EXHIBIT 10.20
INTELLECTUAL PROPERTY RIGHTS
LICENSE AGREEMENT
between
SURGX CORPORATION
(LICENSOR)
and
▇▇▇▇▇▇-▇▇▇▇▇▇ COMPANY
(LICENSEE)
Dated July_, 1996
INTELLECTUAL PROPERTY RIGHTS LICENSE AGREEMENT
THIS AGREEMENT, is made on July ~ 1996, between SurgX
Corporation, a Delaware corporation having its principal office at ▇▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ (hereinafter "Licensor") and ▇▇▇▇▇▇-▇▇▇▇▇▇
Company, a Delaware corporation having a principal office at ▇▇▇ ▇▇▇ ▇▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ (hereinafter "Licensee").
WHEREAS, Licensor has been engaged in the development of
products, with respect to which it is possessed of proprietary rights and
engineering production knowledge essential to or helpful in the manufacture of
the Licensed Products as defined herein, and owns or has the right to grant
licenses with respect to certain inventions, copyrights, and other industrial
and intellectual property, technical and production data, and other secret and
confidential information relating to the manufacture of the Licensed Products;
and
WHEREAS, Licensee desires to obtain from Licensor certain
patent rights, technical assistance, technical and production know-how, and
services of technical representatives, including drawings, designs, and
specifications, formulae, data, information and engineering assistance relating
to Licensed Products, to the extent the same is possessed by Licensor, and
Licensor has the right to grant the same, to assist Licensee in manufacturing
and selling the Licensed Products as hereinafter set forth; and
WHEREAS, Licensor is willing to provide Licensee with the
technical assistance, technical and production know-how, and services of
technical representatives, in connection with the manufacture and sale of
Licensed Products hereunder, to the extent and upon the terms and conditions
hereinafter set forth.
NOW, THEREFORE, in consideration of the premises and the
mutual covenants hereinafter contained, Licensor and Licensee covenant and agree
as follows:
1. DEFINED TERMS.
1.1 "Affiliate" means any person controlling, controlled by
(either directly or indirectly) or under common control with Licensee or
Licensor as applicable.
1.2 "Agreement" means this Intellectual Property Rights
License Agreement between Licensee and Licensor.
1.3 "Confidential Information" has the meaning set forth in
Section 12.1.
1.4 "Disclosing Party" shall mean a Party that discloses
Confidential Information to the other Party.
1
1.5 "Gross Profit" means under United States generally
accepted accounting principles: (i) the aggregate sum of revenue recognized by
Licensee, its Affiliates and any sublicensee from sales or other dispositions of
Licensed Products to unaffiliated third parties net of freight out, returns and
credits allowed and taken ("Net Sales"); (ii) minus Licensee's cost of sales at
standard costs including direct and indirect labor and associated fringe
benefits, scrap, perishable tooling, supplies and maintenance on machinery and
equipment (only costs associated with the manufacture of Licensed Products will
be included in standard costs); (iii) plus or minus, as applicable, operating
variances from standard costs of sales; (iv) minus semi-variable costs equal to
5~o of Net Sales for selling commissions and distribution costs; (v) minus
amortization associated with incremental machinery and equipment used in the
manufacture of the Licensed Products (using a 10 year useful life); and (vi)
minus amortization associated with development costs incurred by Licensor and
reimbursed by Licensee as described in Section 3.3 hereof using a 5-year
amortization period.
1.6 "Improvements" shall mean those supplements, changes,
revisions, updates, advancements, corrections, and modifications to the
Technical Information or Licensed Intellectual Property Rights including
manufacturing process improvements made during the term of this Agreement which
are necessary or useful for the manufacture, use or sale of Licensed Products.
1.7 "Licensee Components" means the materials, components and
processes of Licensee which are not covered by the Licensed Intellectual
Property Rights and which, in combination with the Liquid Polymer Material, form
the Licensed Products.
1.8 "Licensed Intellectual Property Rights" means Licensor's
interest in any patents, patent applications, inventions (including the
inventions and patent applications listed on Attachment 1.5), the "Surging"
trademark and trade name, Technical Information and copyrights owned,
controlled, applied for or obtained by Licensor at any time before or during the
term of this Agreement to the extent such rights are necessary or essential for
the manufacture, use and sale of the Licensed Products. Wherever used in this
Agreement, Licensed Intellectual Property Rights includes any such rights
relating to Improvements of Licensor.
1.9 "Licensed Products" means discrete components and
connector products described on Attachment 1.6 which utilize the Licensed
Intellectual Property Rights and incorporate the Liquid Polymer Material.
1.10 "Liquid Polymer Material" means a polymeric provided in
a solvated liquid form that can be used to provide electrical overstress (EOS)
or electrostatic discharge (ESD) protection for integrated circuits (IC's). The
Liquid Polymer material can be applied between signal lines and the ground plane
of an electrical board assembly, a connector and other applications where it can
be positioned between signal lines and ground. The Liquid Polymer material has a
high impedance, and low leakage state during normal circuit operation. During an
EOS or an ESD event, the Liquid Polymer material has a low impedance state that
shunts the offending charge to the ground plane. The capacitance of the devices
using Liquid Polymer Material is typically less than 1 picofarad. The mechanical
flexibility and the semiconducting characteristics of the Liquid Polymer
material allow for a wide variety of packaging concepts, including arrays in
which a common ground is used with multiple signal lines. Specifically, the
Liquid Polymer material is covered by the patent applications listed on
Attachment 1.5. The Liquid Polymer material shall specifically exclude other
SurgX products, such as, without limitation, the family of products identified
by Licensor as SurgTape, SurgX Epoxy Packages, or custom SurgX applications such
as a layer in a panted circuit board and novel packaging, including hybrid
designs and multichip modules.
1.11 "Minimum Annual Royalties" has the meaning set forth in
Section 5.2.
1.12 "Parties" shall mean ▇▇▇▇▇▇-▇▇▇▇▇▇ Company and SurgX
Corporation.
1.13 "Receiving Party" has the meaning set forth in Section
12.2.
1.14 "Royalty Year" means a period of 12 months used to
measure the royalties payable to Licensor. The "First Royalty Year" is the 12
month period which commences on the first day of the month in which the Licensee
makes its initial sale of the Licensed Products, the "Second Royalty Year" is
the 12 month period which immediately follows the "First Royalty Year", etc.
1.15 "Technical Assistance" means providing the appropriate
Licensor personnel to assist personnel of Licensee in becoming trained in the
use of Technical Information to be delivered or provided hereunder to the extent
such Technical Information is necessary or essential for the manufacture, use or
sale of Licensed Products and Improvements thereto.
1.16 "Technical Information" means trade secrets, know-how,
drawings, designs, specifications and industrial, commercial and scientific
information controlled by Licensor and disclosed to Licensee under this
Agreement. Whenever used in this Agreement, Technical Information includes any
information relating to Improvements of Licensor.
1.17 "Territory" means worldwide.
2. GRANT OF LICENSE.
2.1 Licensor grants to Licensee a license, within the
Territory, to use (i) the Licensed Intellectual Property Rights; and (ii) the
Technical Information solely to manufacture, use, and sell Licensed Products;
provided, however, that, except as provided in Section 11 hereof, Licensee
shall have no right to manufacture the Liquid Polymer Material.
2.2 Subject to Section 5.2 hereof, the license granted to
Licensee under the terms of this Agreement is an exclusive license with respect
to the manufacture, use and sale of Licensed Products for a period of 10 years
commencing on the first day of the month in which Licensee makes its initial
sale of the Licensed Products, but in no event shall the period of exclusivity
extend beyond a date which is 12 years after the date of this Agreement.
Thereafter the license granted to Licensee hereunder shall continue on a
nonexclusive basis. Notwithstanding the foregoing, Licensee will permit Licensor
to grant a nonexclusive license to Iriso Electronics Company, Ltd., a Japanese
corporation ("Iriso") allowing Iriso to manufacture, use and sell in Japan
products incorporating the Licensed Intellectual Property Rights and to utilize
the Technical Information, provided that Iriso shall have no right to sell any
such products (a) outside of Japan or (b) to a distributor that would sell any
such products outside of Japan. However, Licensor may grant Iriso the right to
sell any such products to an original equipment manufacturer or to an added
value reseller in Japan that may incorporate any such products into goods that
are sold outside of Japan.
2.3 Licensee is not authorized to grant a sublicense to any
third party without Licensor's prior written consent; provided, however, that
Licensee may grant a sublicense to any of its Affiliates without prior written
consent. No Affiliate or sublicensee may be granted a sublicense pursuant to the
terms of this Agreement unless it shall first agree in writing to be bound by
all of the terms of this Agreement. The revenues and costs of any Affiliate or
sublicensee, directly related to any sublicense granted hereunder and falling
within the definition of Gross Profit, shall be aggregated with the revenues and
costs of Licensee for the purpose of determining the royalties payable to
Licensor pursuant to Section 5.1 hereof.
3. DEVELOPMENT AND COMMERCIALIZATION OF THE LICENSED PRODUCTS AND PRODUCT
MODIFICATIONS.
3.1 In consideration for granting the license to Licensee
hereunder and the development of the Licensed Products and product modifications
and enhancements as described in this Section 3, Licensee has previously paid
Licensor $100,000. In addition, Licensee shall pay Licensor an additional
$650,000 by check delivered by courier next day delivery contemporaneously with
the execution and delivery of this Agreement by both Parties.
3.2 Upon execution of the Agreement both Parties will use
their good faith reasonable efforts to develop the Licensed Products and bring
them to commercialization as soon as feasible. In connection therewith, Licensor
will provide Licensee with the following:
3.2.1 During the term of this Agreement, Training,
Technical Information and Technical Assistance required to allow Licensee to
manufacture the Licensed Products in its facilities;
3.2.2 As soon as reasonably possible, a final report
documenting all processing requirements and procedures necessary for Licensee to
manufacture the Licensed Products; and
3.2.3 As soon as reasonably possible, the technology
necessary to improve the Licensed Products for broader product application as
follows:
(a) Trigger voltage = 200 V.
(b) Clamping voltage = 25 V.
- 3.3 To the extent that Licensor specifically undertakes any Licensed Product
modifications or enhancements at Licensee's written request (other than-the
product modifications and enhancements described in Section 3.2.3 above which
will be undertaken by Licensor at its sole expense), Licensee shall reimburse
Licensor for its development costs as described below in conducting such
modifications or enhancements, including any additional capital equipment that
Licensee requires to perform such modifications and enhancements. The
development costs incurred by Licensor to be reimbursed by Licensee shall
consist of direct and indirect labor and associated fringe benefits of
Licensor's employees and independent contractors as allocated to the project,
scrap, perishable tooling, supplies, maintenance on machinery and equipment,
capital equipment costs, material costs and travel costs. The development costs
incurred by Licensor will be amortized over a period of 5 years and capital
equipment cost incurred by Licensee will be amortized over a period of 10 years
and the annual amortization will be included in the cost structure of the
Licensed Products for the purpose of determining annual royalties based on Gross
Profits (or if annual royalties are based on net sales, the royalties based on
net sales will be reduced by an equivalent amount to account for the annual
amortization).
3.4 All inventions or other intellectual property conceived or
reduced to practice jointly by the employees or independent contractors of the
Parties, as a result of this collaboration and during the term of this
Agreement, shall be jointly owned by the Parties and shall be included in the
license without charge to Licensee. Licensee shall not grant a sublicense in
such jointly owned inventions or intellectual property without the prior written
consent of Licensor.
3.5 Licensee shall utilize the SurgX trade name or trademark
in connection with the sale and promotion of the Licensed Products. Licensee may
also utilize its trade names or trademarks in conjunction with the SurgX trade
name or trademark in connection with the sale and promotion of the Licensed
Products. Licensor and Licensee shall enter into a Trademark License Agreement
in the form attached hereto as Attachment 3.5.
4. DISCLOSURE OF TECHNICAL INFORMATION.
4.1 Licensor shall disclose and furnish to Licensee all
Technical Information necessary or essential for the incorporation and use of
Liquid Polymer Material in the manufacture, use and sale of the Licensed
Products. Disclosure of Technical Information, to the extent such Technical
Information is in documentary or fixed form, shall be by delivery of two copies
of the most recent versions thereof. Delivery of Technical Information shall be
completed in compliance with the schedule of Attachment 4.1.
4.2 To the extent that Technical Information is not available
in documentary or fixed form, disclosure shall be made by Licensor, at its
expense, providing Technical Assistance to Licensee, including training and
consultation normally sufficient to demonstrate the practical use of the
Technical Information, and to communicate information applicable thereto in such
detail as to reasonably permit Licensee to understand and make full use thereof
in the establishment and operation of a production capability for Licensed
Products, and to exercise the rights and licenses granted herein. Such Technical
Assistance will be performed at the request of Licensee, consistent with the
Technical Information delivery schedule of Attachment 4.1, by qualified Licensor
technical personnel, at Licensee's manufacturing plants and locations. During
such visits, Licensor personnel shall observe such rules and regulations as are
applicable to employees of Licensee, and Licensor shall indemnify Licensee from
any liability which might be asserted or claimed against Licensee, arising out
of said visits by Licensor's personnel, including personal injury to or property
damage caused by such personnel. Licensee will provide, at no cost to Licensor,
reasonable facilities for such training and Technical Assistance, including
access to office space, secretarial support and local phone use for Licensor
personnel engaged in such training and Technical Assistance. Notwithstanding
Section 2.3 hereof, Licensee may not sublicense the rights contained in this
Section 4.2 without the specific prior written approval of Licensor.
4.3 By arrangement with Licensor, Licensee may, at its
expense, send qualified personnel to Licensor's establishment for training for
the purpose of enabling Licensor to demonstrate and Licensee's employees to
observe, the manufacturing and engineering operations and the application and
use of Technical Information pertaining to the Licensed Products. The identity
and number of any such personnel, and the date and duration of each such visit
shall be such as Licensor and Licensee mutually agree. During such visits,
Licensee's personnel shall observe such rules and regulations as are applicable
to employees of Licensor, and Licensee shall indemnify Licensor from any
liability which might be asserted or claimed against Licensor arising out of
said visits by Licensee's personnel, including personal injury to or property
damage caused by such personnel. Licensor will provide, at no cost to Licensee,
reasonable facilities for such training, including access to office space,
secretarial support and local phone use for Licensee's personnel engaged in such
training.
4.4 After delivery of the Technical Information pursuant to
Attachment 4.1, Licensee's personnel may direct correspondence or telephone
inquiries to Licensor's
personnel requesting reasonable amounts of Technical Assistance and oral
explanation concerning Licensor's method of manufacturing, Technical Information
or operation of the Licensed Products, and Licensor agrees to promptly respond
to such inquiries and to supply such assistance to the extent it is in the
possession of, or known to, Licensor, and at the place and times upon which the
Parties may mutually agree.
4.5 Licensor agrees to promptly notify Licensee of any defect
or error discovered in the Technical Information, and of any corrective action,
revisions or customer notice made by Licensor with regard thereto.
4.6 During the term of this Agreement, Licensor shall promptly
disclose and deliver to Licensee any Improvements conceived or reduced to
practice in whole or in part by Licensor. Licensor also agrees to promptly
deliver sufficient information to allow Licensee to incorporate such
Improvements into the Licensed Products. During the term of this Agreement,
Licensee shall promptly deliver to Licensor any Improvements conceived or
reduced to practice in whole or in part by Licensee. Licensee also agrees to
promptly deliver sufficient information to allow Licensor to incorporate such
Improvements into the Licensed Products.
5. ROYALTIES.
5.1 Commencing with the First Royalty Year, Licensee shall pay
to Licensor an annual royalty for the license granted herein equal to 25% of the
Gross Profit recognized by Licensee, its Affiliates and any sublicensee on the
sale of Licensed Products during the relevant Royalty Year. The Parties
acknowledge that it is their desire to ultimately convert this royalty to a
royalty based upon net sales of the Licensed Products (instead of Gross Profit)
but they do not have sufficient experience to currently calculate the
appropriate royalty rate. Therefore, the Parties agree that after two years from
the date of this Agreement, they shall discuss in good faith a royalty rate
based on net sales which provides the same economic allocation as that intended
by the royalty based on Gross Profit. Unless both Parties execute a written
amendment to this Agreement setting forth the terms of the royalty based on net
sales, any promises, agreements or understandings made by the Parties during
their discussions and negotiations will not be binding on the Parties. If the
Parties do not execute a written amendment to this Agreement setting forth the
terms of the royalty based on net sales, then Licensee shall continue to pay
Licensor an annual royalty based on Gross Profit as described above.
5.2 In order to maintain the exclusive nature of the license
for the 10 year exclusivity period described in Section 2.2, Licensee shall
insure that the annual royalties payable to Licensor are no less than the
following amounts ("Minimum Annual Royalties"):
Royalty Year Minimum Annual Royalties
1st $0
2nd $200,000
3rd $500,000
4th-5th $1,000,000 (each Royalty Year)
6th-lOth $2,500,000 (each Royalty Year)
If in any Royalty Year, the royalties based on Gross Profit (or net sales, if
applicable) are less than the Minimum Annual Royalties, Licensee, at its option,
has the right to pay up the difference to a total equalling the respective
year's Minimum Annual Royalty. If Licensee elects not to pay up the difference
to a total equalling the respective year's Minimum Annual Royalty, then the
license granted hereunder shall become a non-exclusive license for the remaining
term of this Agreement subject to the rights of the Licensor to terminate this
Agreement as set forth in Section 14.4. In the event the license reverts to a
nonexclusive license because Licensee elects not to pay the Minimum Annual
Royalties, the Licensee shall no longer be liable for payment of Minimum Annual
Royalties but shall continue to be liable for royalties based on the Gross
Profit (or net sales, if applicable) of Licensed Products sold.
5.3 As a matter of convenience, to protect Licensor's Licensed
Intellectual Property Rights and as an acknowledgment that Licensee is not
currently in the business of producing any resettable electrostatic discharge
protection products or products incorporating any resettable electrostatic
discharge protection products, Licensee agrees that the royalty under this
Section 5 shall apply to all resettable electrostatic discharge protection
products which are covered by (a) the Licensed Intellectual Property Rights or
(b) Improvements of Licensee.
5.4 Subject to Section 5.3, nothing in this Agreement shall be
deemed to prohibit Licensee from conceiving, reducing to practice, developing,
making, using, marketing or otherwise distributing or promoting products
competitive with the Licensed Products produced hereunder, provided that
Licensee does not breach any provision of Section 12 or disparage the Licensed
Products produced hereunder in doing so.
6. PAYMENTS.
6.1 Royalties (including Minimum Annual Royalties) are due and
payable for each quarter of each Royalty Year within 45 days after each quarter
of each such Royalty Year.
6.2 All payments payable by Licensee to Licensor shall be paid
in U.S. dollars to Licensor at the address set out in Section 19.
7. RECORDS. REPORTS AND INSPECTION.
7.1 Licensee shall at all times keep complete and proper
records of all Licensed Products manufactured, used or sold by Licensee, its
Affiliates and any sublicensee.
Sales or dispositions shall be considered as made on the date of the invoice or
shipment, whichever occurs first.
7.2 Within 45 days after each quarter of each Royalty Year
during the term of this Agreement, Licensee shall send to Licensor a full
statement in writing identifying separately the total number of pieces in each
product category of Licensed Products sold by Licensee, its Affiliates and any
sublicensee during the preceding quarter of such Royalty Year, together with a
computation of royalties due Licensor.
7.3 Licensor shall have the right, upon giving at least 30
days' advance notice, at any time during normal business hours, to audit the
records of Licensee, any sublicensee and any Affiliate to which Licensee has
granted a sublicense by having an independent auditor examine the books and
records of Licensee, any sublicensee and any Affiliate to which Licensee has
granted a sublicense relating to the computation of royalties on the Licensed
Products. Licensee, any sublicensee and any Affiliate to which Licensee has
granted a sublicense shall keep the records available for inspection for three
years after expiration of the Royalty Year in which they are made and Licensor's
right to audit the records of Licensee, any sublicensee and any Affiliate to
which Licensee has granted a sublicense shall not extend beyond such three year
period. Licensor shall, and shall cause its independent auditor to, maintain the
confidentiality of all information, books and records examined during such
audit. Licensor will bear the expense of any such audit unless the audit shows
an underpayment of more than 5% for the applicable period, in which case
Licensee shall bear the expense of the audit.
8. WARRANTY.
8.1 Licensor warrants that it has the right to grant the
rights licensed hereunder and there are no outstanding assignments, grants,
licenses, encumbrances or obligations inconsistent with this Agreement.
8.2 To the knowledge of Licensor and its Affiliates, Licensor
warrants that the Licensed Intellectual Property Rights do not interfere with,
infringe upon, misappropriate or otherwise conflict with any intellectual
property rights of third parties and Licensor and its Affiliates have never
received any charge, complaint, claim or notice alleging any such interference,
infringement, misappropriation or violation. To the knowledge of Licensor and
its Affiliates, no third party has interfered with, infringed upon,
misappropriated or otherwise come into conflict with any of the Licensed
Intellectual Property Rights.
9 INDEMNIFICATION.
9.1 Licensor agrees to indemnify Licensee, its agents,
employees, officers, directors and representatives (the "Licensee Group")
against any and all losses and expenses arising from any claims, demands,
actions, suits, or prosecution (collectively, a "Claim") that may be initiated
against the Licensee Group by an unaffiliated third party relating to
infringement claims (specifically including claims that may arise from the
patents described in Attachment 9.1 hereof) which are the result of the Liquid
Polymer Material or the incorporation or combination of the Liquid Polymer
Material with Licensee Components in the Licensed Products manufactured, used or
sold by Licensee in the Territory pursuant to the terms of this Agreement.
Licensor will have no such obligation (i) unless it is promptly notified by
Licensee of any Claim or threat of a Claim provided, however, that delay or
failure to so notify shall not relieve Licensor of its indemnity obligations
unless and to the extent Licensor is thereby damaged, (ii) unless upon
Licensor's request and expense, Licensee cooperates reasonably in any such
Claim, (iii) to the extent the Claim involves specifications provided by
Licensee or any change or addition to or modification of such Licensed
Intellectual Property Rights or any use or application thereof different from
the commercial uses and applications of Licensor as of the date of this
Agreement or (iv) for any settlement Licensor does not approve in advance in
writing. Licensee, at its sole cost and expense, may elect to join Licensor to
defend such Claim so long as Licensee is an exclusive licensee hereunder. If any
resolution of such a Claim results in the payment of a royalty by Licensee to a
third party as necessary to make, use, or sell Licensed Products, such royalty
shall be allocated to Gross Profit to the extent such royalty accrues on the
manufacture, use or sale of the Licensed Products (or if royalties are based on
net sales rather than Gross Profit, 25% of such third party royalties shall be
deducted from and credited against any royalties otherwise due to Licensor under
this Agreement).
9.2 Licensee agrees to indemnify Licensor, its agents,
employees, officers, directors and representatives (the "Licensor Group")
against any and all losses and expenses arising from any claims, demands,
actions, suits or prosecution (collectively, a "Claim") that may be initiated
against the Licensor Group by an unaffiliated third party relating to
infringement claims which are the result of the use or sale of Licensee
Components which are incorporated in the Licensed Products manufactured, used or
sold by Licensee in the Territory pursuant to the terms of this Agreement.
Licensee will have no such obligation (i) unless it is promptly notified by
Licensor of any Claim or threat of a Claim provided, however, that delay or
failure to so notify shall not relieve Licensee of its indemnity obligations
unless and to the extent Licensee is thereby damaged, (ii) unless upon
Licensee's request and expense Licensor cooperates reasonably in any such Claim
and (iii) for any settlement Licensee does not approve in advance in writing.
Licensor, at its sole cost and expense, may elect to join Licensee to defend
such Claim. If any resolution of such a Claim results in the payment of a
royalty by Licensor to a third party as necessary to make, use or sell Licensed
Products (other than the patent rights specified in Attachment 1.5 to the extent
such patent rights are incorporated in the Licensed Products), such royalty
shall be allocated to Gross Profit to the extent such royalty accrues on the
manufacture, use or sale of the Licensed Products (or if royalties are based on
net sales rather than Gross Profit, 25% of such third party royalties shall be
deducted from and credited against any royalties otherwise due to Licensor under
this Agreement).
10. IMPROVEMENTS.
10.1 Licensor agrees to disclose to Licensee any Improvements
made by Licensor relating to the Licensed Intellectual Property Rights
developed, conceived or reduced to practice by Licensor during the term of this
Agreement and to grant Licensee the right to use the Improvements in the
manufacture, use and sale of the Licensed Products at no additional cost under
the same terms and conditions of this Agreement for the term of this Agreement.
10.2 Licensee agrees to disclose to Licensor any Improvements
made by Licensee, its Affiliates or any sublicensee relating to the Licensed
Intellectual Property Rights developed, conceived or reduced to practice by
Licensee during the term of this Agreement and to grant Licensor a worldwide,
royalty-free license to any such Improvements for the term of this Agreement. To
the extent that any such Improvement as made by Licensee can only be used or
sold with reference to the Licensed Products or such Improvement constitutes an
enhancement or improvement to the Liquid Polymer Material, Licensor shall have
the full right to sublicense such Improvement. Conversely, to the extent any
such Improvement has uses both with reference to the Licensed Products and other
products of Licensee, Licensor shall have no right to sublicense such Licensee
Improvement without the prior written consent of Licensee.
11. MANUFACTURE AND SUPPLY OF LIQUID POLYMER MATERIAL.
11.1 Pursuant to the terms of a Supply Agreement to be
negotiated and entered into by the Parties, Licensor shall manufacture, or have
manufactured for it, and shall sell to Licensee all of Licensee's forecasted
requirements for the Liquid Polymer Material at a price equal to Licensor's cost
for such material as defined on Attachment 11.1. In the event the Parties are
unable in good faith to negotiate and enter into a Supply Agreement, the terms
and conditions of the supply arrangement will be governed by this Section 11. At
least four months prior to each delivery date, Licensee shall deliver a forecast
to Licensor of Licensee's quantity requirements for the Liquid Polymer Material.
Licensee shall act in a commercially reasonable manner to schedule orders to
avoid creating production capacity problems for Licensor. The Liquid Polymer
Material delivered to Licensee shall be F.O.B. Licensee's manufacturing facility
in the Continental United States. Licensor shall use reasonable commercial
efforts to deliver the Liquid Polymer Material by the applicable delivery date.
All customs, duties, costs, taxes, insurance premiums and other expenses related
to transportation and delivery shall be at Licensee's expense. Licensor agrees
to deliver Liquid Polymer Material to Licensee in conformity with Licensee's
forecast, free of material and workmanship defects and meeting the Parties'
mutually agreed upon quality control requirements.
11.2 Licensee shall have the right, upon giving at least thirty (30) days'
advance notice, at any time during normal business hours, to audit Licensor's
records by having an independent auditor examine the books and records of
Licensor relating to the cost of the Liquid Polymer Material. Licensor shall
keep the records available for inspection for three years after each date of
delivery of the Liquid Polymer Material and Licensee's right to audit Licensor's
records shall not extend beyond such three year period. Licensee shall, and
shall cause its independent auditor to, maintain the confidentiality of all
information, books and records examined during such audit. Licensee shall bear
the expense of any such audit unless the audit shows an overpayment of more than
5% for the applicable period, in which case Licensor shall bear the cost of the
audit.
11.3 Licensee shall have the right to self-manufacture the
Liquid Polymer Material i(pound) (i) Licensor fails to meet its obligations
under the Supply Agreement, or under this Section 11 if the Parties have not
entered into a Supply-Agreement, with regard to delivering Licensee's forecasted
requirements for the Liquid Polymer Material under the terms and conditions of
the Supply Agreement, or under this Section 11 if the Parties have not entered
into a Supply Agreement (unless such failure is a result of a breach or
anticipatory breach of this Agreement by Licensee), and such failure continues
for a period of 60 days after written notice thereof to Licensor, or (ii)
Licensor becomes insolvent, or a case or proceeding under bankruptcy, insolvency
or similar law is commenced by or against Licensor and is not dismissed within
45 days or Licensor makes an general assignment for the benefit of creditors. If
Licensee has the right to self-manufacture the Liquid Polymer Material pursuant
to Section 11.3(i) or (ii) hereof, Licensee shall exercise its right to
self-manufacture the Liquid Polymer Material by giving written notice thereof to
Licensor and immediately upon receipt of such notice Licensor shall provide
Licensee with any and all Technical Information and Technical Assistance to
allow Licensee to manufacture the Liquid Polymer Material. If any event of force
majeure disrupts the supply of Liquid Polymer Material to Licensee which
disruption continues for a period of 60 days, then, notwithstanding Section
22.2, Licensor shall find an alternate source to supply the Liquid Polymer
Material to Licensee or shall allow Licensee to self-manufacture the Liquid
Polymer Material; provided, however, that the foregoing shall apply only during
the time period that the disruption in the supply of Liquid Polymer Material as
a result of an event of force majeure continues.
11.4 Upon execution of this Agreement, as a precautionary
measure to insure all information relating to the manufacture of the Liquid
Polymer Material is available to Licensee in the event Licensee exercises its
right to self-manufacture the Liquid Polymer Material, Licensor shall deliver
all of the documents relating to the manufacture of the Liquid Polymer Material
that are necessary for Licensee to self-manufacture the Liquid Polymer Material
to an escrow agent mutually agreed to by the parties. The escrow agent shall
hold all of such documents in escrow pursuant to the terms of an Escrow
Agreement between the parties. The Escrow Agreement shall provide that the
escrow agent will not disclose such documents to Licensee unless and until
Licensee issues its written notice to both Licensor and the escrow agent that it
is exercising its right to self-manufacture the Liquid Polymer Material and
Licensor has not provided the escrow agent with notice within ten days
thereafter that it is disputing Licensee's right to self-manufacture the Liquid
Polymer Material. Licensor and Licensee shall enter into an Escrow Agreement in
the form attached hereto as Attachment 11.4.
12. NONDISCLOSURE.
12.1 Prior to and during the term of this Agreement, the
Parties have made and will make certain disclosures to each other regarding
information which is proprietary and confidential to them in their businesses
(the "Confidential Information"). In order to constitute Confidential
Information, information being disclosed must either be in writing and marked as
being proprietary or confidential or, if given orally, must be identified as
proprietary when stated and confirmed in writing to be proprietary within 30
days of the original oral disclosure. In particular Licensee recognizes that the
Licensed Intellectual Property Rights (and the confidential nature thereof) are
critical to the business of Licensor and that Licensor would not enter into this
Agreement without assurance that such technology and information and the value
thereof will be protected as provided in this Section 12 and elsewhere in this
Agreement. Accordingly, each party agrees as follows:
12.2 The party receiving such information (the "Receiving
Party") agrees (i) to hold the Disclosing Party's Confidential Information in
confidence and to take all reasonable precautions to protect such Confidential
Information (including, without limitation, all precautions the Receiving Party
employs with respect to its confidential materials), (ii) not to divulge any
such Confidential Information or any information derived therefrom to any third
person, (iii) not to make any use whatsoever at any time of such Confidential
Information except as expressly authorized in this Agreement, and (iv) not to
remove or export from the United States or re-export any such Confidential
Information or any direct product thereof (e.g., Licensed Products by whomever
made) to Afghanistan, the Peoples' Republic of China or any Group Q, S, W, Y or
Z country (as specified in Supplement No. 1 to Section 770 of the U.S. Export
Administration Regulations, or a successor thereto) or otherwise except in
compliance with and with all licenses and approvals required under applicable
export laws and regulations, including without limitation, those of the U.S.
Department of Commerce. Any employee given access to any such Confidential
Information must have a legitimate "need to know" and shall have executed the
standard form of the confidentiality agreement of the Receiving Party. Without
granting any right or license, the Disclosing Party agrees that the foregoing
clauses (i), (ii) and (iii) shall not apply with respect to information the
Receiving Party can document (i) is in or (through no improper action or
inaction by the Receiving Party or any Affiliate, sublicensee, agent or
employee) enters the public domain, or (ii) was rightfully in its possession or
known by it prior to receipt from the Disclosing Party, or (iii) was rightfully
disclosed to it by another person without restriction, (iv) was disclosed by the
Disclosing Party to a third party on an unrestricted nonconfidential basis, or
(v) was independently developed by the Receiving Party by persons without access
to such information and without use of any Confidential Information of the
Disclosing Party. If the Receiving Party believes that information that a
Disclosing Party has identified as Confidential Information is no longer
Confidential Information due to the circumstances in the immediately preceding
sentence, the Receiving Party shall establish same by clear and convincing
evidence prior to making a disclosure of such information. Each party's
obligations under this Section 12.2 (except under clause (iv) of the first
sentence) shall terminate five (5) years after the termination of this
Agreement.
12.3 Immediately upon any termination or expiration of the
Receiving Party's license under Section 13, the Receiving Party will turn over
to the Disclosing Party all Confidential Information of the Disclosing Party and
all documents or media containing any such Confidential Information and any and
all copies or extracts thereo(pound)
12.4 Licensor recognizes that Licensee may have a need to
furnish Technical Information received hereunder to third parties in the
exercise of rights granted hereunder, and to customers (e.g., OEM) incorporating
Licensed Products into other equipment. Licensee may disclose such Technical
Information to any such third party for its use in the exercise of the rights
granted by Licensor hereunder, solely for the benefit of Licensee, provided such
disclosure is made to such third parties under a written agreement containing
restrictions on disclosure and use equivalent to those contained in this Section
12.
13. TERM. This Agreement shall begin on the date first above written. This-
Agreement shall remain in effect, unless terminated at an earlier date pursuant
to Section 14 herein, for a period of 15 years or until the expiration of the
last issuing patent which is included in Licensed Intellectual Property Rights,
whichever is greater. Notwithstanding the foregoing, Licensee shall have the
option to extend the term of this Agreement on a year-to-year basis by providing
written notice of its election to extend the term within 60 days prior to the
expiration of the initial term or any extended term. Any extension of this
Agreement shall be subject to all terms and conditions herein, provided that
Licensee shall be obligated to pay only 75% of the royalties that it would have
been obligated to pay during the initial term of this Agreement.
14. TERMINATION.
14.1 This Agreement may be terminated at any time prior to
the expiration of its normal term by the mutual written agreement of the
Parties.
14.2 This Agreement may be terminated by Licensor upon
written notice to Licensee if Licensee fails to make any payment when due
hereunder and such payment is not remedied within 30 days from written notice
thereof. However, the Licensor may not terminate the Agreement to the extent
there is a bona fide dispute as to the amount of royalties due provided the
amount of royalties not in dispute are paid by Licensee within the 30 day cure
period.
14.3 This Agreement may be terminated by either party upon
written notice to the other party:
14.3.1 immediately, if the other party defaults under
or breaches any of the terms of this Agreement and such default or breach is not
remedied within a period of 60 days after written notification thereof (except
breach of the payment obligation, as set out above); or
14.3.2 immediately, if a material provision of this Agreement is held invalid or
unenforceable by the determination of a court of competent jurisdiction.
14.4 This Agreement may be terminated by Licensor upon 30
days' prior notice to Licensee given within the one-year period following the
applicable Royalty Year and the payment of $750,000 to Licensee in the event:
14.4.1 Licensee has failed to pay the Minimum Annual
Royalties applicable to the Second or Third Royalty Year and has not cured
within the 30 day notice period; or
14.4.2 Licensee has failed to pay a minimum of
$1,000,000 in royalties to Licensor each year during the Fourth through Tenth,
inclusive, Royalty Year and has not cured such default within the 30 day notice
period.
14.5 If this Agreement is terminated pursuant to Section 14.4
above, the Licensee shall retain a license to manufacture, use and sell the
Licensed Products under the Licensed Intellectual Property Rights, but such
license shall be limited to the manufacture, use and sale of Licensed Products
to those customers of Licensee who have previously purchased Licensed Products
(such customers to be derived by a customer/product sales history and Licensee
may sell to any such existing customer only those pieces in each product
category of the Licensed Products that such customer had purchased from Licensee
prior to the termination of this Agreement). During the term of such limited
license and until the expiration of the term of this Agreement under Section 13
hereof: (i) Licensee shall continue to pay Licensor royalties based on Gross
Profit (or net sales, if applicable) as provided in Section 5.1; and (ii)
Licensee may continue to obtain Liquid Polymer Material according to the terms
of Section 11.
15. RIGHTS AFTER TERMINATION OR EXPIRATION.
15.1 Except to the extent necessary for Licensee to exercise
its rights under Section 14.5, upon the termination of this Agreement under
Sections 14.1, 14.2, 14.3 or 14.4, Licensee shall: (i) immediately cease all
further use of Technical Information and manufacture of Licensed Products, but
shall be allowed to continue to use or sell Licensed Products manufactured prior
to the date of termination of this Agreement provided, Licensee continues to pay
Licensor any royalties relating to such use or sales; (ii) Licensee shall cease
all use of the Licensed Intellectual Property Rights; (iii) Licensee will return
to Licensor or destroy and provide Licensor a complete list of all Technical
Information, including all specifications and drawings, and all copies thereof.
15.2 Termination or expiration of this Agreement (i) shall
not release Licensee from its obligation to make payment in full of all
royalties which have accrued to that date, (ii) shall not relieve the Parties
from all other obligations or liabilities under this Agreement which expressly
extend beyond the termination or expiration and (iii) shall not be construed as
a waiver of any rights, claims (including claims for damages), or obligations
that have accrued up to and including the date of termination or expiration. In
particular, it is understood that Sections 3.4, 5, 6, 7, 9, 12, 15, 16 and 20
hereof shall survive any termination or expiration of this Agreement.
16. LITIGATION AND FILING MATTERS.
16.1 Licensor retains the sole right and discretion to file
and prosecute patent applications, maintain patents and apply for intellectual
property rights in the Territory relating to the Licensed Intellectual Property
Rights or any Improvements. At Licensee's request while Licensee remains an
exclusive licensee hereunder, Licensor will discuss its decision on these
matters with Licensee, but Licensee will not attempt to file or prosecute any
such patent applications or maintain any such patent (i) except as Licensor may,
in its sole discretion, approve in writing and (ii) except that Licensee may
continue maintenance of licensed patents issued in the Territory if Licensor
elects not to do so. Licensor's existing relevant patents and patent
applications in the Territory are listed on Attachment 1.5.
16.2 If Licensee becomes aware of any product or activity of
any third party that involves infringement or violation of any Licensed
Intellectual Property Right in the Territory, then Licensee shall promptly
notify Licensor in writing of such infringement or violation. Licensor may in
its discretion take or not take whatever action it believes is appropriate; if
Licensor elects to take action, Licensee will reasonably cooperate therewith at
Licensor's expense. Licensor will indemnify Licensee for any damages, expenses,
costs and fees in connection with Licensor's actions under this Section 16.2.
If Licensor does not, within 90 days after receipt of such a notice of a patent
infringement within the scope of Licensee's license hereunder, commence action
directed towards restraining or enjoining such patent infringement, Licensee, so
long as it is an exclusive licensee hereunder, may take such legally permissible
action as it deems necessary or appropriate to enforce Licensor's patent rights
and restrain such infringement. Licensor agrees to cooperate reasonably in any
such action initiated by Licensee including supplying essential documentary
evidence and making essential witnesses then in Licensor's employment available.
As part of such cooperation, Licensee may join Licensor as a party, if the need
arises, although such joinder shall be entirely at Licensee's expense. Licensee
will indemnify Licensor for any damages, expenses, costs and fees in connection
with Licensee's actions under this Section 16.2 Nothing in this Section 16.2
allows Licensee or requires Licensor to disclose the Licensed Intellectual
Property Rights except the patent rights set forth in Attachment 1.5.
If Licensor solely initiates and prosecutes any such an
action under this Section 16.2, all legal expense (including court costs and
attorneys' fees) shall be for Licensor's account and it shall be entitled to all
amounts awarded by way of judgment, settlement or compromise.
Licensee may join, solely at its own expense, an action
prosecuted by Licensor and any amounts awarded by way of judgment shall be
allocated between Licensor and Licensee as the court shall determine each party
has been damaged.
In the event Licensor elects not to initiate suit and if
Licensee solely initiates and prosecutes such an action, all legal expenses
(including court costs and attorneys' fees) shall be for Licensee's account and
it shall be entitled to all amounts awarded by way of judgment, settlement, or
compromise.
16.3 Licensee understands that Licensor has not conducted
comprehensive patent searches in all of the countries in the Territory.
16.4 INCIDENTAL AND CONSEQUENTIAL DAMAGES. NEITHER PARTY WILL
BE LIABLE UNDER ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER THEORY FOR
ANY INCIDENTAL OR CONSEQUENTIAL DAMAGES WITH RESPECT TO ANY SUBJECT MATTER OF
THIS AGREEMENT EXCEPT A BREACH OF SECTION 12. NOTWITHSTANDING THE FOREGOING,
THIS SECTION 16.4 SHALL NOT LIMIT THE INDEMNITY OBLIGATION OF THE PARTIES UNDER
SECTION 9 WITH RESPECT TO CLAIMS OF THIRD PARTIES.
16.5 LIMITATION OF OBLIGATIONS AND LIABILITY. LICENSOR
WILL NOT BE LIABLE WITH RESPECT TO ANY SUBJECT MATTER OF THIS AGREEMENT UNDER
ANY CONTRACT, NEGLIGENCE, STRICT LIABILITY OR OTHER THEORY FOR COST OF
PROCUREMENT OF SUBSTITUTE GOODS, SERVICES, TECHNOLOGY OR RIGHTS OR FOR ANY
AMOUNTS AGGREGATING IN EXCESS OF AMOUNTS PAID TO IT HEREUNDER.
17. WAIVER OF DEFAULT. The failure of either party at any time to enforce or
require performance of any of the provisions of this Agreement, or to exercise
any right or option herein provided, shall in no way be construed to be a waiver
of that or any other provision of this Agreement or to affect the right of such
party thereafter to enforce each and every such provision. All waivers shall be
in writing and signed by the waiving party. No waiver by either party of any
default of the other party shall be held to be a waiver of any other or
subsequent default.
18. RELATIONSHIP OF PARTIES. It is agreed that the Parties are independent
contractors and not partners, joint venturers or otherwise affiliated. Neither
party has any right or authority to assume, create or incur any liability or
obligation of any kind, express or implied, against, in the name of, or on
behalf of the other party.
19. NOTICE. Any notice pursuant to this Agreement shall be in writing and shall
be deemed given (i) when delivered by hand or mail, (ii) when transmitted by
telecopier, with confirmation of receipt; provided that a copy is sent at about
the same time by registered or certified mail, return receipt requested, or
(iii) three days after being sent by Express Mail, Federal Express or other
express delivery service, to the addressee at the following addresses or
telecopier numbers (or to such other address or telecopier number as a party may
specify from time to time by notice):
If to Licensor: SurgX Corporation -
Attention: President
▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
if to Licensee: Bussmann Division of ▇▇▇▇▇▇-▇▇▇▇▇▇ Company
Attention: President
▇▇▇ ▇▇▇ ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
with copy to: ▇▇▇▇▇▇ Industries, Inc.
Attention: General Counsel
▇.▇. ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
20. Dispute RESOLUTION. Any dispute or claim arising out of, or in connection
with, this Agreement which is not settled to the mutual satisfaction of the
Parties within thirty (30) days (or such longer period as may be mutually agreed
upon) from the date that either party informs the other in writing that such
dispute or disagreement exists, shall be submitted to mediation conducted by a
mediator mutually acceptable to the Parties. In the event the Parties cannot
resolve the dispute or claim through mediation, then the claim or dispute shall
be finally settled by binding arbitration in the counties of Alameda, San Mateo
or Santa Clara, California in accordance with the rules of the American
Arbitration Association by three (3) arbitrators appointed in accordance with
said rules in effect on the date that such notice is given. The decision of the
arbitrators shall be final and binding upon the Parties and judgment upon any
award rendered by all or a majority of the arbitrators may be entered in any
court of competent jurisdiction. Each party shall bear the cost of preparing its
case. The cost of the arbitration, including the fees and expenses of the
arbitrators, will be shared equally by the Parties unless the arbitrators' award
otherwise provides. The Parties agree that, any provision of applicable law
notwithstanding, they will not request, and the arbitrators shall not have
authority to award punitive damages against any party or Parties. Either party
may request a court to provide interim or provisional relief and such a request
shall not be deemed incompatible with the agreement to arbitrate or as a waiver
of that agreement.
21. ASSIGNMENT. This Agreement shall be binding upon the Parties and their
permitted successors and assigns. Licensor may assign or delegate any of its
rights or obligations under this Agreement to an Affiliate with notice to
Licensee provided the Licensor remains liable for its performance under this
Agreement. Licensee may assign or delegate any of its rights or obligations
under this Agreement to an Affiliate with notice to Licensor provided Licensee
remains liable for its performance under this Agreement. Except for assignments
to Affiliates as described above, neither party may assign any of its rights or
obligations to a third party without the prior written consent of the other
party which consent shall not be unreasonably withheld or delayed.
22. MISCELLANEOUS.
22.1 Governing Law. This Agreement shall be governed by and
construed in accordance with the substantive laws of Delaware and the United
States without regard to conflicts of laws provisions thereof and without regard
to the United Nations Convention on Contracts for the International Sale of
Goods. Subject to Section 20 and unless otherwise elected by Licensor in writing
for the particular instance (which Licensor may do at its option), the sole
jurisdiction and venue for actions related to the subject matter hereof shall be
the U.S. federal courts having within their jurisdiction the location of
Licensor's principal place of business. Both parties consent to the jurisdiction
of such courts and agree that process may be served in the manner provided
herein for giving of notices or otherwise as allowed by California or federal
law. In any action or proceeding to enforce rights under this Agreement, the
prevailing party shall be entitled to recover costs and attorneys' fees.
22.2 Force Majeure. Neither party hereto shall be responsible
for any failure to perform its obligations under this Agreement (other than
obligations to pay money or obligations under Sections 9, 12 or 16) if such
failure is caused by acts of God, war, strikes, revolutions, lack or failure of
transportation facilities, laws or governmental regulations or other causes
which are beyond the reasonable control of such party. Obligations hereunder,
however, shall in no event be excused but shall be suspended only until the
cessation of any cause of such failure. In the event that such force majeure
should obstruct performance of this Agreement for more than three (3) months,
the parties hereto shall consult with each other to determine whether this
Agreement should be modified. The party facing an event of force majeure shall
use its best endeavors in order to remedy that situation as well as to minimize
its effects. A case of force majeure shall be notified to the other party by
telex or telefax within five (5) days after its occurrence and shall be
confirmed by a letter.
22.3 Export Control. Each party hereby agrees to comply with
all export laws and restrictions and regulations of the Department of Commerce
or other United States or foreign agency or authority, and not to knowingly
export, or allow the export or re-export of any Licensed Intellectual Property
Rights or Licensed Products or derivative of the Licensed Intellectual Property
Rights or the Licensed Products or any direct product thereof in violation of
any such restrictions, laws or regulations, or, without all required licenses
and authorizations, to Afghanistan, the Peoples' Republic of China or any Group
Q, S, W, Y or Z country specified in the then current Supplement No. 1 to
Section 770 of the U.S. Export Administration Regulations (or any successor
supplement or regulations).
22.4 Severabilitv. If any provision of this Agreement is held
illegal, invalid or unenforceable by a court of competent jurisdiction, that
provision will be limited or eliminated to the minimum extent necessary so that
this Agreement shall otherwise remain in full force and effect and enforceable.
22.5 Entire Agreement. This Agreement constitutes the entire
agreement between the Parties and supersedes all prior agreements, negotiations
or discussions between them regarding the subject matter.
22.6 No Third-Party Beneficiaries. This Agreement shall not
confer any rights or remedies upon any person or entity other than the Parties
and their respective successors and permitted assigns.
22.7 Headings. The section headings contained in this
Agreement and in the attachments are inserted for convenience only and shall not
affect the meaning or interpretation of this Agreement.
22.8 Amendments and Waivers. No amendment of any provision of
this Agreement or any Attachments hereto shall be valid unless it is in writing
and signed by each party.
22.9 Severabilitv. Any provision of this Agreement that is
invalid or unenforceable in any situation in any jurisdiction shall not affect
the validity or enforceability of the remaining provisions or the validity or
enforceability of the offending provision in any other situation or in any other
jurisdiction.
22.10 Incorporation of Schedules. The attachments identified
in this Agreement are incorporated by reference and made a part of this
Agreement.
22.11 Counterparts. This Agreement may be executed in any
number of counterparts with the same effect as if the signatures to each
counterpart were upon a single instrument, and all such counterparts together
shall be deemed an original of this Agreement.
On the date first above written, each party by an authorized
representative executes this Agreement in duplicate, each of which shall be
considered an original.
SURGX CORPORATION
/s/▇▇▇▇▇ ▇▇▇▇▇▇
Name: ▇▇▇▇▇ ▇▇▇▇▇▇
Title: V.P.Operations
▇▇▇▇▇▇-▇▇▇▇▇▇ COMPANY
Name:
Title:
ATTACHMENT 1.5
Invention: Licensed Polymer Material
The inventions constituting the Liquid Polymer Material are covered by the
following patent applications and any continuations, divisionals, continuations
in part, as well as foreign counterparts which may be assigned to Licensor, it
being understood that these patents and applications cover inventions which may
be broader than those used solely in the Liquid Polymer Material:
Patent Application File Date
020327-002 07/14/94 SurgX Devices
020327-003 07/14/94 SurgX Manufacturing-
and ESD Devices
020327-005 01/22/96 Printed Circuit Board
Designs for ESD
ATTACHMENT 1.6
The term "Licensed Products" shall mean: Discrete products to be mounted on
printed circuit boards for the purpose of providing ESD protection, which
discrete products are manufactured by depositing Liquid Polymer Material on a
rigid substrate such as a FR-4 printed circuit board or a ceramic substrate.
Examples of such discrete products include 1206, 0805, 0603 surface mount
packages and board mounted network array packages. Such discrete products shall
also include discrete arrays for placement on or in connectors such as RJ,
D-subminiature and other connectors.
Licensed Products shall not include any other SurgX products, such as, without
limitation, the family of products identified by SurgX as SurgTape (including
discrete components and connector arrays made from SurgTape), SurgX Epoxy
Packages, or custom SurgX applications such as a layer in a printed circuit
board and novel packaging, including hybrid designs and multichip modules.
ATTACHMENT 3.5
Trademark License Agreement
TRADEMARK LICENSE AGREEMENT
This Trademark License Agreement ("Agreement") is effective as of this
_ day of June, 1996 ("Effective Date"), by and between SurgX Corporation
("Licensor"), a Delaware corporation, having offices at ▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, and ▇▇▇▇▇▇-▇▇▇▇▇▇ Company ("Licensee"), a Delaware
corporation, having offices at ▇▇▇ ▇▇▇ ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇▇▇▇▇. -
In consideration of the mutual covenants and promises contained herein,
the parties hereto agree as follows:
1. Definitions.
The following terms shall have the meanings set forth below:
a. "Affiliate" means any person controlling, controlled by (either
directly or indirectly) or under common control with Licensee.
b. "License Agreement" shall mean the Intellectual Property Rights
License Agreement, of even date herewith, entered into by the parties hereto.
c. "Licensed ▇▇▇▇" shall mean solely the trademark SurgX(R); provided,
however, that the appearance and/or style of the SurgX(R) ▇▇▇▇ ▇▇▇ change from
time to time in Licensor's sole discretion. As of the Effective Date, the
Licensed ▇▇▇▇ is the subject of the following trademark registrations and
pending applications: 74/461054
d. "Product" shall mean the "Licensed Products" as defined in the
License Agreement.
e. "Territory" shall mean the world.
2. License Right Granted.
a. In partial consideration of the consideration set forth in the
License Agreement, Licensor hereby grants to Licensee, and Licensee accepts,
upon the terms and conditions set forth herein, a non-exclusive,
non-transferable (subject to Section 9 herein), non-sublicensable (subject to
Section 9 herein), royalty-free license to use the Licensed ▇▇▇▇ in the
Territory solely in connection with the Product.
b. Licensee hereby acknowledges and agrees that, except as set forth herein,
Licensee has no rights, title or interest in or to the Licensed ▇▇▇▇ and that
all use of the Licensed ▇▇▇▇ by Licensee shall inure to the benefit of Licensor.
Licensee shall not have the right to use the Licensed ▇▇▇▇ as a trade name,
company name, trade style or fictitious business name.
c. Licensee understands and agrees that it does not have the right to
use the Licensed ▇▇▇▇ in any manner that conflicts with the rights of any third
party. If, in Licensor's sole determination, Licensee's use of the Licensed ▇▇▇▇
infringes the rights of any third party or weakens or impairs Licensor's rights
in the Licensed ▇▇▇▇, then Licensee agrees to immediately terminate or modify
such use in accordance with Licensor's instructions. In the event Licensee fails
to terminate or modify such use as directed by Licensor, Licensor may terminate
this Agreement.
d. Licensee acknowledges that it is often difficult, particularly in
foreign countries, to obtain clear, registered title to trademarks. Accordingly,
Licensee agrees that the rights granted herein exist only to the extent that
Licensor owns such rights, and (except as specifically set forth herein or in
the License Agreement) no warranty, express or implied, is made with respect
thereto or to the Licensed ▇▇▇▇ or with respect to the rights of any third
parties that may conflict with the rights granted herein. If the laws of any
country included in the Territory require that a trademark be registered prior
to use in order to fully protect the owner of the trademark, the license granted
herein with respect to the Licensed ▇▇▇▇ shall not extend to such country until
the Licensed ▇▇▇▇ has been registered there at Licensor's expense under
appropriate classes relating to the Product. Licensor and Licensee shall
cooperate in constituting Licensee as a registered user (or its equivalent) of
the Licensed ▇▇▇▇ in each of the countries comprising the Territory in which
such Licensed ▇▇▇▇ is registered or may be registered, and in which such
registered user is required. Any expenses for constituting Licensee as a
registered user in any country shall be borne by Licensee.
e. Licensor agrees to defend, indemnify and hold Licensee harmless from
any and all costs and expenses (including reasonable attorneys' fees),
liabilities, damages or other loss resulting from or relating to an infringement
by the Licensed ▇▇▇▇ of any trademark, service ▇▇▇▇ or trade name right of a
third party, provided that (i) Licensor is promptly notified of any and all
threats, claims and proceedings related thereto, provided, however, that no
delay on the part of Licensee to notify Licensor shall relieve Licensor from its
indemnity obligations hereunder unless (and then solely to the extent) the
Licensor is thereby damaged (ii) Licensor shall have sole control of the defense
and/or settlement thereof, (iii) upon Licensor's request and expense, Licensee
immediately ceases use of the Licensed ▇▇▇▇ and (iv) upon Licensor's request and
expense, Licensee provides Licensor with reasonable assistance and information
available to Licensee for such defense. The foregoing obligation of Licensor
does not apply to the extent any liabilities, costs or expenses result from (a)
Licensee continuing the allegedly infringing activity after being notified
thereof or after being informed of modifications that would have avoided the
alleged infringement or (b) Licensee's use of the Licensed ▇▇▇▇ is not strictly
in accordance with the terms and provisions of this Agreement.
3. Quality Standards.
a. Licensor shall have the right to control the quality of the Product
sold under the Licensed ▇▇▇▇ solely as provided herein. Licensee shall furnish
to Licensor, at no expense to Licensor, pre-production samples of the Product in
the form that Licensee intends to manufacture and sell under the Licensed ▇▇▇▇
to allow Licensor to review the quality of the Product, which shall be of a
quality at least equal to that of Licensee's other fuse products in production.
Thereafter, upon the request of Licensor, Licensee shall furnish, at no expense
to Licensor, production samples of the Product Licensee intends to sell under
the Licensed ▇▇▇▇ to allow Licensor to monitor the quality of the Product.
b. Licensee agrees to adopt the level of quality as set forth in
Section 3(a) hereof for the Product manufactured and sold under the Licensed
▇▇▇▇ as the minimum standard of quality for the Product.
c. Licensor shall have the right to request Licensee to make any
changes and/or corrections to the Product manufactured and sold by Licensee
under the Licensed ▇▇▇▇ as may be required to maintain the quality standard
prescribed by Licensor in Section 3(a) above, and Licensee agrees to make and
incorporate said changes or corrections at Licensee's sole cost and expense.
d. Licensee shall utilize the Licensed ▇▇▇▇ in accordance with Section
3.5 of the License Agreement. Upon Licensor's request, Licensee shall furnish to
Licensor, at no expense to Licensor, samples of all literature and materials
containing the Licensed ▇▇▇▇ that Licensee distributes or intends to distribute.
Licensor shall have the right to control the quality of all marketing materials
bearing the Licensed ▇▇▇▇ and Licensee's use of the Licensed ▇▇▇▇ solely as
provided herein. If Licensor believes that the Licensed ▇▇▇▇ is being used in a
manner that could diminish Licensor's rights in or protection of the Licensed
▇▇▇▇, Licensee agrees, at Licensee's sole cost and expense, to make whatever
reasonable changes and/or corrections Licensor deems necessary to protect the
Licensed ▇▇▇▇.
e. Licensee agrees that it shall not engage, participate or otherwise
become involved in any activity or course of action that diminishes and/or
tarnishes the image and/or reputation of the Licensed ▇▇▇▇.
(pound) Licensee agrees to comply with all applicable local, state,
federal and foreign laws and, at all times, to conduct its activities under this
Agreement in a lawful manner.
g. Licensee agrees to use the Licensed ▇▇▇▇ in accordance with and only
on or in connection with the Product.
4. Use and Display of Licensed ▇▇▇▇.
a. Licensee acknowledges and agrees that the presentation and image of
the Licensed ▇▇▇▇ should be uniform and consistent with respect to all services,
activities and products associated with the Licensed ▇▇▇▇. Accordingly, Licensee
agrees to use the Licensed ▇▇▇▇ solely in the manner which Licensor shall
specify from time to time in Licensor's sole discretion.
b. All usage by Licensee of the Licensed ▇▇▇▇ shall include the
registered trademark symbol and shall be in the following form, as appropriate:
SurgX(R). All marketing materials printed, distributed or electronically
transmitted by Licensee and containing the Licensed ▇▇▇▇ shall include the
following notice:
SurgX(R) is a registered trademark of SurgX Corporation.
5. Term and Termination.
a. This Agreement shall commence on the Effective Date and shall
continue in effect for a period coterminous with the term of the License
Agreement, unless earlier terminated in accordance with the terms and conditions
set forth herein.
b. This Agreement shall automatically terminate upon termination (for
whatever reason) of the License Agreement. If under the License Agreement
Licensor extends to Licensee a sell-off period within which to sell the Product
to certain existing customers of Licensee, Licensee shall have the right to
continue using the Licensed ▇▇▇▇ in connection with its marketing and
distribution efforts only for such products and only for the duration of such
sell-off period.
c. This Agreement and the license granted herein may be terminated by
Licensor if Licensee fails to perform or comply with a material provision of
this Agreement and such breach or default is not cured by Licensee within thirty
(30) days after written notice of termination is received by Licensee.
d. Except as expressly set forth in Section S(b) above, Licensee shall
immediately cease all use of the Licensed ▇▇▇▇ upon expiration or termination of
this Agreement.
6. Cooperation and Protection.
a. Licensee agrees to reasonably cooperate with and assist Licensor in
protecting and defending the Licensed ▇▇▇▇ and shall promptly notify Licensor in
writing of any infringements, claims or actions by others (which come to the
attention of Licensee) in derogation of the Licensed ▇▇▇▇; provided, however,
that Licensor shall have the sole right to determine whether any action shall be
taken on account of any such infringement, claim or action. Licensee shall not
take any action on account of any such infringement, claim or action without the
prior written consent of Licensor.
b. Licensee agrees not to apply for registration of the Licensed ▇▇▇▇
(or any ▇▇▇▇ confusingly similar thereto) anywhere in the Territory. Licensor
may elect to apply for registration of the Licensed ▇▇▇▇ in a particular
country(ies) within the Territory at its expense, and, in such event and if
applicable, Licensee agrees to reasonably assist and cooperate with Licensor in
connection therewith.
7. Indemnification.
Licensee agrees to defend, indemnify and hold Licensor harmless from
and against any and all costs and expenses (including reasonable attorneys'
fees), liabilities, damages or other loss arising out of Licensee's actions or
omission to act under this Agreement or Licensee's organization, business or
activities.
8. Independent Contractors.
The parties hereto are independent contractors and are not partners,
joint venturers or otherwise affiliated, and neither party has any right or
authority to bind the other in any way.
9. Assignment.
Licensee may not assign this Agreement or any of its rights or
obligations under this Agreement without the prior written consent of Licensor,
provided, however, Licensee may assign or delegate any of its rights or
obligations under this Agreement to an Affiliate with notice to Licensor (and
without Licensor's consent), provided Licensee remains liable for its
performance under this Agreement.
10. Notice.
Any notice pursuant to this Agreement shall be in writing and shall be
deemed given (i) when delivered by hand or mail, (ii) when transmitted by
telecopier, with confirmation of receipt; provided that a copy is sent at about
the same time by registered or certified mail, return receipt requested, or
(iii) three days after being sent by Express Mail, Federal Express or other
express delivery service, to the addressee at the following addresses or
telecopier numbers (or to such other address or telecopier number as a party may
specify from time to time by notice):
If to Licensor: SurgX Corporation
Attention: President
▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
if to Licensee: Bussmann Division of ▇▇▇▇▇▇-▇▇▇▇▇▇
Company
Attention: President
▇▇▇ ▇▇▇ ▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
with copy to: ▇▇▇▇▇▇ Industries, Inc.
Attention: General Counsel
▇.▇. ▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇
Facsimile: (▇▇▇) ▇▇▇-▇▇▇▇
11. General.
a. Amendment. Modification and Waiver. The failure of either party to
enforce its rights or to require performance by the other party of any term or
condition of this Agreement shall not be construed as a waiver of such rights or
of its right to require future performance of that term or condition. Any
amendment or modification of this Agreement or any waiver of any breach of any
term or condition of this Agreement must be in a writing signed by both parties
in order to be effective, and any such waiver shall not be construed as a waiver
of any continuing or succeeding breach of such term or condition, a waiver of
the term or condition itself or a waiver of any right under this Agreement.
b. Governing Law. This Agreement shall be governed and interpreted
under the laws of the State of Delaware without regard to the conflicts of
interest provisions thereo(pound)
c. Headings. Headings and captions are for convenience of reference
only and shall not be deemed to interpret, supersede or modify any provisions of
this Agreement.
d. Severabilitv. In the event that any provision of this Agreement
shall be determined to be illegal or unenforceable, that provision will be
limited or eliminated to the minimum extent necessary so that this Agreement
shall otherwise remain in full force and effect and enforceable.
e. Entire Agreement. Upon execution by both parties, this Agreement
shall constitute the entire agreement between the parties with respect to the
subject matter hereof and supersedes all discussions, negotiations, agreements
and past dealings, either oral or written, between or among the parties relating
to the subject matter hereof.
f. Dispute Resolution. Any dispute or claim arising out of, or in
connection with, this Agreement which is not settled to the mutual satisfaction
of the parties within thirty (30) days (or such longer period as may be mutually
agreed upon) from the date that either party informs the other in writing that
such dispute or disagreement exists, shall be submitted to mediation conducted
by a mediator mutually acceptable to the parties. In the event the parties
cannot resolve the dispute or claim through mediation, then the claim or dispute
shall be finally settled by binding arbitration in the counties of Alameda, San
Mateo or Santa Clara, California in accordance with the rules of the American
Arbitration Association by three (3) arbitrators appointed in accordance with
said rules in effect on the date that such notice is given. The decision of the
arbitrators shall be final and binding upon the parties and judgment upon any
award rendered by all or a majority of the arbitrators may be entered in any
court of competent jurisdiction. Each party shall bear the cost of preparing its
case. The cost of the arbitration, including the fees and expenses of the
arbitrators, will be shared equally by the parties unless the arbitrators' award
otherwise provides. The parties agree that, any provision of applicable law
notwithstanding, they will not request, and the arbitrators shall not have
authority to award punitive damages against any party or parties. Either party
may request a court to provide interim or provisional relief and such a request
shall not be deemed incompatible with the agreement to arbitrate or as a waiver
of that agreement.
g. Survival. Sections 2(e), 5(b), 6(b), 7, 11(b) and 11(f) hereof shall
survive the termination of this Agreement.
h. Counterparts. This Agreement may be executed in any number of
counterparts with the same effect as if the signatures to each counterpart were
upon a single instrument, and all such counterparts together shall be deemed an
original of this Agreement.
IN WITNESS WHEREOF, the parties hereto have each caused this Agreement
to be executed by their authorized representatives as of the date first above
written.
SURGX CORPORATION ▇▇▇▇▇▇-▇▇▇▇▇▇ COMPANY
By: By:
Printed Name Printed Name
Title Title
ATTACHMENT 4.1
Delivery Schedule for
Technical Information
1. SurgX Specification and Manufacturing Procedures Control Documents
2. R5-11 Environmental Test Results
3. SurgX ESD QC Test Procedure
All items to be delivered on or before July 22, 1996.
ATTACHMENT 11.1
Licensor's cost of the Liquid Polymer Material shall equal Licensor's standard
costs for the Liquid Polymer Material including direct and indirect labor and
associated fringe benefits, scrap, perishable tooling, supplies, and maintenance
on machinery and equipment. Only costs directly associated with the manufacture
of Liquid Polymer Material will be included in standard costs.
ATTACHMENT 11.4
Escrow Agreement
ESCROW AGREEMENT
BETWEEN
SURGX CORPORATION
(Licensor)
AND
▇▇▇▇▇▇-▇▇▇▇▇▇ COMPANY
(Licensee)
AND
▇▇▇▇▇, DONE, SVVECKER & ▇▇▇▇▇▇
(Escrow Agent)
AS OF
JULY 12, 1996
ESCROW AGREEMENT
Table of Contents
Page
1. Deposits
1
2. Representations of Licensor to Licensee
2
3. Notice of Default
2
4. Disputes
2
5. Payment to Escrow Agent
3
6. Termination
3
7. Waiver, Amendment or Modification; Severability
3
8. Notices
3
9. Limitation on Escrow Agent's Responsibility and Liability ........ 3
10. Counterparts .--------........................................... 4
Schedule A Description of Materials Containing the Escrow Information
Relating to the Manufacture of the Liquid Polymer Material . i
ESCROW AGREEMENT
ESCROW AGREEMENT dated as of July 12, 1996 by and among SurgX
Corporation, having its principal offices at ▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇ (hereinafter the "Licensor"); ▇▇▇▇▇▇-▇▇▇▇▇▇ Company, a Delaware
corporation having its principal offices at ▇▇▇ ▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇ (hereinafter the "Licensee"); and Burns, Doane, ▇▇▇▇▇▇▇ & ▇▇▇▇▇▇, LLP,
a law firm having an office at ▇▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇ ▇, ▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇
▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ (hereinafter the "Escrow Agent").
W I T N E S S E T H:
WHEREAS, the Licensor and the Licensee have entered into a Intellectual
Property Rights License ("License Agreement"), a copy of which is appended
hereto and made a part hereof, pursuant to which the Licensor has agreed to
license to the Licensee patents, patent applications, information, technology
and rights relating to Licensed Products which incorporate the Liquid Polymer
Material; and
WHEREAS, it is the policy of the Licensor not to disclose the
information to allow another party to self-manufacture the Liquid Polymer
Material including technical and production know-how, drawings, designs,
specifications, formulas, data, trade secrets and other information relating to
the manufacture of the Liquid Polymer Material ("Escrow Information") except as
provided in an applicable Escrow Agreement; and
WHEREAS, Licensor and Licensee agree that upon the occurrence of
certain events described in Section 3(a) hereof, the Licensee shall be able to
obtain the Escrow Information for the Liquid Polymer Material, and accordingly,
the Licensor agrees to deliver said Escrow Information to the Escrow Agent; and
WHEREAS, capitalized terms not otherwise defined herein shall have the
meaning set forth in the License Agreement;
NOW, THEREFORE, in consideration of the mutual covenants contained
herein and for other valuable consideration, the adequacy and receipt of which
are hereby acknowledged, the Licensor, the Licensee and the Escrow Agent hereby
act and agree as follows:
1. Deposits
The Escrow Agent agrees to accept from the Licensor the Escrow
Information (as more fully described in Schedule A hereto) and revisions thereof
as provided in Section 2 hereof. The Escrow Agent will issue to the Licensor a
receipt for the Escrow Information upon delivery. The Escrow Information held by
the Escrow Agent shall remain the exclusive property of the Licensor, and the
Escrow Agent shall not use the Escrow Information or disclose the same to any
third party except as specifically provided for herein. The Escrow Agent will
hold the Escrow Information in safekeeping at its offices hereinabove indicated
unless and until the Escrow Agent receives notice pursuant to the terms of this
Agreement that the Escrow Agent is to deliver the Escrow Information to
Licensee, in which case the Escrow Agent shall deliver the Escrow Information to
Licensee, subject, however, to the provisions of this Escrow Agreement.
2. Representations of Licensor to Licensee
Licensor represents and warrants to Licensee that: (i) the Escrow
Information constitutes all of the information necessary to allow a reasonably
skilled engineer, without reference to any other material or the help of any
other person to manufacture the Liquid Polymer Material; and (ii) Licensor will
promptly supplement the Escrow Information delivered hereunder with all
Improvements thereof developed by Licensor from time to time pursuant to the
License Agreement so that the Escrow Information constitutes the most current
information available relating to the manufacture of the Liquid Polymer
Material.
3. Notice of Default
(a) The Licensor shall be deemed to be in default of its
responsibilities to Licensee for purposes of this Escrow Agreement if: (i)
Licensor fails to meet the obligations referred to in Section 11.3(i) of the
License Agreement; (ii) Licensor becomes insolvent, or a case or proceeding
under bankruptcy, insolvency or similar law is commenced by or against Licensor
and is not dismissed within 45 days or Licensor makes a general assignment for
the benefit of creditors; or (iii) if any event of force majeure disrupts the
supply of Liquid Polymer Material to Licensee which disruption continues for a
period of 60 days and Licensor fails to find an alternate source to supply the
Liquid Polymer Material to Licensee or allow Licensee to self-manufacture the
Liquid Polymer Material. Licensee shall give a sworn statement (the "Notice of
Default") to Licensor of any such default by the Licensor stating that such
default has not been cured with a copy of such notice to the Escrow Agent.
(b) If the Licensor desires to dispute the Notice of Default, the
Licensor shall, within ten business (10) days after the receipt of the copy of
the Notice of Default from the Licensee, deliver to Licensee a sworn statement
(the "Affidavit") saying that no default has occurred or such default has been
cured and Licensor shall provide a copy of such Affidavit to the Escrow Agent,
whereupon the provisions of Section 4 hereof will become applicable. If the
Escrow Agent receives the Affidavit within said ten (10) business days, the
Escrow Agent shall continue to hold the Escrow Information in accordance with
this Escrow Agreement. If the Escrow Agent does not receive the Affidavit within
said ten (10) business days, the Escrow Agent is authorized and directed to
deliver the Escrow Information to the Licensee. ~.
(c) Following a release of the Escrow Information as provided in
Section 3, Licensee shall have the non-exclusive right to use the released
material as and only as authorized by Section 11 of the License Agreement.
Additionally, Licensee shall be required to maintain the confidentiality of the
related materials and technology in accordance with the terms of the License
Agreement.
4. Disputes
(a) In the event that Licensor files the Affidavit with the Escrow
Agent in the manner and within the time period set forth in Section 3(b) hereof,
the Escrow Agent shall not release the Escrow Information to Licensee except in
accordance with (i) a final decision of the
Escrow Agreement
- 2 -
arbitration panel as hereinafter provided, or (ii) receipt of an agreement with
notarized signatures of both Licensor and Licensee, authorizing the release of
the Escrow Information to Licensee.
(b) Disputes arising under this Agreement shall be referred immediately
to, and finally settled by, binding arbitration pursuant to the provisions of
Section 20 of the License Agreement. The Escrow Agent shall give prompt effect
to any authenticated arbitration award. This agreement to arbitrate shall
survive termination of this Agreement.
5. Payment to Escrow Agent
As payment for its services hereunder, the Licensor shall reimburse the
Escrow Agent for its reasonable out-of-pocket expenses incurred in connection
with the discharge by the Escrow Agent of its duties and responsibilities under
this Escrow Agreement.
6; Termination
This Escrow Agreement shall terminate on the termination of the License
Agreement or upon the mutual written agreement of Licensor and Licensee.
7. Waiver. Amendment or Modification: Severabilitv
This Escrow Agreement shall not be waived, amended, or modified except
by the written agreement of all the parties hereto. Any invalidity, in whole or
in part, of any provision of this Escrow Agreement shall not affect the validity
of any other of its provisions.
8. Notices
All notices required to be given hereunder shall be in writing and
shall be deemed given if delivered personally (upon recipient's actual receipt),
if mailed by certified or registered mail, return receipt requested (upon the
date of delivery to recipient), or if by nationally recognized air courier which
confirms delivery (upon date of delivery to the recipient), to the parties at
their respective addresses hereinabove written, or at such other address as
shall be specified hereinabove in writing to all other parties.
9. Limitation on Escrow Agent's Responsibility and Liability
(a) The Escrow Agent shall maintain the Escrow Information in a safe
and shall provide the same degree of care for the Escrow Information as it
maintains for its valuable documents and those of its customers lodged in the
same location.
(b) The Escrow Agent shall be protected in acting upon any written
notice, request, waiver, consent, receipt or other paper or document furnished
to it, not only in assuming its due execution and the validity and effectiveness
of its provisions but also as to the truth and acceptability of any information
therein contained, which it in good faith believes to be genuine and what it
purports to be.
Escrow Agreement
- 3 -
(c) In no event shall the Escrow Agent be liable for any act or failure
to act under the provisions of this Escrow Agreement except where its acts are
the result of its gross negligence or willful misconduct. The Escrow Agent shall
have no duties except those which are expressly set forth herein, and it shall
not be bound by any notice of a claim, or demand with respect thereto, or any
waiver, notification, amendment, termination or rescission of this Escrow
Agreement, unless in writing received by it, and, if its duties are affected,
unless it shall have given its prior written consent thereto.
(d) The Licensor and Licensee hereby agree, jointly and severally, to
indemnify the Escrow Agent against any loss, liability, or damage (other than
any caused by the gross negligence or willful misconduct of the Escrow Agent),
including reasonable costs of litigation and counsel fees, arising from and in
connection with the performance of its duties under this Agreement. The Licensor
and Licensee will not bring a suit or file a claim against the Escrow Agent for
any act or failure to act under the provisions of this Escrow Agreement except
where its acts are the result of its gross negligence or willful misconduct.
10. Counterparts
This Escrow Agreement may be executed in any number of counterparts
with the same effect as if the signatures to each counterpart were upon a single
instrument, and all such counterparts together shall be deemed an original of
this Escrow Agreement.
IN WITNESS WHEREOF, the parties hereto have caused this Escrow
Agreement to be duly executed as of the year and date first above written.
SURGX CORPORATION ("Licensor")
Attest: By: /s/▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇-▇▇▇▇▇▇ COMPANY ("Licensee")
Attest:
By:
BURNS, DOANE, ▇▇▇▇▇▇▇ & ▇▇▇▇▇▇
("Escrow Agent")
Attest:
By:
Escrow Agreement
SCHEDULE A
Description of Materials Containing the Escrow Information and related
Documentation:
On the date first above written, each party by an authorized
representative executes this Agreement in duplicate, each of which shall be
considered an original.
SURGX CORPORATION
/s/ ▇▇▇▇▇ ▇▇▇▇▇▇
Name: ▇▇▇▇▇ ▇▇▇▇▇▇
Title: V.P. Operations
▇▇▇▇▇▇-▇▇▇▇▇▇ COMPANY
/s/ ▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Name: ▇▇▇▇▇▇ ▇. ▇▇▇▇▇
Title: V.P. Product & Market Development