Exhibit 10.3
▇▇▇▇▇▇ ▇▇▇▇▇/NEWCO LICENSE AND SUBLICENSE AGREEMENT
Effective Date: December 7, 1999
PARTIES:
Newco ("Newco")
a Minnesota corporation
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▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
The ▇▇▇▇▇▇ ▇▇▇▇▇ Corporation ("PE")
a New York corporation
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▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇-▇▇▇▇
RECITALS:
A. Quantech Ltd., a Minnesota Company ("Quantech") and PE are parties to (i) a
certain agreement with an effective date of 16 December, 1997, as amended by the
Amendment to License Agreements dated November 4, 1999 and by the Second
Amendment to License Agreement dated of even date herewith (the "Quantech
License Agreement"), pursuant to which, among other things, Quantech granted to
PE a license under the Serono Technology and Quantech Intellectual Property, and
(ii) the ▇▇▇▇▇▇ ▇▇▇▇▇/Quantech License Agreement with an effective date of 29
June 1998, as amended by the Amendment to License Agreements dated November 4,
1999 and by the Second Amendment to License Agreement dated of even date
herewith, pursuant to which, among other things, PE granted a license to certain
PE technology described in a patent application entitled "Surface Plasmon Array
System" (the "PE License Agreement").
B. PE wishes to grant to Newco a (i) sublicense to the technology and patent
rights (generally termed SPR Technology) that Quantech licensed to PE pursuant
to the Quantech License Agreement, and (ii) a license to the PE technology (as
described in US provisional patent application no. 60/069,356, entitled "Surface
Plasmon Array System") for use in all fields, except Medical Diagnostics which
is provided to Quantech in the PE License Agreement (the "PE Technology"), that
Newco will use in conjunction with the SPR Technology that is the subject of the
sublicense described above.
C. Newco desires to acquire such a license and sublicense from PE to enable it
to make, use and sell devices incorporating the PE and SPR Technology licensed
and sublicensed to Newco pursuant to this Agreement.
The Parties therefore agree as follows:
1. DEFINITIONS
As used herein, the following words shall have the designated meanings:
1.1. "Affiliate" means a Person whom, directly or indirectly,
controls, is controlled by, or is under common control with
the specified entity.
1.2. "Calendar Quarter" means each three-month period ending March
31, June 30, September 30 and December 31.
1.3. "Consumable" means parts incorporating or designed to utilize
grating-coupled SPR Technology on which chemical analysis is
conducted. It is to be understood that Consumables shall not
include any instrument necessary for conducting the chemical
analysis.
1.4. "Instrument" means read-out instruments incorporating or
designed to utilize SPR Technology or PE Technology, which are
used to conduct chemical analysis.
1.5. "Joint Invention" means any invention made jointly by at least
one employee or Assignor of each party. Assignors are defined
as non-employees who are required to assign inventions to a
party.
1.6 "Joint Licensed Consumable" means any Consumable that is a
Licensed Consumable and a Quantech Licensed Consumable.
1.7 "Joint Technology Royalty-Bearing Instrument" means any
Instrument that is a Royalty-Bearing Instrument and a Quantech
Royalty-Bearing Instrument.
1.8 "Licensed Products" means any Licensed Consumable or Licensed
Instrument.
1.9 "Licensed Consumable" means any Consumable which employs
grating-coupled SPR Technology and (i) but for the license
granted herein, the manufacture, use or sale of which would
infringe any Patent Rights; or (ii) is produced through the
use of or otherwise incorporates PE Confidential Information
which has been disclosed to Newco in furtherance of the
present Agreement.
1.10 "Licensed Instrument" means any Instrument which employs
grating-coupled SPR Technology and (i) but for the license
granted herein, the manufacture, use or sale of which would
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infringe any Patent Rights; or (ii) is produced through the
use of or otherwise incorporates PE Confidential Information
which has been disclosed to Newco in furtherance of the
present Agreement.
1.11 "Medical Diagnostics" means those fields, applications and
products which: (i) under current laws and regulations as of
the Effective Date, require United States Food and Drug
Administration approval for sale or distribution or would
require such approval if the application or product
incorporating the application or field were to be sold in the
United States; and/or (ii) are useful in veterinary medicine
for the treatment of animals.
1.12 "Net Sales" means Newco's gross receipts from sales of
Licensed Products, less actual transportation costs, taxes,
and credits for returns.
1.13 "Patent Rights" means claims which provide or which, upon
issuance, would provide a right to ▇▇▇ infringers and which
result or are derived from, or claim priority from, US
provisional patent application no. 60/069,356, entitled
"Surface Plasmon Array System" (the "Provisional Patent
Application"), together with any continuations,
continuations-in-part relating to substantially the same
subject matter as the Provisional Patent Application,
divisions, reissues and/or extensions thereof and any foreign
counterparts to that claim priority from such patents and
applications, including any US or foreign patents which may
issue on any such application.
1.14 "PE Confidential Information" means all PE Technology
disclosed to Newco under the PE License Agreement or this
Agreement, but excluding any information which i) is generally
available to the public or becomes generally available to the
public through no act or failure to act of Newco, or ii) Newco
can demonstrate it possessed prior to PE's disclosure thereof
to Newco.
1.15 "PE Intellectual Property" means PE's proprietary information
as described in the Provisional Patent Application.
1.16 "PE Aggregate Licensed Technology" means technology and patent
rights licensed or sublicensed to Newco pursuant to this
Agreement, namely, PE Technology and PE Intellectual Property
(licensed to Newco under Section 2.1 of this Agreement) and
Serono Technology and Quantech Intellectual Property, as
defined in the Quantech License Agreement (which are
sublicensed to Newco under Section 2.2 of this Agreement).
1.17 "PE Technology" means the Patent Rights and the PE
Intellectual Property, together with all information provided
by PE to Newco relating thereto.
1.18 "Person" shall mean any natural person, corporation,
partnership, trust, joint venture or other entity.
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1.19 "Newco Confidential Information" means all Newco Intellectual
Property disclosed to PE under this Agreement, but excluding
any information which i) is generally available to the public
or becomes generally available to the public through no act or
failure to act of PE, or ii) PE can demonstrate it possessed
prior to Newco's disclosure thereof to PE.
1.20 "Newco Intellectual Property" means Newco's proprietary
information (including, but not limited to, data, substances,
processes, materials, formulae, know how, trade secrets,
computer programs, software, firmware, and inventions)
relating to grating-coupled SPR Technology which exists as of
the Effective Date of this Agreement or which Newco develops
or in which Newco acquires an interest during the term of this
Agreement.
1.21 "Newco License" means those licenses granted by PE to Newco in
Section 2 below.
1.22 "Newco Sublicensee" means a third party to which Newco has
granted a sublicense under Section 2 to manufacture Licensed
Products and/or Quantech Licensed Products and to sell such
manufactured Licensed Products and/or Quantech Licensed
Products to a party other than Newco.
1.23 "Newco Sublicensee Royalties" means all monies received by
Newco from a Newco Sublicensee under an agreement sublicensing
the rights granted to Newco in this Agreement, less any monies
received from the Newco Sublicensee solely to compensate Newco
for research or consulting services.
1.24 "Quantech Licensed Consumable" has the same meaning as
"Licensed Consumable" in the Quantech License Agreement.
1.25 "Quantech Licensed Product" has the same meaning as "Licensed
Product" in the Quantech License Agreement.
1.26 "Quantech Royalty-Bearing Instrument" has the same meaning as
"Royalty-Bearing Instrument" in the Quantech License
Agreement.
1.27 "Royalty Year" means a calendar year except for the first
Royalty Year shall be that period of time between the
Effective Date of this Agreement and 31 December 1999.
1.28 "Royalty-Bearing Instrument" means any Licensed Instrument
which does not utilize a new Consumable for each sample. In
the case of an instrument that combines licensed and
unlicensed technologies, the royalty shall apply uniquely to
the detector portion of the instrument and royalties will be
paid only if such detector contains SPR or PE Technology. The
detector includes a grating-coupled SPR, optics, and a sample
holder.
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1.29 "SPR" means surface plasmon resonance.
1.30 "SPR Technology" means the use of thin conductive films on a
surface or surfaces of a grating or other diffracting
substrate to conduct chemical analysis.
1.31 "Sublicense Royalties" means all monies received by Newco from
a third party to which Newco has granted a sublicense or other
rights to manufacture Licensed Products or Quantech Licensed
Products and to sell such Licensed Products or Quantech
Licensed Products to a party other than Newco.
1.32 "Territory" means the world.
1.33 "Total Royalties" means the sum of the Consumable Royalties,
Instrument Royalties and Sublicense Royalties defined in
Section 4.1 of this Agreement.
2. LICENSE and Sublicense TO NEWCO
2.1. Newco License. Subject to the terms and conditions of this
Agreement, PE hereby grants to Newco an exclusive license (the
"Newco License") under the PE Technology and PE Intellectual
Property upon the terms and conditions of this Agreement to
make, have made for it, use, and sell Licensed Products
throughout the Territory for use in all fields except Medical
Diagnostics.
2.2. Newco Sublicense. Subject to the terms and conditions of this
Agreement, PE hereby grants to Newco an exclusive, including
as to PE, sublicense (the "NEWCO Sublicense") to all of the
rights and technology to which PE has exclusive rights, and
which constitute the "Exclusive PE License", under the
Quantech License Agreement.
2.3. Newco's Right to Sublicense. Newco shall have the right to
sublicense its rights under the Newco License and Newco
Sublicense, provided that no such sublicense shall be granted
unless PEhas first approved the terms of the sublicense
agreement, which approval shall not be withheld unreasonably.
2.4. Consideration of License and Sublicense. In consideration for
providing to Newco the License and Sublicense, and for other
good and valuable consideration, the receipt of which is
hereby acknowledged, NEWCO will issue to PE 199,999 shares of
fully authorized and non-assessable Newco Common Stock, no par
value. Newco represents and warrants that Quantech is and
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shall be as of the date of the issuance of such shares to PE
the only other shareholder of Newco, and that Quantech's total
share ownership of Newco is and at such time will be 800,001
shares of Common Stock.
3. TECHNICAL ASSISTANCE
3.1 Technical Assistance to Newco. Within thirty (30) days after
the effective date of this Agreement, PE shall deliver to
Newco such documentation as is then reasonably available
reflecting the PE Technology and the PE Intellectual Property.
3.2 Ownership of Inventions. Each party shall own an undivided
one-half interest in Joint Inventions. Each inventor shall
assign all rights in a Joint Invention to PE and PE shall
assign (and hereby does assign) an undivided one-half interest
in each such Joint Invention to Newco. If either party deems
it appropriate, the parties shall retain mutually acceptable
patent counsel to render an opinion as to the patentability of
a Joint Invention and to prepare, file, and prosecute such
patent applications as may reasonably be required to provide
protection for such Joint Inventions. With respect to Joint
Inventions, PE shall not grant any license under its rights
therein to any third party to make, have made, use or sell
Medical Diagnostics and Newco shall not grant any license
under its rights therein to any third party to make, have
made, use or sell products which are not Medical Diagnostics.
Should either party choose to bring suit for infringement by a
third party of any patent in a Joint Invention, the party
bringing suit shall have the right to join the other party as
a party to the suit to the extent required by law, provided
the party bringing suit must indemnify, defend and hold the
other party harmless against any costs, fees, damages,
liabilities or other expenses relating thereto. The parties
agree to execute and exchange upon request such documents as
may be necessary or desirable to carry out the provisions of
this Section 3.2.
4. ROYALTIES AND REPORTS
4.1. Royalties. Newco shall pay Total Royalties on sales of
Licensed Products as follows:
a) Newco shall pay to PE Consumable Royalties of 4% of
Newco's Net Sales of Licensed Consumables, 4% of
Newco's Net Sales of Quantech Licensed Consumables,
and 6% of Newco's Net Sales of Joint Licensed
Consumables. Newco shall pay such Consumable
Royalties for Licensed Consumables disclosed in the
Provisional Patent Application and claimed in any
other patent application giving rise to Patent
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Rights; provided, however, that if no patent claiming
priority from the Provisional Patent Application
actually issues in the United States, Japan or the
European Patent Office within the first three Royalty
Years, the Consumable Royalty shall be reduced to 2%
of Licensed Consumables and 4% of Joint Licensed
Consumables of Newco's Net Sales until such date as
PE notifies Newco in writing that such a patent has
been issued by at least one of the United States,
Japan and the European Patent Office. On any such
date, the Consumable Royalties on any Licensed
Consumable falling within the scope of any claim of
such issued patent shall again be 4% and 6% of
Newco's Net Sales of Licensed Consumables and Joint
Licensed Consumables, respectively.
b) Newco shall pay to PE Instrument Royalties of 2% of
Newco's Net Sales of Royalty-Bearing Instruments, 2%
of Newco's Net Sales of Quantech Royalty-Bearing
Instruments, and 3% of Net Sales of Joint Technology
Royalty-Bearing Instruments. Newco shall pay such
Instrument Royalties for Royalty-Bearing Instruments
disclosed in the Provisional Patent Application and
claimed in any other patent application giving rise
to Patent Rights; provided, however, that if no
patent claiming priority from the Provisional Patent
Application actually issues in the United States,
Japan or the European Patent Office within the first
three Royalty Years, the Instrument Royalty shall be
reduced to 1% of Royalty-Bearing Instruments and 2%
of Net Sales of Joint Technology Royalty-Bearing
Instruments of Newco's Net Sales until such date as
PE notifies Newco in writing that such a patent has
been issued by at least one of the United States,
Japan and the European Patent Office. On any such
date, the Instrument Royalties on any Royalty-Bearing
Instruments falling within the scope of any claim of
such issued patent shall again be 2% of Newco's Net
Sales of Royalty-Bearing Instruments and 3% of Net
Sales of Joint Technology Royalty-Bearing
Instruments.
c) Newco shall pay Sublicense Royalties of 15% of all
Newco Sublicensee Royalties.
d) Notwithstanding the foregoing provisions of this
Section 4.1, no royalties shall be payable to PE
under Sections 4.1(a), 4.1(b) or 4.1(c) for any of
the first three million US dollars ($3,000,000) in
sales by Newco or Newco Sublicensees of products with
respect to which royalties or Sublicense Royalties
are payable pursuant to this agreement, but royalties
and Sublicense Royalties shall be payable for all
sales in excess of such first three million US
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dollars ($3,000,000). For the purposes of this
Section 4(d), each sale of any such product shall be
deemed to be for an amount equal to the higher of the
actual price received by Newco from its customer
(whether an end user customer or a distributor) or
Newco's US list retail sales price of the product
from time to time in effect. The value of sales by
Sublicensees shall be deemed to be the sales on which
royalties are paid to Newco.
e) Also notwithstanding the foregoing provisions of this
Section 4.1, in the event that EG&G has not requested
on or before February 1, 2000, pursuant to Section
11.3 of this Agreement, to sublicense exclusively all
of the rights and technology licensed to Newco
pursuant to Sections 2.1 and 2.2 of this Agreement in
the fields of (i) food and beverages, (ii)
environmental and (iii) chemical and industrial
(collectively, the "EG&G Fields"), and such rights
are not sublicensed to EG&G, then Newco shall be
relieved of its obligations to pay royalties to PE
for License Products sold exclusively for use in one
or more EG&G Fields, and, instead of paying such
royalties to PE, Newco shall pay the royalties
otherwise due PE directly to Quantech.
4.2 Status Reports. If Newco shall not have begun selling Licensed
Products by December 31, 2000, at the end of each Calendar
Quarter thereafter Newco shall deliver to PE and Quantech a
Statement of Intent signed by a duly authorized employee of
Newco (initially ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇) stating that Newco is
continuing to pursue research and development efforts with an
intent to commercialize, or is continuing commercialization
of, Licensed Products. The obligation to provide such
quarterly Statements of Intent shall terminate upon the
earlier of the sale of the first Licensed Product or payment
of the first royalty payment under Section 4.1. If Newco shall
fail to timely deliver a Statement of Intent, PE may notify
Newco of this failure. If Newco fails to deliver the Statement
of Intent within one month of PE's notice, Newco's license
rights granted in Section 2 shall immediately terminate, and
all of Newco's right, title and interest in and to Newco
Intellectual Property, and instrumentation, breadboards and
other equipment relating to or incorporating Newco
Intellectual Property, and physical possession thereof, will
be transferred and turned over to PE in its then "as is"
condition. Notwithstanding anything to the contrary contained
herein, it will be deemed an immediate failure to provide a
status report in the event of the entry of a decree or order
for relief by a court having jurisdiction over Newco in an
involuntary case under the federal bankruptcy laws, or such
similar laws of any other country as now or hereafter
constituted, or any other applicable federal, state, or
foreign bankruptcy, insolvency or other similar law, or
appointing a receiver, liquidator, assignee, custodian,
trustee, sequestrator (or similar official) of Newco or for
any substantial part of its property, or ordering the
winding-up or liquidation of its affairs and the continuance
of any such decree or order unstayed and in effect for a
period of 60 consecutive days, or the commencement by Newco of
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a voluntary case under the federal bankruptcy laws, or such
similar laws of any other country as now constituted or
hereafter amended, or any other applicable federal, state or
foreign bankruptcy, insolvency or other similar law, or the
consent by it to the appointment of or taking possession by a
receiver, liquidator, assignee, trustee, custodian,
sequestrator (or similar official) of Newco or for any
substantial part of its property, or the making by it of any
assignment for the benefit of creditors, or the failure of
Newco generally to pay its debts as such debts become due, or
the taking of action by Newco in furtherance of any of the
foregoing."
4.3 Reports and Payments. Within thirty (30) days after the end of
each Calendar Quarter, Newco shall provide PE with a written
report itemizing the number of Licensed Consumables and the
number of Licensed Instruments sold, the Net Sales price of
each Licensed Product and a calculation of the Royalty for
such Calendar Quarter. PE shall respond in writing to confirm
agreement with reported sales and proposed payments which will
cause Newco to pay the entire Total Royalties to PE within 30
days.
4.4 Records. Newco agrees to keep accurate written records
sufficient in detail to enable the royalties payable under
this Agreement by Newco to be determined and verified. Such
records for a particular calendar year shall be retained by
Newco for a period consistent with its then corporate record
retention policy.
4.5 Audit of Records. Upon reasonable notice and during regular
business hours, Newco shall make available such records for
audit by an independent accountant selected by PE to verify
the accuracy of the reports provided to PE. Such audits shall
be at the expense of PE, provided, however, that if any such
audit reveals underpayment of royalties by the greater of
$50,000 or 10% then Newco shall pay the cost of such audit.
5. TERM AND TERMINATION
5.1. Term. Unless license rights are otherwise terminated under
provisions of this Article 5, royalties owed pursuant to this
Agreement shall continue for twenty years from the execution
of this Agreement or until the expiration of all Patent
Rights, whichever is later, after which the Newco License
shall be deemed fully paid-up.
5.2. Termination. If either party breaches any of the material
terms, conditions or agreements of this Agreement, then the
other party may terminate this Agreement, at its option and
without prejudice to any of its other legal and equitable
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rights and remedies, by giving the breaching party thirty (30)
days notice in writing, particularly specifying the breach.
Such notice of termination shall not be effective if the other
party cures the specified breach within such thirty (30) day
period, or, in the case of breaches not reasonably curable
within such thirty (30) days, if such party commences the cure
thereof within such thirty (30) days and diligently thereafter
prosecutes such cure.
5.3. Survival. Without limitation, termination of this Agreement
shall not relieve Newco from its obligation to make all
royalty payments and reports, including a terminal report,
provided for herein. PE shall have the right to make a final
audit within 60 days after receiving Newco's terminal report.
5.4. Sale of Inventory. Upon termination of the Licenses pursuant
to Section 5.2, Newco shall cease production of Licensed
Products. Newco shall be permitted to sell its inventory of
Licensed Products, and shall provide PE with a terminal
royalty report within 30 days after the last such sale of
Licensed Products.
5.5. Sublicenses. Termination of this Agreement shall cause
sublicenses granted hereunder to revert to PE.
5.6. End-User Licenses. Any license to end users will remain in
effect upon termination of this agreement and at no additional
payment by the end user.
5.7 Transfer of Certain Property Upon Termination. Upon any
termination of this Agreement, except solely a termination by
reason of a breach by PE, all of Newco's right, title and
interest in and to Newco Intellectual Property, and
instrumentation, breadboards and other equipment relating to
or incorporating Newco Intellectual Property, and physical
possession thereof, will be transferred and turned over to PE
in its then "as is" condition.
6. CONFIDENTIALITY
6.1. Intellectual Property. The parties acknowledge that the PE
Confidential Information and the Newco Confidential
Information are proprietary and confidential. The parties
respectively agree, therefore, to make all commercially
reasonable efforts to preserve the confidentiality of such
information. Notwithstanding the foregoing, a party may
disclose such information as follows:
a) If disclosure is required by any applicable
government agency, regulation, or statute; however,
the other party shall be notified in time to permit
it to obtain a protective order with respect to such
Confidential Information; or
b) If prior written consent is obtained from the other
party.
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6.2. Disclosure of Agreement. Neither party may make any public
announcement regarding this Agreement or otherwise disclose
the terms of this Agreement without the prior approval of the
other party except as required by law.
7. NEWCO'S REPRESENTATIONS, WARRANTIES and AGREEMENTS
7.1. Right to Grant License. Newco represents and warrants to PE
that it has the full and unrestricted right to enter into this
Agreement.
7.2. Product Liability. Newco hereby agrees to indemnify, defend
and hold PE harmless from and against any and all claims,
actions, liabilities, damages, losses, costs and expenses,
including reasonable attorneys' fees, in connection with any
product liability claims arising in connection with this
License Agreement or any Licensed Products or other products
Newco manufactures, has manufactured, uses or sells hereunder.
7.3. Limitation of Representations. Nothing in this Agreement shall
be construed as (i) a warranty or representation by Newco that
any Licensed Product or any process practiced under the PE
License does not infringe any patents of third persons; or
(ii) a requirement that Newco file any patent application,
secure any patent, maintain any patent in force, or bring or
prosecute actions or suits against third parties for
infringement of any patent; or (iii) granting by implication,
estoppel, or otherwise any license other than that
specifically granted herein.
7.4. DISCLAIMER OF WARRANTIES. THE WARRANTY SET FORTH ABOVE IS
PROVIDED ONLY TO PE AND IS IN LIEU OF ALL OTHER WARRANTIES,
EXPRESS OR IMPLIED, WHICH ARE HEREBY DISCLAIMED AND EXCLUDED
BY NEWCO WITH RESPECT TO THE LICENSED PRODUCTS, INCLUDING
WITHOUT LIMITATION, ANY WARRANTY OF MERCHANTABILITY, FITNESS
FOR A PARTICULAR PURPOSE, NON-INFRINGEMENT AND WARRANTIES
ARISING FROM COURSE OF DEALING OR USAGE OF TRADE. NO AGENT,
EMPLOYEE OR REPRESENTATIVE OF NEWCO HAS ANY AUTHORITY TO BIND
PE TO ANY AFFIRMATION, REPRESENTATION OR WARRANTY EXCEPT AS
STATED IN THIS WRITTEN WARRANTY POLICY.
8. PE's REPRESENTATIONS AND WARRANTIES
8.1. Right to Grant License. PE represents and warrants to Newco
that it has the full and unrestricted right to enter into this
Agreement and to grant the licenses set forth in Section 2.
8.2. Product Liability. PE hereby agrees to indemnify, defend and
hold Newco harmless from and against any and all claims,
actions, liabilities, damages, losses, costs and expenses,
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including reasonable attorneys' fees, in connection with any
product liability claims arising in connection with this
License Agreement or any Licensed Products PE manufactures,
has manufactured, uses or sells hereunder.
8.3. Limitation of Representations. Nothing in this Agreement shall
be construed as (i) a warranty or representation by PE as to
the validity or scope of any Patent Rights or that any
Licensed Product or any process practiced under any license or
sublicense granted in this Agreement does not infringe any
patents of third persons; or (ii) a requirement that PE file
any patent application, secure any patent, maintain any patent
in force, or bring or prosecute actions or suits against third
parties for infringement of any patent; or (iii) granting by
implication, estoppel, or otherwise any license other than
that specifically granted herein.
8.4. DISCLAIMER OF WARRANTIES. THE WARRANTY SET FORTH ABOVE IS
PROVIDED ONLY TO NEWCO AND IS IN LIEU OF ALL OTHER WARRANTIES,
EXPRESS OR IMPLIED, WHICH ARE HEREBY DISCLAIMED AND EXCLUDED
BY PE, WITH RESPECT TO THE PATENT RIGHTS, PE KNOW-HOW OR ANY
LICENSED PRODUCTS, INCLUDING WITHOUT LIMITATION, ANY WARRANTY
OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE,
NON-INFRINGEMENT AND WARRANTIES ARISING FROM COURSE OF DEALING
OR USAGE OF TRADE. NO AGENT, EMPLOYEE OR REPRESENTATIVE OF PE
HAS ANY AUTHORITY TO BIND PE TO ANY AFFIRMATION,
REPRESENTATION OR WARRANTY EXCEPT AS STATED IN THIS WRITTEN
WARRANTY POLICY.
9. LITIGATION
9.1. Charges of Newco Infringement. If notice is received by either
party charging that any Licensed Product(s) made by, made for,
used by or sold by Newco infringes any patent, copyright,
trade secret, intellectual property, or other proprietary
right of such third party, the party receiving such notice
will promptly notify the other party to this Agreement. Newco
and PE agree to enter into discussions, and where necessary,
to work out, if possible, a mutually acceptable change in such
Licensed Product(s) to avoid such alleged infringement. If no
such mutually satisfactory change can be worked out, Newco and
PE agree to collaborate and enter into discussions with such
third party for the purpose of negotiating a settlement. If no
settlement can be agreed upon, Newco shall have the right but
not the obligation to defend any suit for infringement brought
against it by the third party. If Newco shall elect not to
defend such an infringement suit, Newco shall promptly notify
PE to that effect and PE shall thereafter have the right but
not the obligation to defend the suit.
9.2. Charges of Third Party Infringement. If either party knows or
has reason to believe that any rights in any Joint Invention
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or any rights under the Patent Rights, Newco Intellectual
Property or PE Intellectual Property licensed hereunder is
being infringed directly, by inducement, or contributorily by
a third party, the party possessing such knowledge or belief
shall promptly notify the other party thereof. PE shall have
the first right to commence judicial proceedings for its own
benefit to attempt to stop such infringement but shall not be
obligated to do so. If, within one hundred eighty (180) days
after first obtaining such knowledge or belief concerning
infringement, PE has failed either to stop such infringement
or to initiate judicial proceedings, or if PE in writing so
authorizes Newco, Newco shall have the right to initiate for
its own benefit such judicial proceedings in its own name
provided, however, that Newco shall indemnify, defend and hold
PE harmless against any costs, fees, damages, liabilities or
other expenses relating thereto. The party initiating judicial
proceedings shall be entitled to retain any award resulting
therefrom.
9.3. Validity and Construction. If a judgment or decree is entered
in any proceeding in which the validity or infringement of any
claim of any Patent Rights is in issue, which judgment or
decree is not appealed or further appealable (such judgment or
decree being hereinafter referred to as an "Irrevocable
Judgment"), the validity of and/or construction placed upon
any such claim by the Irrevocable Judgment shall thereafter be
followed. If there are two or more conflicting Irrevocable
Judgments with respect to the same claim, the decision of the
higher court shall be followed. If an Irrevocable Judgment
holds one or more of the Patent Rights or any claims thereof
to be invalid or unenforceable, Newco hereby agrees, in
consideration of its freedom to make, use and sell Licensed
Products prior to such Irrevocable Judgment without fear of
suit by PE, and of PE's refraining from bringing suit against
Newco for infringement, and regardless of whatever action
Newco might take subsequent to such Irrevocable Judgment, that
it shall not be entitled to the retention or return of any
royalties, Deficiency Payment or Minimum Royalty Payment
payable or paid by Newco to PE hereunder prior to the date of
such Irrevocable Judgment.
10. MISCELLANEOUS PROVISIONS
10.1. Trademarks. Nothing in this Agreement shall be deemed to grant
either party any right to use any trademark owned by the other
party in connection with the sales of the party's products.
10.2. Marking. Newco shall use all commercially reasonable efforts
to see to it that all Licensed products sold shall be
appropriately marked with the applicable patent number(s) of
the Patent Rights, in conformity with applicable law.
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10.3. LIMITATION OF REMEDIES. PE SHALL HAVE NO LIABILITY TO ANY
PERSON FOR INDIRECT, INCIDENTAL, CONSEQUENTIAL OR SPECIAL
DAMAGES OF ANY DESCRIPTION, WHETHER ARISING OUT OF WARRANTY OR
CONTRACT, NEGLIGENCE OR OTHER TORT, OR OTHERWISE, INCLUDING,
WITHOUT LIMITATION, ANY DAMAGES RESULTING FROM LOST PROFITS OR
LOST BUSINESS OPPORTUNITY.
10.4. Survival. All of the representations, warranties, and
indemnifications made in this Agreement and all terms and
provisions hereof intended to be observed and performed by the
parties after the termination hereof, including the
obligations of confidentiality, shall survive such termination
and continue thereafter in full force and effect.
10.5. Complete Agreement. This Agreement constitutes the entire
agreement of the parties with respect to the subject matter
described in this Agreement and shall supersede all previous
negotiations, commitments or writings regarding such subject
matter, including the December Agreement.
10.6. Waiver, Discharge, etc. This Agreement may not be released,
discharged, abandoned, changed or modified in any manner,
except by an instrument in writing signed on behalf of each of
the parties to this Agreement by their duly authorized
representatives. The failure of either party to enforce at any
time any of the provisions of this Agreement shall in no way
be construed to be a waiver of any such provision, nor in any
way to affect the validity of this Agreement or any part of it
or the right of either party after any such failure to enforce
each and every such provision. No waiver of any breach of this
Agreement shall be held to be a waiver of any other or
subsequent breach.
10.7. Applicable Law. This Agreement shall be governed by, and
interpreted in accordance with the laws of the State of New
York.
10.8. Successors and Assigns. This Agreement shall be binding upon
and inure to the benefit of the parties to this Agreement and
their successors or assigns, provided that, except as
otherwise provided herein, the rights and obligations of
either party under this Agreement may not be assigned without
the written consent of the other party, which consent shall
not be unreasonably withheld.
10.9. Execution in Counterparts. This Agreement may be executed in
one or more counterparts, all of which shall be considered one
and the same agreement, and shall become a binding agreement
when one or more counterparts have been signed by each party
and delivery to the other party.
10.10. Titles and Headings; Construction. The titles and headings to
Sections herein are inserted for the convenience of reference
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only and are not intended to be a part of or to affect the
meaning or interpretation of this Agreement. This Agreement
shall be construed without regard to any presumption or other
rule requiring construction hereof against the party causing
this Agreement to be drafted.
10.11. Benefit. Nothing in this Agreement, expressed or implied, is
intended to confer on any person other than the parties to
this Agreement or their respective successors or assigns, any
rights, remedies, obligations or liabilities under or by
reason of this Agreement.
10.12. Notices. Any notice or other communication required or
permitted under this Agreement shall be in writing and shall
be deemed to have been given, when received, if personally
delivered or delivered by telegram, telex or facsimile, or,
when deposited, if placed in the U.S. Mails for delivery by
registered or certified mail, return receipt requested,
postage prepaid and addressed to the appropriate party at the
addresses set forth on the first page of this Agreement.
Addresses may be changed by written notice given pursuant to
the provisions of this paragraph; however, any such notice
shall not be effective, if mailed, until five (5) working days
after depositing in the U.S. Mails or when actually received,
whichever occurs first.
10.13. Severability. If any provision of this Agreement is held
invalid by a court of competent jurisdiction, the remaining
provisions shall nonetheless be enforceable according to their
terms. Further, if any provision is held to be overbroad as
written, such provision shall be deemed amended to narrow its
application to the extent necessary to make the provision
enforceable according to applicable law and shall be enforced
as amended.
10.14. Execution of Further Documents. Each party agrees to execute
and deliver without further consideration any further
applications, licenses, assignments or other documents, and to
perform such other lawful acts as the other party may
reasonably require to fully secure and/or evidence the rights
or interests herein.
11. ADDITIONAL AGREEMENTS
11.1 Reports to PE. Newco shall inform PE from time to time at PE's
request made no more often than one each calendar month unless
Newco otherwise agrees, in such level of detail as PE may from
time to time specify, of any and all of research and
development activities undertaken or carried out and
developments and progress made in developing technology or
conceiving new inventions, or applying technology or
inventions to products and potential products, by or under the
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direction of Newco during the immediately preceding month, and
generally keeping PE up to date on the financial state and the
business and technological affairs and progress of Newco. All
such information will be deemed confidential information of
Newco, except to the extent it is generally available to the
public or becomes generally available to the pubic through no
act or failure to act of PE, or PE can demonstrate it
possessed prior to Newco's disclosure to PE. Such reports will
be oral, unless otherwise requested by PE. Newco shall also
make a senior officer knowledgeable about Newco's research and
development efforts and technical research reasonably
available to PE to respond to inquiries from PE about
technical research and development activities. Such officer,
and his designees, shall respond to PE reasonable inquires
made from time to time by PE.
11.2 Right of First Negotiation. During the five (5) year period
commencing with the date of this agreement, Newco shall not
grant any rights in or to any PE Aggregate Licensed Technology
to any third party, or enter into any agreement or arrangement
with any third party for the manufacture, use, sale or other
distribution of any product that incorporates or uses, or was
manufactured using, any PE Aggregate Licensed Technology or
the manufacture, use or sale of which would constitute, but
for the license granted to Newco pursuant to this Agreement,
an infringement of a claim of Patent Rights or "Patent Rights"
as defined in the Quantech License Agreement, or make a
proposal or enter into a letter or intent setting forth
possible terms or conditions as to any such grant, agreement
or arrangement, without first notifying PE in writing of the
proposed grant, agreement or arrangement (a "Proposed
Agreement Notice") and, if PE notifies Newco in writing within
forty five (45) days of its receipt of such notice from Newco
that it desires to negotiate with Newco regarding the grant of
such rights or entering into such an agreement or arrangement,
entering into negotiations with PE with respect to the grant
of such rights to or the entering into such an arrangement or
agreement with PE. Each Proposed Agreement Notice will
describe the proposed grant, agreement or arrangement in
reasonable detail. Newco agrees that it will not grant any
rights described in a Proposed Agreement Notice to any third
party, or enter into any agreement or other arrangement
described in such notice, with a third party except during the
180 day period commencing 60 days after the receipt by PE of
such notice and ending 240 days after the date of such receipt
(a "Third Party Agreement Period"). If the grant of rights is
not made, or such agreement or arrangement not entered into,
within said 180 day period, the rights contained herein shall
be reinstated as to all future grants of rights, agreements or
arrangements covering any of the prospective grants,
agreements or arrangements described in the Proposed Agreement
Notice. Nothing herein contained shall be deemed to prevent
Newco from discussing possible terms of any such proposed
grant of rights, agreement or arrangement with a third party,
provided that Newco does not make a proposal, enter into a
letter of intent or execute a binding agreement with respect
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thereto except during the Third Party Agreement Period
applicable thereto. As used herein the term "third party"
includes, without limitation, any direct or indirect parent
company, direct or indirect subsidiary or any affiliate of
Newco, except solely PE.
11.3 Right of Sublicense to EG&G. Notwithstanding anything
contained in this Agreement to the contrary, to enable the
implementation of agreements in principle entered into between
Quantech, PE and EG&G, Inc. in connection with the sale of
PE's Analytical Instruments Division to EG&G, Newco shall have
the right, if requested by EG&G on or before February 1, 2000,
to sublicense exclusively (even as to Newco) to EG&G all of
the rights and technology licensed to Newco pursuant to
Sections 2.1 and 2.2 of this Agreement in the fields of (i)
food and beverages, (ii) environmental and (iii) chemical and
industrial, but not in any other field, to make, have made for
it, use, and sell Licensed Products and Quantech Licensed
Products throughout the Territory in such fields. Newco agrees
that it shall only grant such rights and technology to EG&G
pursuant to a sublicense agreement substantially similar in
all substantive respects to the Quantech License Agreement
that has been approved in advance by PE, and that Newco shall
not permit any amendment to such sublicense agreement without
the consent of PE. In the event that EG&G does not request
such sublicense on or before February 1, 2000, Newco shall be
under no obligation to sublicense any such rights and
technology to EG&G.
IN WITNESS WHEREOF, each of the parties has caused this Agreement to be executed
in the manner appropriate to each, effective as of the date first above written.
Newco Ltd. The ▇▇▇▇▇▇-▇▇▇▇▇ Corporation
By:_______________________________________ By:_______________________________
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇, President and Secretary Name:_____________________________
Title:____________________________
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