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EXHIBIT 10.22
PROPERTY OF
ARGONAUT TECHNOLOGIES INC.
[The ▇▇▇▇▇▇▇ Laboratory Logo]
June 30, 1999
Copy via Telefax -- ▇▇▇-▇▇▇-▇▇▇▇
Original via Federal Express
▇▇▇ ▇. ▇▇▇▇▇▇, Vice President
Product Development
Argonaut Technologies
▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇ ▇
▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
RE: LICENSE AGREEMENT
Dear Jan:
Enclosed, herewith, please find one fully executed original of the License
Agreement between Argonaut Technologies, Inc. and The ▇▇▇▇▇▇▇ Laboratory.
Jan, we would appreciate hearing from you as to what your projected
timetable is for marketing your Entry Level Parallel Reactor System.
I might add that it was a pleasure working with you and your attorney to
finalize the Agreement.
Sincerely,
/s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇
-------------------------
▇▇▇▇▇ ▇▇▇▇▇▇▇
House Counsel
DE:tay
Enclosure
Cc: ▇▇▇▇▇ ▇▇▇▇▇▇▇
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LICENSE AGREEMENT
This License Agreement ("Agreement"), effective as of the 30th day of June,
1999 (the "Effective Date"), is entered into by and between Argonaut
Technologies, Inc., a Delaware corporation having offices at ▇▇▇ ▇▇▇▇▇▇▇▇▇▇
▇▇▇▇, ▇▇▇▇▇ ▇, ▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, U.S.A. ("Argonaut"), and The
▇▇▇▇▇▇▇ Laboratory a non-profit corporation having offices at ▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇-1500 ("▇▇▇▇▇▇▇").
WITNESSETH
A. WHEREAS, ▇▇▇▇▇▇▇ is the owner of U.S. Patent 4, 911, 555, and has the
right to grant licenses under said Patent, subject only to a royalty-free,
nonexclusive license heretofore granted to the United States Government;
B. WHEREAS, ▇▇▇▇▇▇▇ desires to have the Patent developed and
commercialized to benefit the public and is willing to grant a license
thereunder;
C. WHEREAS, ▇▇▇▇▇▇▇▇ has represented to ▇▇▇▇▇▇▇, to induce ▇▇▇▇▇▇▇ to
enter into this License Agreement, that Argonaut is experienced in the
development production, manufacturing, marketing, and sale of products Similar
to Products (as later defined herein) and that it will commit itself to a
thorough, vigorous, and diligent program of exploiting the Patent so that
public utilization can result therefrom.
▇. ▇▇▇▇▇▇▇ desires to grant to Argonaut the right to develop,
manufacture, and distribute Products (as defined below) using the Licensed
Patent (as defined below).
1. DEFINITIONS
a. "Licensed Patent" means U.S. Patent 4,911,555, Magnetic Stirrer For
Multiple Samples including all revisions, extensions, substitutions,
re-registrations, examinations, re-validations and patents of additions as well
as any foreign patents covering any claims described in the foregoing patent.
b. "Products" means any revenue producing product or part thereof which is
covered in whole or in part by an issued, unexpired claim of the Licensed
Patent, which is developed, manufactured, distributed or licensed by or through
Argonaut using the Licensed Patent, including that product specifically set
forth in Exhibit A.
c. "Field" means all organic and inorganic reaction specific applications.
d. "Revenue" means any funds or other consideration Argonaut actually
receives from the sale of the Products.
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e. "Year" shall mean each twelve (12) month period following the
Effective Date.
2. LICENSE GRANT.
a. Licensed Patent. ▇▇▇▇▇▇▇ hereby grants to Argonaut a worldwide
Field exclusive, sub-licensable, worldwide license, under the Licensed Patent,
to develop, manufacture, have manufactured, modify, use, market, service, sell
and otherwise distribute the Products. ▇▇▇▇▇▇▇ reserves the right to practice
under the Patent solely for its own research purposes.
b. Distributors. Argonaut may exercise its distribution rights
granted pursuant to Section 2 above through the use of third party
distributors, resellers, dealers and sales representatives (collectively,
"Distributors").
c. Products. Argonaut agrees that Products leased or sold in the United
States shall be manufactured substantially in the United States.
3. PATENT NOTICES.
Argonaut shall place appropriate patent markings on Products used,
sold or otherwise distributed hereunder during the term of this Agreement.
4. CONFIDENTIALITY.
Each party agrees that the terms and conditions of this Agreement
shall be treated as Confidential Information; provided that each party may
disclose the terms and conditions of this Agreement; (i) as required by any
court or other government body or as otherwise required by law; (ii) to legal
counsel, employees, and trustees; (iii) in confidence, to accountants, banks,
and financing sources and their advisors; (iv) in confidence, in connection
with the enforcement of this Agreement or rights under this Agreement.
5. INDEMNIFICATION AND INTELLECTUAL PROPERTY
a. By ▇▇▇▇▇▇▇. ▇▇▇▇▇▇▇ shall at Argonaut's request, notify Argonaut
of all countries in which it is seeking patents covering the Products. ▇▇▇▇▇▇▇
shall promptly after discovery notify Argonaut of any material infringement of
which it becomes aware related to any patents covering the Products. ▇▇▇▇▇▇▇
shall have the right to bring, defend, and maintain any appropriate suit, action
or proceeding involving any such infringement at ▇▇▇▇▇▇▇'▇ expense. In the event
that ▇▇▇▇▇▇▇ fails to take any such action in a reasonable time, ▇▇▇▇▇▇▇ shall
give Argonaut all authority, information and assistance necessary to pursue,
defend or settle any such suit, action or proceeding and Argonaut shall pay the
expenses (including attorneys' fees) incurred in connection with any such suit,
action or proceeding. In the event that Argonaut lack standing to bring any such
suit, action or proceeding, then Argonaut may, for such purposes, use the name
of ▇▇▇▇▇▇▇ as a party plaintiff
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provided that no settlement, consent judgment, or other voluntary final
disposition of the suit may be entered into without the consent of ▇▇▇▇▇▇▇,
which consent shall not unreasonably be withheld. Any amounts recovered in any
suit, action or proceeding under this Section 5(a) by either party, whether by
judgment or settlement (including, but not limited to, any royalties or other
consideration received pursuant to any sublicenses or other arrangements
entered into as part of settlement), shall be retained by that party.
b. By Argonaut. Argonaut shall indemnify, hold harmless and, at
▇▇▇▇▇▇▇'▇ request, defend ▇▇▇▇▇▇▇ from and against any and all claims,
liabilities and expenses (including reasonable fees of attorneys and other
professionals) arising out of or in connection with Argonaut's use,
manufacture, sale, lease, distribution, or advertisement of the Products,
provided ▇▇▇▇▇▇▇ promptly notifies Argonaut of any such claim and permits
Argonaut to control the defense and settlement thereof.
6. LIMITATION OF LIABILITY
In no event shall either party be liable to the other party for any
special, incidental or consequential damages arising out of this Agreement,
the use of the Licensed Patent or distribution of Products by Argonaut or any
third party, whether under theory of contract, tort (including negligence),
indemnity, product liability or otherwise. Notwithstanding the foregoing, this
Section 6 shall not apply to Section 5(b) of this Agreement.
7. FIELD EXCLUSIVITY.
Unless otherwise agreed in writing, ▇▇▇▇▇▇▇ shall only allow Argonaut
Field exclusive distribution rights for Products.
8. TECHNOLOGY LICENSE FEE.
a. Royalty. Unless otherwise agreed in writing, ▇▇▇▇▇▇▇▇ agrees to
pay ▇▇▇▇▇▇▇ a per unit royalty for each of the Products.
b. Royalty Amount. Unless otherwise agreed in writing, the per unit
Royalty Amount will be set separately for each instrument as defined as
Products, as specifically set forth in Exhibit A.
c. Payment. Unless otherwise agreed in writing, Payment shall
include all Royalty Amounts for Products distributed in Argonaut's previous
quarter. The Payment will be made in USD to ▇▇▇▇▇▇▇ quarterly. The Payment
shall be made to ▇▇▇▇▇▇▇ sixty (60) days from the end of Argonaut's fiscal
quarter and shall include all Payments for Products distributed the previous
fiscal quarter.
9. TERM AND TERMINATION.
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a. Term.
(i) This Agreement shall continue in full force and effect until
the expiration of the Patent, unless earlier terminated as provided in Section
9(b).
(ii) At the end of the Term, Argonaut retains all rights granted
hereunder. However, all obligations to pay the Royalty and Payments discontinue.
b. Termination.
This Agreement will terminate automatically without notice, (i) upon
the institution by or against Argonaut of insolvency, receivership or
bankruptcy proceedings or any other proceedings for the settlement of
Argonaut's debts, (ii) upon Argonaut's making an assignment for the benefit of
creditors, or (iii) in the event of Argonaut's dissolution or insolvency. This
Agreement will also terminate should Argonaut fail to make any payment due and
payable to ▇▇▇▇▇▇▇ hereunder, or upon any material breach or default of this
Agreement by Argonaut, upon thirty (30) days notice. Upon the expiration of the
thirty (30) day period, if Argonaut shall not have made such payments or cured
any such material breach, the rights, privileges, and license granted hereunder
shall automatically terminate.
c. Survival. The parties' rights and obligations under Sections 1,
3, 4, 5, 6, 9(c) and 10 shall survive any termination of this Agreement.
d. No Waiver. The failure of either party to enforce any provision
of this Agreement shall not be deemed a waiver of such provision.
10. MISCELLANEOUS PROVISIONS.
a. Assignment. Neither party may transfer or assign its rights or
obligations under this Agreement without the prior written consent of the other
party. Subject to the foregoing sentence, this Agreement will be binding upon
and inure to the benefit of the parties hereto, their successors and assigns.
Successors of Argonaut shall include any party which acquires Argonaut or into
which Argonaut merges.
b. No Implied Waivers. The failure of either party at any time to
require performance by the other of any provision hereof shall not affect the
right of such party to require performance at any time thereafter, nor shall the
waiver of either party of a breach of any provision hereof be taken or held to
be a waiver of a provision itself.
c. Severability. If any provision of this Agreement is held to be
invalid by a court of competent jurisdiction, then the remaining provisions
will nevertheless remain in full force and effect. The parties agree to
renegotiate in
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good faith those provisions so held to be invalid to be valid, enforceable
provisions which provisions shall reflect as closely as possible the original
intent of the parties, and further agree to be bound by the mutually agreed
substitute provisions.
d. Force Majeure. Except for payment of monies, neither party shall
be liable for failure to fulfill its obligations under this Agreement,
including, but not limited to, acts of God, manmade or natural disasters,
earthquakes, fire, riots, flood, material shortages, strikes, delays in
transportation or inability to obtain labor or materials through its regular
sources. The time for performance of any such obligations shall be extended for
the time period lost by reason of the delay.
e. Conflicting Terms. The parties agree that the terms and
conditions of this Agreement shall prevail, notwithstanding contrary or
additional terms, in any purchase order, sales acknowledgement, confirmation or
any other document issued by either party effecting the purchase and/or sale of
Products, unless the parties agree otherwise in writing.
f. Headings. Headings of paragraphs herein are inserted for
convenience of reference only and shall not affect the construction or
interpretation of this Agreement.
g. Notice. Any notice required or permitted to be given under this
Agreement shall be delivered (i) by hand, (ii) by registered or certified mail,
postage prepaid, return receipt requested, to the address of the other party
first set forth above, or to such other address as a party may designate by
written notice in accordance with this Section 10(g), (iii) by overnight
courier, or (iv) by fax with confirming letter mailed under the conditions
described in (ii) above. Notice so given shall be deemed effective when
received, or if not received by reason of fault of addressee, when delivered.
h. Entire Agreement. This Agreement contains the entire understanding
of the parties with respect to the subject matter hereof and supersedes all
prior agreements relating thereto, written or oral, between the parties.
Amendments to this Agreement must be in writing, signed by the duly authorized
officers of the parties. The terms of any purchase order are expressly excluded.
i. Governing Law. This Agreement shall be governed by and construed
under the law of the State of Maine, without regard to conflict of laws
principles or the U.N. Convention on Contracts for the International Sale of
Goods.
j. Arbitration. Any dispute or claim arising out of or in relation to
this Agreement, or the interpretation, making, performance, breach or
termination thereof, shall be finally settled by binding arbitration under the
Rules of
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conciliation and Arbitration of the International Chamber of Commerce as
presently in force ("Rules") and by three (3) arbitrators appointed in
accordance with said Rules. Judgment on the award rendered may be entered in any
court having jurisdiction thereof. The place of arbitration shall be ▇▇▇▇▇▇▇
County, Maine, U.S.A. The parties may apply to any court of competent
jurisdiction for temporary or permanent injunctive relief, without breach of
this Section 10(j) and without any abridgment of the powers of the arbitrators.
IN WITNESS WHEREOF, the parties hereto have duly executed this Agreement
effective as of the Effective Date.
THE ▇▇▇▇▇▇▇ LABORATORY ARGONAUT TECHNOLOGIES, INC.
By: /s/ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ By: /s/ ▇▇▇ ▇. ▇▇▇▇▇▇
------------------ -------------------------------------
Name: ▇▇▇▇▇▇▇ ▇▇▇▇▇▇ Name: ▇▇▇ ▇. ▇▇▇▇▇▇
Title: Director Title: Vice President Product Development
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EXHIBIT A
PRODUCTS AND DOCUMENTATION
Products:
A. ENTRY LEVEL PARALLEL REACTOR SYSTEM
1) Manual Parallel Organic and Inorganic Reactor System
- Number of Reactors <24
- Rotary Stir Magnet Mixing
- Heating
- Cooling
- Inert Reaction Environment
- Approximate Average Unit Revenue: USD 2,500.00
Royalty Amounts:
A. ENTRY LEVEL PARALLEL REACTOR SYSTEM: USD 100.00 PER UNIT
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