90) days' prior notice to Distributor. All
prices are F.O.B. COMPANY, Alpharetta, GA. United States of
America, and are exclusive of freight, insurance charges,
transportation costs, handling, set-up costs, customs duties,
customs surcharges, value added tax (VAT) and any other
applicable taxes in the destination country, all of which
excluded items shall be paid for by Distributor. The Distributor
is granted the right to purchase up to 10 CE marked devices for
clinical and demonstration proposes at a cost of $4,050.00 per
unit. All payments by Distributor relating to this Agreement
shall be in United States Dollars; shall be made within thirty
(30) days of the delivery of the Products to the destination in
the Territory; and shall be sent to COMPANY via wire transfer as
follows:
Wire instructions to be sent under separate cover
(c) Minimum Quantity. The Distributor shall be subject to Minimum
Purchase Requirements (as defined below). During each contract
year throughout the term of this Agreement, the Distributor shall
purchase from COMPANY not less than the minimum purchase
requirements of each of the Products which are agreed to by the
Parties following the review of the Market Study and Forecast in
accordance with Section 2.3(e) of this Agreement (the "Minimum
Purchase Requirements"). If COMPANY discontinues selling any of
the Products or the Parties otherwise mutually agree to delete
any of the Products from the Minimum Purchase Requirements, the
amount of the discontinued or deleted Product that was to be
distributed shall be deducted from the total Minimum Purchase
Requirements. The Distributor: (i) acknowledges that the Minimum
Purchase Requirements are a material inducement for COMPANY to
enter into this Agreement and that such Minimum Purchase
Requirements have been determined jointly by COMPANY and
Distributor; and (ii) hereby represents to COMPANY that it is
capable of achieving such Minimum Purchase Requirements. If at
any time Distributor has failed to meet its Minimum Purchase
Requirements with respect to a Product for the immediately
preceding calendar year, COMPANY shall have the right at any time
within ninety (90) days thereafter, to terminate this Agreement
or, alternatively, to terminate Distributor's right to distribute
the Product in any country or geographic region (e.g., Hong Kong
Special Administrative Region of the PRC, the Republic of China
(Taiwan), or Singapore) within the Territory with respect to
which Minimum Purchase Requirements have not been met.
(d) Arbitration for Determination of Minimum Purchase Requirements.
In the event the Parties are unable to reach agreement under
Section 2.3(e) as to Minimum Purchase Requirements, either Party
shall have the right to notify the other Party in writing
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that it desires such determination to be settled by arbitration
before one arbitrator mutually agreed upon by the Parties. In the
event the Parties are unable to agree upon an arbitrator within
thirty (30) days of such notice, the arbitrator shall be selected
in accordance with the rules of the American Arbitration
Association ("AAA"), provided that any arbitrator so selected
shall have performed at least two arbitrations in the
biotechnology industry for a state or federal court or a
financial institution within the last two years. The arbitration
shall be conducted in English in Los Angeles, California unless
both Parties consent to a different location. Within thirty (30)
days after the appointment of the arbitrator, each of the Parties
shall present to the arbitrator its written proposal setting
forth what it believes to be appropriate Minimum Purchase
Requirements, together with its reasoning therefore. After
receipt of each Party's written presentation, the arbitrator
shall deliver a copy of each Party's presentation to the other
Party and to provide the other Party with thirty (30) days to
submit a written rebuttal to the presentation. The arbitrator
shall have the right, but shall not be required, to require oral
testimony. The arbitrator shall reach a final determination of
Minimum Purchase Requirements by selecting either the proposal
initially submitted by the Company or the proposal initially
submitted by Distributor. The arbitrator shall have no authority
to reach any other determination. The decision of the arbitrator
shall be final and binding upon all Parties. All fees and
disbursements of the AAA and the arbitrator shall be borne
equally between the Parties.
2.3 Product Development.
(a) Distributor shall use reasonable efforts to secure, any and all
Regulatory approvals required for distribution of the Product in
the Territory. Distributor agrees to provide all relevant
protocols, data and regulatory documents to COMPANY for COMPANY's
use in support of US and or other regulatory approval processes.
(b) Distributor shall be responsible for developing a distribution
plan and network for the Product in the Territory and shall use
commercially reasonable efforts to achieve purchase requirements
within Market Study and Forecasts.
(c) Distributor shall advertise the Product in the Territory in order
to facilitate the sale of the Product;
(d) No later than December 31, 2005, Distributor shall commence a
clinical trial for purposes of registration of the product in the
PRC and Hong Kong. Distributor shall use best efforts to complete
this trial no later than December 31, 2006.
(e) By no later than March 31, 2006, Distributor shall have completed
a market study and forecast to determine the market potential for
the Product in the Territory(the "Market Study and Forecast").
Distributor shall share the study with COMPANY upon its
completion and the Parties shall within the ninety (90) days
thereafter negotiate in good faith to an agreed-upon price and
sales forecasts for the Product in the Territory. During such
negotiation, the Parties shall consider, inter alia, the demand
for comparable medical devices in the Territory as well as the
price and minimum purchase quantities of comparable medical
devices sold and purchased in the Territory. If the Parties
cannot agree on such prices and minimum purchase quantities
within such period, then the Parties shall submit the matter to
arbitration to determine such prices and minimum purchase
quantities in accordance with Section 2.2(d) of this Agreement
with instructions to the arbitrators to decide the matter within
ninety (90) days.
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(f) By no later than December 31, 2005, Distributor shall develop an
optimum manufacturing strategy for the Product in the Territory
and shall submit to COMPANY a proposal on how best to manufacture
the Product for sale in the Territory (the "Distributor
Manufacturing Proposal").
(g) The actions to be undertaken by Distributor pursuant to this
Section 2.3 shall be undertaken at its sole cost and expense.
2.3A. Regulatory Requirements/Regulatory Affairs.
(a) Distributor shall maintain a reporting system that will provide to
COMPANY, if reasonably requested by COMPANY, a list of the names and
addresses of each purchaser/end user of the Products, the number of
units of each Product so purchased during the period covered by the
report and such other information that the Company is legally required
to maintain or may otherwise reasonably request in order to allow
COMPANY to promptly undertake issues such as traceability to end
users, assistance in Product recall/vigilance and reporting of
incidents if necessary.
(b) COMPANY maintains records of specification and component changes
subject to change controls. All changes to specification and or
components shall be approved and documented in writing by COMPANY. All
changes include the approval date and date the change becomes
effective. COMPANY will notify Distributor of any deviations which
will remain permanently in the manufacture and/or configuration of
COMPANY's Products and any of its materials, components or
subassemblies, including final assembly and testing/inspection results
before any affected is shipped.
(c) Distributor agrees that COMPANY or COMPANY's designated consultants
may inspect its facilities from time to time. COMPANY or the Company's
designated consultants will have limited access to the facility. The
Company will notify the Distributor at least thirty (30) days in
advance of any proposed inspection. Both Parties will agree upon the
date of the inspection.
(d) Distributor agrees that COMPANY may conduct an annual audit of the
Distributor's, its affiliate's and its agent's Quality
Control/Assurance System, if and when such a Quality Control/Assurance
System is implemented, and the performance of acceptance procedures of
COMPANY's device. This will include a review of the inspection
performance.
(e) Distributor agrees that it will advise COMPANY of any inspection of
Distributor's facilities by local regulatory bodies promptly after
such inspection. Distributor will allow COMPANY to review the report
of the inspection as generated by a notified body. COMPANY will hold
such reports in strict confidence.
(f) COMPANY agrees that it will advise Distributor of any inspection by
the United States Food and Drug Administration (FDA) of either COMPANY
or COMPANY's contract manufacturers. COMPANY will at Distributor's
request, provide the distributor with a copy of the report of the
inspection as generated by the FDA. Such reports will be held in
confidence by Distributor.
(g) Distributor will be required to submit Medical Device Reports (MDR) to
COMPANY (1) within thirty (30) days of becoming aware of information
that reasonably suggests that the device may have caused or
contributed to a death or serious injury (2) within thirty (30) days
of becoming aware that the device has malfunctioned and that the
device would likely cause death or serious injury if the malfunction
were to occur (3) within five (5) days of becoming
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aware that a reportable MDR event or events from any information,
including any trend analysis, necessitates remedial action to prevent
an unreasonable risk of substantial harm to the public health.
(h) Distributor will also be responsible for submitting baseline reports
to COMPANY regarding marketing information about devices that have
been the subject of MDR's.
(i) Distributor agrees to advise COMPANY by fax within five (5) working
days of receipt all written and oral complaints related to any
Product, with the exception that complaints related to death, injury
or imminent health hazard which will be within two (2) calendar days
of receipt.
(j) Each Party hereby expressly acknowledges that the Products may be
subject to export controls of the countries in the Territory, and
agrees that the none of the Products will be transferred, directly or
indirectly, to any destination contrary to the requirements of the
laws of the applicable countries in the Territory as well as the terms
of any export license and the terms of the United States Export
Administration Regulations or other similar regulations of another
country in the Territory.
(k) Each Party hereby provides its assurance that it will not participate
in any transaction which may involve any commodity or technical data,
or direct product thereof, exported or to be exported from the United
States, or in any re-export thereof, or in any other transaction that
is subject to export controls of the United States, if a person denied
export privileges from the United States may obtain any benefit from
or have any interest in, directly or indirectly, these transactions.
2.3B Obligations of Distributor. Distributor shall use reasonably
commercial efforts to market, sell, and distribute the Products in the
Territory, and shall comply with all applicable laws, rules, and regulations in
the applicable countries in the Territory in carrying on its activities under
this Agreement.
(a) Training. Distributor shall send, at its own cost and expense, to one
of the clinical sites using the Products appropriate representatives
to be trained in the proper use of the Products. COMPANY will
coordinate with Distributor which clinical site or sites Distributor
shall attend for training and the scheduling for such training.
Initial and any subsequent necessary training of Distributor's
personnel may be arranged with COMPANY sending an experienced trainer
to China at the expense of Distributor.
(b) Sales Force. Distributor shall maintain, at its own cost and expense,
a sales force sufficient to cover the needs of all customers and
prospective customers for the Products in the Territory. Distributor
shall actively promote the Products in the Territory. All such sales
personnel shall be thoroughly familiar with the Products in general
and shall possess reasonably complete knowledge concerning the
Products and their specifications, features and benefits. Distributor
shall conduct any training of its sales personnel that may be
necessary to impart such knowledge, and shall extend complete
cooperation to COMPANY in any Product education programs that COMPANY
may establish. Distributor shall conduct all of its marketing and
sales activities with respect to the Products only through its own
employees, unless COMPANY shall otherwise consent.
(c) Inventory of Products; Storage of Products; Audit Rights. Distributor
shall maintain a sufficient inventory of the Products to ensure that
it is able to serve the needs of its customers for the Products in the
Territory on a complete and timely basis. Distributor shall permit
employees and/or representatives of COMPANY to examine its inventory
of the Products from time to time, in order to confirm that
Distributor is in compliance with the requirements of Section 5(c) of
this Agreement. To the extent that Distributor or its agent will store
and
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ship the Products, Distributor will comply with all storage and
shipping conditions as may be from time to time specified by COMPANY
to Distributor, including without limitation, the provisions as
required by product specification. Distributor also shall permit the
employees, agents and representatives of COMPANY to examine its books
and records from time to time upon reasonable notice, in order to
confirm that Distributor is in compliance with the terms and
conditions of this Agreement.
(c) Sales Efforts. Distributor shall use its best efforts to market and
sell the Products so as to make each of the Products market leaders in
the Territory, shall consistently encourage the purchase of the
Products by its customers to the best of its ability and shall at all
times represent the Products fairly in comparison with competitive
products. Distributor shall refrain from engaging in any trade
practices that may adversely affect the high image, credibility and
reputation of COMPANY and the Products, and shall refrain from making
any false, misleading or disparaging representations or statements
with regard thereto. Distributor shall make no representations with
respect to the specifications, features or benefits of the Products,
except such as may be approved in writing or published by COMPANY.
(d) Distributor's Distribution of Competing Devices. In the event that
Distributor is distributing any medical devices, including without
limitation cancer diagnostic systems, which could be reasonably
considered to be competing or comparable to the Products, COMPANY
shall have the right to terminate this Agreement if an inappropriate
conflict of interest is determined. Distributor shall immediately
advise COMPANY of any medical devices, including without limitation
cancer diagnostic systems, Distributor is distributing or will
distribute in the Territory which could be reasonably considered to be
competing or comparable to the Products.
2.4 Assignment. Distributor shall have the right to assign this contract to
one of its wholly-owned subsidiaries, or to an entity that Distributor creates
and is wholly-owned by Distributor, upon written notice to COMPANY, as
reasonably needed to facilitate its distribution efforts in the Territory;
provided that (1) any assignee authorized by Section 2.4 of this Agreement shall
covenant to abide by all of the terms, conditions and covenants of this
Agreement (2) Distributor shall continue to be fully obligated under the terms
and conditions of this Agreement, and (3) Distributor shall defend, indemnify,
and hold COMPANY, its officers and directors, shareholders, and each of its and
their successors and permitted assigns, harmless from and against any and all
liabilities, judgments, losses, actual damages, costs, and expenses (including
without limitation reasonable attorneys' and experts' fees) which any or all of
them may hereafter incur themselves or pay out to another by reason of such
assignment or the failure or actions of assignee in breach of the terms,
conditions and covenants of this Agreement.
2.5 Fees. Distributor shall pay COMPANY, at the time of the effective date
of this Agreement, the sum of fifty thousand dollars ($50,000 US). COMPANY shall
in turn provide Distributor with three (3) CE marked devices to facilitate an
operating device in Hong Kong and two (2) CE marked devices to be utilized in
clinical trials in Shanghai as per cost described in section 2.2(b)
2.6 Insurance. During the term of this Agreement, Distributor will maintain
commercial general liability insurance having commercially reasonable limits of
liability, pursuant to one or more insurance policies with reputable insurance
carriers.
3. Term and Termination.
3.1 Term. Subject to earlier termination as provided in Section 2.2(c),
the Agreement will have an initial term of ten (10) years (the
"Project Term"), at the end of which time the Project Term may be
extended for additional 1 year terms (all such renewal terms shall be
considered
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part of the "Project Term"), unless either Party notifies the other no
later than 60 days before the end of the Project Term that it does not
wish to extend the Project Term.
4. Representation and Warranties.
4.1 Representations and Warranties. The Parties hereby represent and
warrant as follows:
(a) Status. Distributor is a corporation validly existing and in good
standing under the laws of the State of Delaware, U.S.A.
Distributor has all necessary power to enter into this Agreement.
(b) Status. COMPANY is duly organized, validly existing and in good
standing under the laws of the State of Delaware, U.S.A. COMPANY
has all necessary powers to enter into this Agreement.
(c) Authorization, etc. The execution, delivery and performance by
the Parties of this Agreement has been authorized by all
necessary action on the part of such entity and its stockholders,
as the case may be, and does not and will not:
(i) violate the organizational documents of the Parties or any
applicable law, or
(ii) contravene, conflict with, or result in a default under any
order or judgment of any court or other governmental
authority or any agreement to which the Parties may be
bound.
(d) Enforceability. Its obligation and the obligations of the Parties
under this Agreement and any other agreement entered into by such
entity in connection with this Agreement or the Project are and
will be the legal, valid, and binding obligation of the Parties,
enforceable against such entity in accordance with its terms,
subject to applicable bankruptcy, reorganization, insolvency,
moratorium, or similar laws affecting creditors' rights generally
and subject as to enforceability, to equitable principle of
general application regardless of whether enforcement is sought
in a proceeding in equity or law.
(e) Litigation. There are no suits, proceedings, judgments, rulings
or orders by or before any governmental authority, court or
arbitrator or any pending or threatened action or proceeding
affecting the Parties before any governmental authority, court or
arbitrator that could reasonably be expected to materially and
adversely affect the financial condition of operations of the
Parties or the ability of the Parties to perform their respective
obligations under this Agreement or any other agreement entered
into by such entity in connection with this Agreement or the
Project, or which purports to affect the legality, validity or
enforceability of this Agreement or any other such agreement.
4.2 Exclusive Benefit of Representations and Warranties. The
representations of a Party set forth in this Agreement are intended
for the sole and exclusive benefit of the other Party and may not be
relied upon any third party.
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5. Confidential Information. For purposes of this Agreement "Confidential
Information" means information provided by a Party to this Agreement (the
"Disclosing Party") to any other Party (the "Restricted Party") in
connection with the transactions and relationships contemplated by the
Project or this Agreement, including but not limited to:
(a) any data or information that is competitively sensitive material,
and not generally known to the public, including, but not limited
to, (1) such materials relating to the Product, planning
information, marketing strategies, plans, finance operations,
sales estimates, business plans, and internal performances
results relating to the past, present or future business
activities of the Disclosing Party, (2) services and Product
provided to or obtained from the Disclosing Party, and (3) the
terms of related contracts with, and the identities of any other
identifying information regarding the customers, clients and
suppliers of the Disclosing Party;
(b) any scientific or technical information, design, process,
procedure, formula, or improvement that is commercially valuable
and secret in the sense that the Disclosing Party has spent a
significant amount of time and money to develop such Confidential
Information and its confidentiality affords the Disclosing Party
a competitive advantage over its competitors;
(c) all confidential or proprietary concepts, documentation, reports,
data (including magnetic tapes), specifications, web sites,
screen formats, computer software, source code, object code, flow
charts, databases, inventions, systems, system security features,
system enhancements, information, know-how, show-how and trade
secrets, whether or not patentable or copyrightable;
(d) all documents, inventions, substances, engineering and laboratory
notebooks, drawings, diagrams, specifications, bills of material,
equipment, prototypes and models, and any other tangible
manifestation of the foregoing;
(e) any other information that a Disclosing Party treats as
confidential information provided by an affiliate or other third
party; and
(f) any information derived from any of the foregoing that is treated
as confidential.
5A. Use of Confidential Information.
(a) Restricted Party shall:
(i) retain in confidence all Confidential Information in trust for the
benefit of Disclosing Party, and not for its own benefit or for the benefit of
others without the express written consent of Disclosing Party;
(ii) use Confidential Information obtained from Disclosing Party only
for the purpose of performing its obligations under this Agreement and for no
other purpose whatsoever; and
(iii) not disclose, directly or indirectly, to any person or third
party (other than permitted agents and employees under Section 5A(c)) any
Confidential Information obtained from Disclosing Party under this Agreement
unless:
(1) Restricted Party has obtained the approval in writing of
Disclosing Party;
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(2) Restricted Party is making the disclosure to a government
body and the disclosure is required to be made under the laws
applicable to Restricted Party or Disclosing Party or
(3) Restricted Party is making the disclosure strictly in
accordance with an order of a competent court of law.
(iv) not make use of Confidential Information except for the benefit
of Disclosing Party as solely determined by Disclosing Party; and
(v) not use the Confidential Information in any manner to the
competitive, economic or other detriment of Disclosing Party.
(b) Restricted Party shall take all reasonable precautions to preserve the
confidentiality of the Confidential Information including, without limitation,
standards for protection of proprietary and confidential information and
intellectual property that are commonly applied by other comparable companies in
the biotechnology industry as well as such precautions as Restricted Party
usually observes in order to protect its own Confidential Information. Without
limiting the foregoing, in the event that Restricted Party receives a request to
disclose all or any part of the Confidential Information under the terms of a
valid and effective subpoena or other order issued by a court having
jurisdiction or by a governmental body and intends to disclose any Confidential
Information under Section 5A(a)(iii)(2) or (3), then, unless precluded by laws
applicable to Restricted Party, Restricted Party shall (i) immediately provide
written notice of the existence, terms and circumstances surrounding such
request and Restricted Party's intent to disclose, so that Disclosing Party may
seek an appropriate protective order or other remedy and/or waive Restricted
Party's compliance with the provisions of this Agreement, to Disclosing Party,
(ii) exercise reasonable efforts to obtain an order or other reliable assurance
that confidential treatment will be accorded to such of the disclosed
Confidential Information which the Company so designates and (iii) wait the
maximum amount of time permitted by such government body or court of law before
making such disclosure.
(c) Restricted Party further agrees to exercise appropriate caution to
maintain the secrecy of the Confidential Information, including (i) limiting
disclosure and access to the Confidential Information only to its agents and
employees who require access to the Confidential Information for the purpose of
this Agreement, and who have signed a Declaration With Respect to Confidential
Information in the form attached as Exhibit A to this Agreement (copies of which
shall be made available to Disclosing Party upon request); and only for the
periods of their employment or other relationship with Restricted Party, and
(ii) storage of the Confidential Information in a secure location accessible
only to the individuals to whom access is permitted under subparagraph (i) of
Section 5A(c) of this Agreement.
(d) At the expiration of the term of this Agreement, including upon its
early termination, Restricted Party shall, at the discretion of Disclosing
Party, destroy or return to Disclosing Party all of the documents containing
Confidential Information that have been supplied to it during the course of this
Agreement. In no case may any copy of documents containing Confidential
Information be preserved by Restricted Party.
(e) Disclosing Party has developed or purchased, or will develop or
purchase, its Confidential Information at substantial expense in a market in
which they face intense competitive pressure, and Disclosing Party has kept and
will keep secret its Confidential Information. Disclosing Party will suffer
immediate and irreparable harm, loss and damage not adequately compensable by
monetary damages if Restricted Party violates any of the provisions of Section
5A of this Agreement.
(f) In case of the discovery of unauthorized disclosure or use of any
Confidential Information, Restricted Party shall promptly inform Disclosing
Party and immediately take all appropriate measures to prevent further
unauthorized disclosure or use and use its best efforts, including reasonable
legal means, to stop any further unauthorized use or disclosure of Confidential
Information and to secure the return thereof.
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(g) Restricted Party agrees not to reproduce or copy by any means
Confidential Information, except with the prior written consent of Disclosing
Party or for disclosure as permitted under this Agreement. All Confidential
Information, and any copies of extract thereof, shall be returned by Restricted
Party to Disclosing Party either at the end of review by Restricted Party or
upon demand by Disclosing Party.
(h) Restricted Party represents that it deals with confidential and
proprietary information in its business, and represents and agrees that, with
respect to the Confidential Information disclosed pursuant to this Agreement,
that it will implement and institute the procedure for storing and maintaining
the confidentiality of Confidential Information as set forth in Sections 5A(b)
and 5A (c) of this Agreement. Restricted Party shall not remove any proprietary
rights legend from materials disclosing Confidential Information and shall, upon
the Disclosing Party's reasonable request, add any proprietary rights legend to
materials disclosing or embodying Confidential Information. Any copies of the
Confidential Information that are made shall be marked "confidential" or
"proprietary" by Restricted Party.
(i) Restricted Party acknowledges that Confidential Information may still
be under development, or may be incomplete, and that such information may relate
to products that are under development or are planned for development. In
disclosing the Confidential Information, Disclosing Party makes no
representation or warranty, either express or implied, as to the adequacy,
accuracy, sufficiency or freedom of the Confidential Information from defect of
any kind, including freedom from patent or trademark infringement. Disclosing
Party accepts no responsibility for any expenses, losses or action undertaken or
not undertaken by Restricted Party as a result of Restricted Party's receipt or
use of Confidential Information.
(j) Restricted Party agrees to act in good faith so as not to harm the
business or personal reputation of a Disclosing Party or its affiliates, and
shall not defame, disparage or publicly criticize the services, business,
integrity or personal or professional reputation of Disclosing Party or its
affiliates.
(k) Other than as expressly stated herein, Disclosing Party grants no
license to Restricted Party under any copyrights, patents, trademarks, trade
secrets or other proprietary rights to use or reuse Confidential Information.
5B. Protection of Proprietary Technology.
(a) Use of Marks or Patents; Limitations with respect to Licensing, if any. To
the extent that Distributor or any of its permitted assigns under Section 2.4 of
this Agreement at any time is explicitly authorized in writing by the COMPANY to
use any means any trademarks, trade names, logos or designs of COMPANY,
including without limitation the names "BIOFIELD", "BIOFIELD(R)" and
"BIOFIELD(R) Breast Cancer Diagnostic System" (the "Marks") or any patents,
whether issued or pending in any jurisdiction, of COMPANY (the "Patents"):
(i) all rights resulting from Distributor's use of any ▇▇▇▇ or Patent shall
inure to the sole and exclusive benefit of COMPANY, its affiliates and/or their
respective licensors (and not Distributor), and Distributor's use of any ▇▇▇▇ or
Patent shall be in a form and manner satisfactory to the Company and in
compliance with any applicable country of origin labeling requirements;
(ii) such authorization shall be deemed a non-exclusive, non-transferable,
restricted "at-will" license to use the Marks or Patents solely in connection
with the performance of Distributor's duties as set forth in this Agreement;
(iii) Distributor acknowledges that the license of the Marks or Patents
shall be limited to COMPANY's rights to use the Marks or Patents and shall not
in any way be deemed to represent or warrant that any use of the Marks or
Patents shall not infringe or be alleged to infringe upon the rights of other
third parties; and
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(iv) all rights granted hereunder shall terminate immediately in the event
this Agreement is terminated.
(b) Reservation of Rights. At all times, irrespective of whether or not any
Marks or Patents are licensed to Distributor or its permitted assigns under
Section 2.4 of this Agreement, COMPANY retains all rights not expressly granted
by it under this Agreement. Distributor expressly disclaims any right, title or
interest (other than any license that COMPANY may grant to the Distributor at
COMPANY`s sole discretion) in the Marks or Patents or any derivative thereof. No
other rights of Distributor to use the Marks or Patents shall be implied other
than as set forth in this Agreement. Except as expressly set forth herein, no
entities affiliated with Distributor other than Distributor shall have any
rights to use the Marks or Patents and no rights to such Marks or Patents shall
be implied. Distributor shall not use the Marks or Patents in any manner
whatsoever anywhere in the world other than as expressly authorized by this
Agreement. Except as licensed hereunder, Distributor shall not use any Marks,
trademark (including any service ▇▇▇▇ or trade Marks) confusingly similar to
"BIOFIELD", "BIOFIELD(R)" and "BIOFIELD(R) Breast Cancer Diagnostic System."
(c) Ownership. Distributor shall not anywhere in the world challenge the
validity of the Marks or Patents, the Confidential Information, or COMPANY's
ownership of the Marks, Patents or COMPANY's Confidential Information, or the
enforceability of COMPANY's rights therein, or oppose any registration or
application for registration (made by or under the authorization of COMPANY or
any of its affiliates) of the Marks or Patents or COMPANY's intellectual
property rights with respect to its Confidential Information. All uses of the
Marks or Patents and Confidential Information by Distributor shall inure to the
benefit of COMPANY. In addition, Distributor shall not knowingly take or omit to
take, or authorize the taking or omission of, any action that could reasonably
be expected to dilute or adversely affect the Marks, COMPANY's Confidential
Information, or COMPANY's ownership thereof or the validity, enforceability,
registration or application for registration thereof, or any related goodwill.
Distributor shall do such further acts and things, and to execute and deliver
such additional conveyances, assignments, agreements and instruments, reasonably
required by COMPANY to assure and confirm COMPANY's ownership rights in the
Marks, Patents and COMPANY's Confidential Information and its rights and
remedies relating to the Marks, Patents and COMPANY's Confidential Information
under this Agreement. If requested by COMPANY, Distributor may cause to be
registered the relevant Patents, Marks, and other intellectual property of the
COMPANY with the applicable government intellectual property agencies in the
Territory in COMPANY'S sole name. Any devices or sensors associated with the
Products shall distinctly and visibly bear the name of COMPANY acknowledging the
COMPANY's exclusive ownership of all intellectual property rights associated
with the Products, which shall not be removed by Distributor, its affiliates,
agents or their respective assigns.
5. Press Release and Announcements. The Parties agree that no public release or
announcement concerning the transactions contemplated hereby shall be issued or
made by or on behalf of any Party without the prior consent of the other Party,
except that either Party may, after consultation with counsel, make
announcements that such Party reasonably may determine are necessary to comply
with applicable law. COMPANY acknowledges and agree that Distributor may be
required to announce the terms of this Agreement and make publicly available
this Agreement and that no breach shall be deemed to result there from.
Notwithstanding the foregoing, the Parties cooperate to prepare a joint press
release to be issued in connection with the execution of this Agreement. The
Parties further agree that each shall have the right to display the other logo
on their respective web sites.
6. Indemnification.
6.1 Indemnification. Each Party (the "Indemnifying Party") will defend,
indemnify, and hold the other Party, its officers and directors,
shareholders, and each of its and their successors and permitted
assigns (the "Indemnified Parties"), harmless from and against any and
all liabilities, judgments, losses, actual damages, costs, and
expenses (including without limitation reasonable attorneys' and
experts' fees) which any or all of them may hereafter incur themselves
or pay out to another by reason of any claim, suit or proceeding
brought by a
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third party, at law or in equity, that arises out of or relates to
material breach of any representation, warranty, covenant, obligation
or other provision of this Agreement by the Indemnifying Party, except
to the extent caused by the gross negligence or willful misconduct of
an Indemnified Party.
6.2 Exclusion of Consequential Damages. NOTWITHSTANDING ANYTHING TO THE
CONTRARY CONTAINED IN THIS AGREEMENT, NEITHER PARTY SHALL, UNDER ANY
CIRCUMSTANCES, BE LIABLE TO THE OTHER PARTY FOR LOST PROFITS,
CONSEQUENTIAL, INCIDENTAL, SPECIAL, PUNITIVE, OR INDIRECT DAMAGES
ARISING OUT OF OR RELATED TO THIS AGREEMENT OR THE TRANSACTIONS
CONTEMPLATED HEREUNDER, EVEN IF THE PARTY HAS BEEN APPRISED OF THE
LIKELIHOOD OF SUCH DAMAGES, EXCEPT FOR ANY BREACH OF ANY
REPRESENTATIONS, WARRANTIES OR COVENANTS SET FORTH IN SECTIONS 5, 5A
and 5B OF THIS AGREEMENT.
7. Miscellaneous.
7.1 Binding Effect. This Agreement shall be binding on and insure to the
benefit of the Parties and their respective successors and permitted
assigns.
7.2 Assignment. This Agreement, except for as set forth in Section 2.4,
shall not be assigned by either Party without the prior written
consent of the other Party, not be unreasonably delayed or withheld,
and any purported such assignment without such consent shall be void.
For purposes of this Section 8.2, a merger involving a Party shall be
deemed to result in an assignment of this Agreement to the surviving
entity in the merger, regardless of whether the Party is the surviving
entity or merging entity to such a merger.
7.3 Notices And Other Communications.
(a) Each notice, communication and delivery under this Agreement (1)
shall be made in writing signed by the Party making the same,
(ii) shall specify the Section of this Agreement pursuant to
which it is given, (iii) shall be given either in person or by
telecopier, effective upon such delivery or the confirmed
transmission and (iv) if not given in person, shall be sent to
the applicable Party at the address set forth below (or at such
other address as the applicable Party may furnish to the other
Party pursuant to this subsection) by international courier
delivery service, effective upon the second business day after
such notice is deposited, delivery charges pre-paid, with such
international courier delivery service. Each Party's notice
information is as follows:
DISTRIBUTOR: Bridgetech Holdings International, Inc.
▇▇▇ ▇. ▇▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attn: ▇▇▇▇▇▇ ▇. ▇▇▇▇ III
Phone: ▇▇▇ ▇▇▇-▇▇▇▇
Fax: ▇▇▇ ▇▇▇-▇▇▇▇
With a copy to:
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▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ & ▇▇▇▇▇▇▇ LLP
▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: ▇. ▇▇▇▇ ▇▇▇▇▇▇▇
Phone: ▇▇▇ ▇▇▇-▇▇▇▇
Fax: ▇▇▇ ▇▇▇-▇▇▇▇
COMPANY: Biofield Corp.
▇▇▇▇ ▇▇▇ ▇▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇ ▇▇▇
▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Attn: ▇▇. ▇▇▇▇▇ ▇. ▇▇▇▇, ▇▇.
Phone: ▇▇▇ ▇▇▇-▇▇▇▇
Fax: ▇▇▇ ▇▇▇-▇▇▇▇
E-mail: ▇▇▇▇▇▇▇@▇▇▇.▇▇▇
7.4 Severability. If any term or provision of this Agreement, or the
application thereof to any person or circumstance, shall to any extent
be contrary to any applicable law or regulation or otherwise invalid
or unenforceable, the remainder of this Agreement or the application
of such term or provision to persons or circumstances other than those
as to which it is contrary, invalid or unenforceable shall be affected
thereby and, to the extent consistent with the overall intent of this
Agreement taken as a whole, shall be enforced to the fullest extent
permitted by applicable law and regulation.
7.5 Governing Law. This Agreement and any Project Documents, and any
dispute relating to the Agreement or any Project Documents, will be
governed by the laws of Delaware except as specifically provided in
such documents, without regard to principles of conflict of laws. The
United Nations Convention on Contracts for the International Sale of
Goods shall not apply to this Agreement or any other document
contemplated under the Project.
7.6 Enforceability; Injunctive Relief. Distributor, on behalf of itself
and on behalf of any permitted assigns pursuant to Section 2.4, agrees
that the representations and warranties, covenants and agreements
contained in this Agreement are of the essence of this Agreement; that
such covenants are reasonable and necessary to protect and preserve
the interests and properties of COMPANY and their respective
businesses; that irreparable loss and damage will be suffered by
COMPANY and its affiliates should Distributor breach any such
covenants and agreements; that given the unique nature of COMPANY's
business, such loss and damage would be suffered by COMPANY,
regardless of where a breach of such covenants and agreements occurs;
that each of such covenants and agreements are separate, distinct and
severable not only from the other of such covenants and agreements but
also from the other and remaining provisions of this Agreement; that
the enforceability or breach of any such covenants or agreements shall
not affect the validity or enforceability of any other such covenants
or agreements or any other provision or provisions of this Agreement;
and that, in addition to other remedies available to it, COMPANY shall
be entitled to both temporary and permanent injunction, without the
posting of any bond or other security, and any other rights and
remedies it may have, at law or in equity, to prevent a breach or
contemplated breach by Distributor of any of such representations and
warranties, covenants or agreements. Notwithstanding anything to the
contrary, in the case of a breach of the provisions of Sections 5, 5A
and 5B hereof, the affected Party or Parties shall have the right to
seek the remedy of specific performance in any court of competent
jurisdiction, it being understood that such remedy shall be in
addition to and not in limitation of any other remedy of such affected
Party or Parties.
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7.7 Submission to Forum/Jurisdiction. Unless otherwise explicitly set
forth in this Agreement, the Parties explicitly and irrevocably
consent and submit to the personal jurisdiction of the United States
District Court for the Southern District of California (including any
mediation procedure before a United States Magistrate Judge).
7.8 Survival. All warranties, representations, obligations and covenants
of the Parties hereto shall survive the execution and delivery of this
Agreement and shall, notwithstanding the execution and delivery of
this Agreement, continue in full force and effect. The provisions of
Section 5, 5A and 5B of this Agreement shall forever survive the
expiration or termination of this Agreement.
7.9 Non-Waiver. Any failure on the part of a Party to enforce at any time
or for any period of time any of the provisions of this Agreement
shall not be deemed or construed to be a waiver of such provisions or
of any right of such Party thereafter to enforce each and every such
provision on any succeeding occasion or breach thereof. No waiver of
any provision of this Agreement or any remedy at law or equity will be
deemed a waiver of any other provisions of this Agreement or any other
remedy. Nor will any waiver be deemed a continuing waiver for future
occurrences. Any waiver must be in writing and signed by the Party
against whom the waiver is sought to be enforced.
7.10 Force Majeure. Except as otherwise explicitly stated in this
Agreement, any delays in performance by any Party under this Agreement
shall not be considered a breach of this Agreement if and to the
extent caused by occurrences beyond the reasonable control of the
Party affected, including but not limited to acts of God, embargoes,
governmental restrictions, fire, flood, explosion, earthquake,
hurricanes, storms, tornadoes, riots, wars, civil disorder, failure of
public utilities or common carriers, labor disturbances, rebellion or
Sabotage, nationalization, or eminent domain. The Party suffering such
occurrence shall notify the other Party as soon as practicable of such
inability and of the period for which such inability is expected to
continue, and any time for performance hereunder shall be extended by
the actual time of delay caused by the occurrence; provided, that the
Party suffering such occurrence uses commercially reasonable efforts
to mitigate any damages incurred by the other Party. Upon cessation of
the cause or causes for any such failure or delay, performance of this
Agreement shall be resumed.
7.11 Cumulative Rights. Except as herein expressly provided, the rights,
powers and remedies hereunder shall be in addition to, and not in
limitation of, all rights, powers and remedies provided at applicable
law or in equity, or under any other agreement between the Parties,
and all of such rights, powers and remedies shall be cumulative, and
may be exercised successively or cumulatively.
7.12 Counterparts. This Agreement may be executed in any one or more
counterparts, each of which shall constitute an original, no other
counterpart needing to be produced, and all of which, when taken
together, shall constitute but one and the same instrument. If this
Agreement is signed and transmitted by facsimile machine, the
signature of any party on such Agreement transmitted by facsimile
machine shall be considered, and have the same force and effect, as an
original document.
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IN WITNESS WHEREOF, the Parties have executed this Agreement, or caused it to be
executed by their duly authorized officers or agents all as of the day and year
first above written.
BRIDGETECH HOLDINGS INTERNATIONAL, INC.
By: /s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇ III
--------------------------------------
Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇ III
Title: EVP &CFO
BIOFIELD CORP.
By: /s/ ▇▇▇▇▇ ▇. ▇▇▇▇, ▇▇.
---------------------------------------
Name: ▇▇▇▇▇ ▇. ▇▇▇▇, ▇▇., M.D., Ph.D.
Title: Chairman and CEO
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Exhibit A
---------
DECLARATION WITH RESPECT TO
RECEIPT OF CONFIDENTIAL INFORMATION
-----------------------------------
_________________________________, declares as follows:
1) I acknowledge that I am about to receive information that has been
designated "confidential" by the party producing such information.
2) I have been provided with a copy of the Strategic Partnership Agreement
between BRIDGETECH HOLDINGS INTERNATIONAL, INC., a Delaware corporation
("Bridgetech") and BIOFIELD CORPORATION, a Delaware corporation ("COMPANY")
dated July 14, 2005 (the "Agreement"). I have read the Agreement and I
understand its terms. I agree that, with respect to all Confidential Information
(as such term is defined in the Agreement) that is disclosed to me, I am bound
by all of the terms of the Agreement as if I were the Receiving Party (as such
term is defined in the Agreement).
3) I agree that, upon request, I will return all Confidential Information
and all documents and notes relating thereto in my possession, and all copies
thereof, to the Disclosing Party (as such term is defined in the Agreement)
within five (5) days of such request.
4) For the purposes of enforcement of the Agreement and this Declaration, I
(a) submit to the jurisdiction of the courts and Federal District Courts
situated in the State of Delaware, (b) agree that this Declaration shall be
governed by, and construed in accordance with, the laws of the State of Delaware
without reference to principles of conflict of laws, and (c) waive any and all
objections to personal jurisdiction or venue.
5) I acknowledge that this Declaration is being executed by any to benefit
both Bridgetech and COMPANY.
I DECLARE UNDER PENALTY OF PERJURY THAT THE FOREGOING IS TRUE AND CORRECT.
EXECUTED IN ______________________ ON
----------------------------------
Name:
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