Exhibit 10.11 CONFORMED COPY
Dated 2nd December 1997
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▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇ & OTHERS (1)
and
▇▇▇▇▇▇ VISION INC. (2)
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PATENT LICENCE AGREEMENT
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▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇
T ▇▇▇(▇)▇▇▇ ▇▇▇ ▇▇▇▇
F ▇▇▇(▇)▇▇▇ ▇▇▇ ▇▇▇▇
PATENT LICENCE AGREEMENT
This Patent Licence Agreement is entered into as of December 2nd, 1997 by ▇▇▇▇▇▇
VISION INC. whose principal place of business is at 10 Faraday, ▇▇▇▇▇▇, ▇▇
▇▇▇▇▇, ▇▇▇ (hereinafter "CV") and ▇▇▇▇▇▇▇▇ ▇ ▇▇▇▇▇▇ of Red Lodge, ▇▇▇ ▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇ and
▇▇▇▇ ▇▇▇▇▇▇▇▇ (all care of the said ▇▇▇▇▇▇▇▇ ▇ ▇▇▇▇▇▇) (together "the Patent
Owners").
WHEREAS: The Patent Owners are owners of a series of patents and patent
applications
and
WHEREAS: CV wishes to secure a licence for itself and its affiliates under those
patents and patent applications to manufacture contact lenses
and
WHEREAS: In consideration of The ▇▇▇▇▇▇ Companies, Inc. entering into the
Umbrella Agreement the Patent Owners are willing to grant such a licence on the
terms and conditions herein
Now it is hereby agreed as follows:
1. In this Agreement the following expressions shall have the following
meanings:-
Affiliate shall mean any company which directly or
indirectly controls or is controlled by or is
under common control with another company
including as a subsidiary or holding company.
For the purposes of this definition,
"control" means the ownership of 100% of the
issued share capital in or the legal power to
direct or cause the direction of the general
management and policies of the company in
question.
Agreement shall mean this Patent Licence Agreement.
AVC shall mean Aspect Vision Care Limited
AVC Licence shall mean the Patent Licence Agreement
made between AVC and the Patent Owners
dated 20 December 1993.
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[ * ] shall mean [ * ] Limited
[ * ] Option shall mean the Option Agreement for the grant
of a Patent and Knowhow Licence to [ * ]
dated 13 January 1997 between the Patent
Owners and [ * ].
CLT shall mean Contact Lens Technologies Limited
CLT Licence shall mean the Patent Licence Agreement made
between CLT and the Patent Owners dated 4
December 1995.
Earn Out Agreement shall mean the Agreement to be entered into
on even date hereof between A D Galley,
Aspect Vision Holdings Limited and the
▇▇▇▇▇▇ Companies, Inc.
Effective Date shall mean the 1st of November 1997.
Improvement shall mean any improvement, modification or
addition to the Licensed Patents or to any
Know-How.
Initial Term shall mean the first five Years of this
Agreement.
Know-How shall mean all information to the extent that
such information is not in the public domain
(including that comprised in formulae,
techniques, designs, specifications,
drawings, components, lists, manuals,
instructions and catalogues) relating to:
(i) the composition or production of
Lenses;
(ii) the design, development, manufacture
or use of Lenses;
(iii) the repair and maintenance of Lenses;
(iv) quality control;
(v) tooling design.
Lenses shall mean contact lenses produced in
accordance with the Licensed Patents.
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* Confidential treatment has been requested from the Securities and Exchange
Commission. Omitted portions have been filed separately with the Commission
Licensed Patents shall mean the patents and applications
deriving and prioritised from an original
application which resulted in the granting of
United Kingdom Patent No. GB 2,226,977 as
listed in Exhibit 1 hereto, together with all
other patent applications and patents as may
in the future be derived therefrom.
Net Sales Value shall, subject to adjustment in accordance
with paragraph 6 of Part 1 of Schedule 2 of
the Earn Out Agreement, mean [ * ].
Parties shall mean CV and the Patent Owners.
Patents shall mean the patents included in the
Licensed Patents.
Patent Applications shall mean the patent applications included
in the Licensed Patents
Quarter shall mean successive periods of three months
beginning on the Effective Date.
[ * ] shall mean [ * ].
[ * ] Licence shall mean the Patent and Know-How Licence
Agreement made between [ * ] and the Patent
Owners dated 15 October 1996.
Umbrella Agreement shall mean the Umbrella Agreement for the
sale and purchase of the issued share capital
of AVC and other companies to be entered into
on even date hereof between A D Galley,
Aspect Vision Holdings Limited and The ▇▇▇▇▇▇
Companies, Inc.
Year shall mean each successive period of 12
calendar months commencing on the Effective
Date.
1.2 In this Agreement:-
1.2.1 unless the context otherwise requires all references to a
particular Clause, Exhibit or paragraph shall be a
reference to that clause, exhibit or paragraph, in or to
this Agreement as it may be amended from time to time
pursuant to this Agreement;
1.2.2 the table of contents and headings are inserted for
convenience only and shall be ignored in construing this
Agreement;
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* Confidential treatment has been requested from the Securities and Exchange
Commission. Omitted portions have been filed separately with the Commission
1.2.3 unless the contrary intention appears words importing the
masculine gender shall be include the feminine and vice
versa and words in the singular include the plural and vice
versa; and
1.2.4 unless the contrary intention appears words denoting
persons shall include any individual, partnership, company,
corporation, joint venture, trust, association,
organisation or other entity, in each case whether or not
having separate legal personality.
2. GRANT OF LICENCE
2.1 The Patent Owners hereby grant to CV a world-wide, non-exclusive
licence, to make, have made, use and sell Lenses under the Licensed
Patents.
2.2 CV shall, subject to the terms of Clause 3.6 below, be entitled at
any time without notifying the Patent Owners to sub-licence its
rights hereunder to any Affiliate of CV and shall, subject to the
terms of Clause 3.7 below, be entitled to sub-licence its rights
hereunder to one or more third parties.
2.3 CV agrees that any sub-licences granted by it shall be personal to
the sub-licensee, shall not be capable of further sub-licence by the
sub-licencee, and shall not be assignable and shall not be
inconsistent with this Agreement and shall not prejudice the Patent
Owners' rights in terms of this Agreement. CV shall forward to the
Patent Owners a copy of all fully executed sub-licences or
sub-licence agreements entered into with sub-licensees from time to
time within 28 days of execution thereof.
2.4 CV shall at all times during the continuance of this Agreement be
responsible for the observance and performance by every sub-licensee
of the terms and conditions of the sub-licence and shall use all
reasonable endeavours to monitor and enforce the obligations of every
sub-licensee in terms of the relevant sub-licence. Without prejudice
to the foregoing generality, CV shall be bound to indemnify the
Patent Owners in respect of any actions or omissions of the
sub-licensee.
2.5 The Patent Owners have prior to the Effective Date granted licences
to manufacture Lenses under the Licensed Patents to the following
parties under the following agreements:-
2.5.1 to CLT under the CLT Licence;
2.5.2 to AVC under the AVC Licence;
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2.5.3 to [ * ] under a Patent Licence Agreement dated 10 November
1995;
2.5.4 to [ * ] under the [ * ] Licence;
2.5.5 to [ * ] under a Patent Licence Agreement dated 6 July
1995; and
2.5.6 To Ocular Sciences Limited under a Patent Licence Agreement
dated 27 February 1997.
The Patent Owners shall not grant any further licences of the
Licensed Patents to third parties other than those listed in this
Clause 2.5 without the prior written consent of CV provided that CV
hereby consents to the grant by the Patent Owners of a licence of the
Licensed Patents to [ * ] under the terms of the [ * ] Option.
2.6 If the Patent Owners make or acquire any Improvement relating to the
Licensed Patents they shall, to the extent that they are not
prohibited by law, by any undertaking given to others, or by
considerations relating to security of a patent or other intellectual
property right protection, promptly notify CV in writing giving
details thereof and shall provide to CV free of charge such
information or explanations as CV may reasonably require to be able
legally and effectively to utilise the same for the term of this
Agreement and the Patent Owners shall grant to CV a non-exclusive
worldwide royalty-free licence to the use of Improvements disclosed
by the Patent Owners hereunder on the same terms as those in this
Agreement.
3. ROYALTIES
3.1 As consideration for the grant of this Licence CV will pay to the
Patent Owners royalties as follows:
7.5% of the Net Sales Value of Lenses up to [ * ] per annum
5.0% of the Net Sales Value of Lenses in excess of [ * ] per
annum
3.2 [ * ].
3.3 In the event that any of the Licensed Patents are revoked or declared
invalid, CV shall cease from the date of such revocation or
declaration to be obliged to make any payment in respect of any sale
or other disposition of the Lenses in the country in which such
revocation or declaration was made.
3.4 CV will only pay royalties of [ * ]% of the Net Sales Value on [ * ].
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* Confidential treatment has been requested from the Securities and Exchange
Commission. Omitted portions have been filed separately with the Commission
3.5 [ * ].
3.6 If CV grants any sub-licence to an Affiliate under Clause 2.2, CV
shall account to the Patent Owners for royalties on sales of Lenses
by that Affiliate in the same manner and upon the same terms as
royalties upon CV's own sales of Lenses under this Agreement. Such
sales shall count towards the threshold of [ * ] referred to in
Clause 3.1.
3.7 If CV grants a sub-licence to a third party under Clause 2.2 then CV
shall pay [ * ]% of all royalties and lump sums paid to CV and any
other benefits whether in cash or in kind receivable by CV from any
third party in consideration of the grant of such sub-licence over to
the Patent Owners. The cash value of any benefits in kind shall be
used in order to calculate the sums due to the Patent Owners under
this clause.
3.8 The Patent Owners have licensed [ * ] to make Lenses using the
Licensed Patents under the [ * ] Licence and may grant a licence to
make Lenses to [ * ] under the [ * ] Option. The Patent Owners hereby
agree that in the event that they become entitled to any royalty
payments under either the [ * ] Licence or the agreed form licence
annexed to the [ * ] Option they shall at CV's option either assign
their right to receive [ * ]% of such royalty payments to CV or pay
[ * ]% of royalty payments received from [ * ] and [ * ] to CV. The
following provisions shall apply in respect of any royalty payments
made by the Patent Owners to CV:-
3.8.1 Payments shall be due within 60 days following the end of
each Quarter in pounds sterling and shall be accompanied
by a royalty statement showing how the amount was
calculated.
3.8.2 Payments shall be made to the bank account to be specified
in writing by CV.
3.8.3 Interest shall be payable at 2.5% over the base rate of
the National Westminster Bank on late payments calculated
on a daily basis from the date on which royalties are due
until receipt of payment in cleared funds by CV.
3.8.4 The Patent Owners shall maintain full and accurate records
of royalties received under the [ * ] Licence and [ * ]
Licence and shall keep such records at ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇'▇
home address or at any other site provided that CV is kept
advised in writing of the location of such records.
3.8.5 CV shall have the right, at any time (but not more than
twice in any calendar year), upon giving 30 days' notice
of its intention to do so, to have a firm of independent
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* Confidential treatment has been requested from the Securities and Exchange
Commission. Omitted portions have been filed separately with the Commission
chartered accountants review the Patent Owners' books and
records to verify the royalty statements provided to CV by
the Patent Owners in respect of the [ * ] Licence and
[ * ] Licence and to take copies of such information as
required. CV shall maintain any information disclosed to
it in the course of such review in complete confidence and
shall not use such information for any purpose other than
verifying the amount of royalty payable to it.
3.9 Under the [ * ] Licence and under the agreed form licence annexed to
the [ * ] Option, the Patent Owners have an obligation to procure
certain items listed in Schedule 3 to the said Licences including
inter alia access to the Hamble manufacturing plant of AVC and CLT
for up to [ * ] days in a 360 day period for the purpose of training
and familiarisation with the manufacturing process. AVC and CLT are
Affiliates of CV and CV agrees to co-operate and procure the
co-operation of AVC and CLT with the Patent Owners so as to enable
the Patent Owners to fulfil their obligations under Schedule 3 of the
said Licences. In consideration therefor, the Patent Owners agree
that if the cost to CV (which shall include the cost to AVC and CLT)
of so co-operating exceeds the amount of royalties payable by [ * ]
or [ * ] or the Patent Owners (as the case may be) to CV under Clause
3.8 in any Quarter, then CV shall notify the Patent Owners of the
amount by which such cost exceeds the amount of such royalties in
respect of each of [ * ] and [ * ] and the Patent Owners shall pay
such amount to CV in accordance with the payment provisions set out
in Sub-Clauses 3.8.1 to 3.8.5. For the purposes of this Clause 3.9,
the cost to CV of co-operating with the Patent Owners and procuring
the co-operation of AVC and CLT shall be calculated as:-
(i) the number of hours that each employee of AVC and CLT is
reasonably and directly engaged in ensuring that the
obligations of the Patent Owners are fulfilled multiplied
by each such employee's hourly rate of pay multiplied by
[ * ]%; plus
(ii) any other direct expenses reasonably incurred by AVC and
CLT in that regard but on no account including indirect
expenses,
such costs to be agreed by the Parties.
4. MINIMUM ROYALTIES
4.1 The minimum royalty payable to the Patent Owners under this Agreement
will be 'L'1 million per Year ("the Minimum Level") for the
Initial Term. There shall be no minimum royalty after the Initial
Term.
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* Confidential treatment has been requested from the Securities and Exchange
Commission. Omitted portions have been filed separately with the Commission
4.2 In the event that the royalty due to the Patent Owners pursuant to
Clause 4.1 does not in any Year amount to the Minimum Level (a "Lean
Year"), CV shall on the date for payment of royalty in respect of the
final Quarter of that Lean Year pay to the Patent Owners such amount
in addition to any royalty otherwise payable as represents the
difference between the aggregate royalty arising in respect of sales
of Lenses for that Year and the Minimum Level (the "Shortfall"), any
amount so payable being deemed to be royalty for the purposes of this
Agreement, PROVIDED THAT
4.2.1 if, in the Years prior to a Lean Year, CV has paid amounts
in royalties which cumulatively exceed the aggregate
Minimum Level for those Years, CV shall, for the purpose
of calculating whether the Minimum Level has been achieved
in the Lean Year, be entitled to set off against the
Shortfall for that Year such part of the excess paid
cumulatively in the previous Years over the Minimum Level
for those previous Years as may be necessary to achieve
the Minimum Level; and
4.2.2 if the royalty due to the Patent Owners in any Year or
Years exceeds the Minimum Level, CV shall be entitled to
set off against the royalties payable for that Year in
excess of the Minimum Level an amount up to the total
amounts paid by way of Shortfall in respect of any earlier
Year or Years.
4.3 For the avoidance of doubt, it is acknowledged that the Parties
intend the Patent Owners to receive minimum royalties of 'L'5
million in aggregate over the Initial Term.
5. PAYMENT
5.1 Within 60 days following the end of each Quarter, CV will pay to the
Patent Owners in pounds sterling the royalty due for the previous
Quarter or any period which is less than a Quarter together with a
calculation showing how the figure was arrived at. Time shall become
of the essence in relation to payments due to the Patent Owners under
this Agreement after a period of 30 days following notification by
the Patent Owners to CV that CV has failed to make a payment.
5.2 Payment shall be made to G H and A D Galley on behalf of the Patent
Owners and it shall be the responsibility of the Patent Owners
themselves to disburse any sums received in accordance with their
respective rights and obligations. Payment shall be made directly to
a bank account to be designated by the Patent Owners from time to
time. Unless further advised, payments shall be made to the account
of GH & AD Galley Royalties Account at [ * ].
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* Confidential treatment has been requested from the Securities and Exchange
Commission. Omitted portions have been filed separately with the Commission
5.3 Notwithstanding the provisions of Clause 5.1, interest shall be
payable at 2.5% over the base rate of the National Westminster Bank
on late payment calculated on a daily basis from the date on which
royalties are due until receipt of payment in cleared funds by the
Patent Owners.
5.4 CV shall maintain full and accurate records of Lenses made, sold or
otherwise disposed of and all royalties payable hereunder. Such
records shall be kept at CV's principal place of business or at any
of its designated manufacturing sites provided that the Patent Owners
are kept advised in writing of the location of such records. Unless
further advised, the Patent Owners understand that such records shall
be kept at Aspect Vision Care Ltd., ▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇
▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇▇.
5.5 The Patent Owners shall have the right, at any time (but not more
than twice in any calendar year), upon giving 30 days notice of their
intention to do so, to have a firm of independent chartered
accountants review CV's books and records to verify the royalty
statements provided to the Patent Owners by CV and to take copies of
such information as required. The Patent Owners shall maintain any
information disclosed to them in the course of such review in
complete confidence and shall not use such information for any
purpose other than verifying the amount of royalty payable to them.
5.6 For the purpose of calculating Net Sales Value in relation to sales
not invoiced in pounds sterling, Net Sales shall be converted to
pounds sterling at the rate being the average rate of the buying and
selling rates of pounds sterling in respect of the currency in
question offered by any one of the five largest banks in the UK over
the Quarter the royalty payment is due for the Lenses in question.
6. Taxes
6.1 Subject to Clause 6.2 below, all payments to be made by CV to the
Patent Owners under this Agreement shall be made free and clear of
and without deduction or on account of any Relevant Tax.
6.2 In the event that any relief from deduction or withholding of any
Relevant Tax may be available, the Patent Owners and CV agree and
undertake that the Patent Owners will use all reasonable endeavours
to complete Form 1001 (if appropriate) for US tax purposes and lodge
the Form with CV so that an exemption from withholding tax be
obtained under the applicable double tax treaty.
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6.3 Subject to Clauses 6.1 and 6.2, if CV is required by law to make any
payment under this Agreement subject to the deduction or withholding
of any Relevant Tax the full amount required to be deducted or
withheld to the relevant taxation or other authority shall be so
deducted or withheld by CV under the applicable law and CV shall
deliver to the Patent Owners within 30 days of actual receipt (or
such shorter time after actual receipt as the applicable authority
requires) a receipt or certified copy thereof or other appropriate
evidence issued by such authority evidencing the payment to such
authority of all amounts so required to be deducted or withheld in
respect of such payment.
6.4 Subject always to Clause 6.5, in circumstances in which CV is
required by law to make a payment under this Agreement subject to
deduction or withholding in accordance with Clause 6.3 CV shall on
the relevant payment dates pay to the Patent Owners, in addition to
the royalties due under this Agreement, 50% of the Relevant Sum. For
the purposes of this clause the Relevant Sum shall be the amount
which is equal to the sum which would be required to be paid to the
Patent Owners by CV to ensure that, after the making of such
deduction or withholding as is required by Clause 6.3, the Patent
Owners would receive and retain (free from any liability in respect
of any such deduction or withholding) a net sum equal to the sum
which they would have received and so retained had no such deduction
or withholding of any Relevant Tax been made or been required to be
made.
6.5 There shall be no obligation on CV to make a payment to the Patent
Owners under Clause 6.4 if the Patent Owners in their reasonable
opinion determine that, by virtue of the withholding or deduction
referred to in Clause 6.3 they have received or will within a
reasonable period receive, a credit against or any relief for, any
tax paid or payable by the Patent Owners in respect of the payments
due to them under this Agreement.
6.6 In this Clause 6, Relevant Tax means in relation to any payment which
falls to be made under this Agreement any present or future tax of
any nature now or hereafter imposed by the rules of any tax
authority.
7. INTELLECTUAL PROPERTY
Except as provided for in this Agreement, CV recognises the Patent
Owners' title to the Licensed Patents and shall not claim any right,
title or interest in the Licensed Patents (save as provided for in
this Agreement) or at any future time seek to register or use any of
the Licensed Patents in its own name as proprietor.
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8. ENFORCEMENT OF PATENTS AND PROSECUTION OF PATENTS
8.1 If any Party learns of any infringement or suspected infringement of
a Licensed Patent or Know-How it shall promptly notify the other
Parties. CV shall have the option and is hereby irrevocably
authorised by the Patent Owners, at its own expense, and in the name
of the Patent Owners, to take action against any such infringer or
alleged infringer, and shall be entitled to any damages received
related to such matter. If CV so take action against any such
infringer or alleged infringer, CV shall in its absolute discretion
determine what action if any shall be taken and shall have sole
control over and shall conduct any such action as it shall deem
necessary and the Patent Owners shall take such actions as CV
reasonably requests (including but not limited to the use of its name
in or being joined as a party to proceedings) to facilitate CV's
actions, provided, however, that CV shall reimburse the Patent Owners
for their reasonable expenses in assisting CV in such matter.
8.2 In the event that action taken by CV against an infringer pursuant to
Clause 8.1 results in a court ruling in CV's favour and that the
reasonable expenses incurred by CV in taking such action exceed the
amount of damages payable to CV in relation to such matter, the
Parties shall bear the remainder of such excess expenses [ * ].
Subject to the Patent Owners' agreement to the calculation of the
amount due from them to CV, such amount shall be treated as a
prepayment of royalties due to the Patent Owners under this
Agreement. In any other circumstances, CV shall bear its own expenses
incurred under Clause 8.1.
8.3 The Patent Owners agree that no licence shall be granted to any
alleged infringer against whom CV or the Patent Owners have begun a
court action unless and until CV or the Patent Owners have been
satisfied to the extent of their damages.
8.4 The Patent Owners shall proceed with the prosecution of all Patent
Applications as of the Effective Date and shall use diligent efforts
to obtain patents for such Patent Applications, at the Patent Owners'
expense. The Patent Owners shall keep CV apprised of the status of
such Patent Applications.
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* Confidential treatment has been requested from the Securities and Exchange
Commission. Omitted portions have been filed separately with the Commission
8.5 The Patent Owners shall subject as hereinafter provided during the
term of this Agreement pay all renewal fees and do all such acts and
things as may be necessary to maintain in force the Patents and shall
produce to CV the receipt for such renewal fees seven (7) days at the
least before the last day for renewing any of such Patents (excluding
periods allowed in extension of the time limit for renewing) and in
default shall recognise the right of CV to pay the same and to be
credited with the cost thereof. The Patent Owners shall reimburse CV
for any fees paid by CV pursuant to this Clause 8.5 within fourteen
(14) days of receiving from CV notification that CV has paid such
fees.
8.6 The Patent Owners undertake during the life of this Agreement not to
abandon or allow to lapse any of the Patents or to amend the
specification of any of them or the specification accompanying any of
the Patent Applications during the term of this Agreement without the
prior written consent of CV.
9. INDEMNIFICATION
9.1 Subject to clause 9.2 the Patent Owners will indemnify and hold
harmless CV (together with its officers, servants and agents) against
any and all liability, loss, damages, costs (whether special,
indirect, consequential, direct or otherwise) including attorney's
fees
(i) that may be incurred in defending any claim or
(ii) awarded or agreed to be paid in respect of any claim, to
any third party in respect of any claim or action that the
possession or use of the Licensed Patents and Know How
infringes the patents of the said third party. The Patent
Owners shall have full conduct of such claims save that
they shall not settle or otherwise compromise such claims
without the prior written consent of CV, such consent to
not be unreasonably withheld or delayed. If either Party
learns of any infringement or suspected infringement of
the patents of a third party as referred to above it shall
promptly notify the other Party.
9.2 In the event of the Patent Owners becoming liable to CV under the
provisions of Clause 9.1, the amount payable to CV under that Clause
shall not exceed an amount equal to the amount of royalties payable
to the Patent Owners under this Agreement from the date of a third
party bringing an action against CV. Under no circumstances shall the
Patent Owners be required to repay any royalties paid to them prior
to the date of such action being brought. CV shall be entitled to
suspend payment of royalties to the Patent Owners from the date of
such action being brought provided that;
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9.2.1 in the event the third party action is struck out for want
of prosecution or otherwise or in any case when an action
is lost by the third party, CV shall forthwith pay to the
Patent Owners the amount of royalties falling due during
the period of the suspension; and
9.2.2 in the event of a third party successfully bringing an
action against CV for infringement of that third party's
patent or patents ("Third Party Patent") by the possession
or use by CV of one or more of the Licensed Patents, and
CV paying royalties to that third party in respect of the
Third Party Patent, CV shall in addition to suspending
payments of royalties in respect of the appropriate
Licensed Patent be entitled to deduct from any royalties
due to the Patent Owners under this Agreement the amount
of any royalties it pays to such third party in respect of
the Third Party Patent.
10. TERM
This Licence shall remain in effect from the date hereof until the
last of the Licensed Patents expires, is abandoned or is finally
adjudicated invalid.
11. TERMINATION
11.1 This Agreement may be terminated forthwith by written notice from the
Patent Owners in the event that CV are late in making any due and
payable royalty payment by more than 30 days and if CV fails to make
such payment together with all interest thereon within 30 days of any
one of the Patent Owners notifying CV in writing requiring them to
pay the same.
11.2 CV shall be entitled to terminate this Agreement forthwith by written
notice with immediate effect if:
11.2.1 the Patent Owners are in breach of any of their
obligations hereunder and fail to remedy such breach
within 30 days of notice in writing requiring such remedy;
or
11.2.2 all the Licensed Patents are revoked or declared invalid.
11.3 Termination of this Agreement shall not affect the accrued rights of
the Parties arising in any way out of this Agreement as at the date
of termination and in particular but without limitation the right to
recover damages from the other.
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11.4 Upon the termination of this Agreement or upon its expiry, CV shall
forthwith return to the Patent Owners or permit the Patent Owners to
enter onto its premises for the purpose of repossessing all drawings,
data, material and other documents including without limitation,
software supplied to CV by the Patent Owners and any copies of any of
the same in its possession or under its control (whether or not
containing Know-How) and shall procure the return of any of the same
(and any copies) in the possession of or under the control of any
third party.
11.5 Expiry of this Agreement or its termination for whatever cause shall
not release CV from any of its obligations which expressly or by
implication become effective or continue to be effective on or after
the termination of this Agreement.
11.6 Termination of this Agreement for whatever cause or its expiry shall
be without prejudice to the rights of the Parties in respect of any
antecedent breaches or any other rights which may have arisen under
this Agreement and shall not relieve any party from any existing
obligation or liability which has arisen under this Agreement.
11.7 Upon termination of this Agreement all related sub-licences granted
by CV shall immediately (unless the sub-licensee is then in default
thereunder entitling CV to terminate such sub-licence) be deemed to
be licences in the terms they were granted by CV, and shall continue
as if originally granted by the Patent Owners, and the Patent Owners
and CV shall enter into such further documents as may be needed to
give effect to this SAVE THAT the Patent Owners shall not be bound to
enter into any such arrangement unless they are satisfied that the
terms of any such arrangement impose no obligations on the Patent
Owners other than those incumbent on the Patent Owners pursuant to
this Agreement.
12. REPRESENTATIONS AND WARRANTIES BY THE PATENT OWNERS
The Patent Owners hereby represent and warrant to CV as follows:
12.1 Ownership of Licensed Patents: The Patent Owners are the registered
proprietors of the Patents and are entitled to the benefit of the
Patent Applications and own all right, title and interest to the
Licensed Patents, free and clear of any liens, charges or other
encumbrances. The Patent Owners have not done or omitted nor will
hereafter do or omit any act or thing whatsoever whereby the Licensed
Patents may be invalidated encumbered or otherwise prejudicially
affected or the due performance of this Agreement hindered or
prevented.
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12.2 No Other Applicable Patents: The Patent Owners do not own or have any
other interest in any other patents or patent applications applicable
to the cast moulding of Lenses.
12.3 Legal Proceedings : No default: No action, suit, proceeding or
investigation so far as the Patent Owners are aware is pending or
threatened by any person or entity which seeks to challenges the
validity of the Licensed Patents and the Patent Owners are not aware
of any basis therefor. The execution of this Agreement and the
carrying out of its provisions will not result in a violation of any
contract, agreement or obligation of the Patent Owners.
12.4 Authority: The Patent Owners have all requisite power and authority
to enter into this Agreement and to carry out its terms. All actions
on the part of the Patent Owners necessary for the authorisation,
execution, delivery and performance of their obligations hereunder
has been taken, and this Agreement, when executed and delivered by
the Patent Owners shall constitute their valid and legally binding
obligation, enforceable in accordance with its terms.
12.5 Patent Infringement: The Patent Owners are not aware of any other
person or entity infringing any of the Licensed Patents, and are not
aware of any reason why the Licensed Patents, or any claims thereof,
could be challenged or invalidated.
12.6 No other licences: Other than the licences under the agreements
listed in Clause 2.4 the Patent Owners have not granted and will not
grant or purport to grant any other licences, rights, assignments
over or relating to the Know-How or the Licensed Patents or over or
relating to any other industrial or intellectual property relating or
which may relate to Lenses.
12.7 Know How: Other than under the agreements listed in Clause 2.4 the
Patent Owners have not disclosed any of the Know-How to any third
party save under an obligation of confidence.
12.8 Infringement of Third Party Rights: To the best of the knowledge,
information and belief of the Patent Owners the use of the Licensed
Patents by CV, its servants, agents or customers will not infringe
the rights of any third party.
12.9 Placing right to apply for patent in jeopardy: The Patent Owners have
not nor to the knowledge of the Patent Owners has any other person
done or omitted to do any act whereby the right to apply for letters
patent in respect of the Lenses and the conditions, requirements or
circumstances affecting the validity of the grant of any such letters
patent may be jeopardised.
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13. GENERAL
13.1 Entire Agreement
This Agreement constitutes the entire understanding between the
Parties relating to the subject matter hereof and no modification or
addition to this Agreement shall have any effect whatsoever unless it
is set forth in writing and is referred to as a modification or
addition to this Agreement and signed by CV and by ▇ ▇ ▇▇▇▇▇▇, his
heirs or assigns for and on behalf of the Patent Owners.
13.2 Severability
Every provision of this Agreement shall be severable and should any
provision of this Agreement be void, or be liable to render this
Agreement void, then this Agreement shall be read as if that
provision were excluded.
13.3 Waiver
The failure of either Party to enforce at any time any term of this
Agreement or to exercise any right under this Agreement shall in no
way affect the validity of this Agreement or the right of the Party
thereafter to enforce any term of this Agreement or to exercise any
right under this Agreement unless such Party has provided to the
other Party in writing a specific waiver of such right.
Notwithstanding the above either Party shall be entitled to an
estoppel in relation to any material breach of this Agreement which
was known to one of the Parties and of which such Party failed to
inform the other Party in writing for a period of six months from the
date at which it had such knowledge.
13.4 Governing Law
This Agreement shall be governed by the law of England and Wales, and
the Parties hereby submit to the jurisdiction of the English Courts.
13.5 No use of Name
Except as may be required by law or by virtue of contractual
obligations with third parties which are in existence at the date of
signing of this Agreement neither Party shall make any disclosure of
this Agreement or its terms without the prior written consent of the
other Party which shall not be unreasonably withheld.
13.6 Assignment
This Agreement will bind and inure to the benefit of each Party's
successors and assigns.
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13.7 No Right of Offset
Other than as provided for under Clauses 4 and 9.2 the Parties hereby
waive any and all claims of set off against any payments (including
interest) due hereunder and each Party agrees to pay all amounts
payable hereunder to the other regardless of any rights in equity,
set off or cross claim it may have against the other and without any
deduction.
13.8 Publicity
Neither Party shall make any public announcements regarding these
agreements without the prior consent of the other Party. However,
once any statement has been agreed, it may be repeated by either
Party in a substantially similar form at any future date unless one
Party notifies the other in writing that they no longer agree to such
information being disclosed.
13.9 Assistance
During the term of this Agreement the Patent Owners shall as and when
reasonably requested by CV provide such technical assistance and
advice as CV shall reasonably require and the Patent Owners shall be
in a position to provide in connection with the development
manufacture or marketing of the Lenses and CV shall reimburse the
Patent Owners all out of pocket and other expenses reasonably
incurred by them in providing such advice and assistance provided
that such assistance shall be limited to a maximum of [ * ] man days
per Year.
14. ARBITRATION
14.1 In the event that any dispute arises over the terms of this Agreement
or any of its provisions, the parties hereto agree that such dispute
shall, following one party notifying the other of its wish to appoint
an arbitrator, be settled by process of arbitration and not by
process of law. Such arbitration shall be undertaken by a QC (being
Queens Counsel, who is a member of a UK Inn of Court) acceptable to
both parties with the assistance, if required, of an independent
Chartered Accountancy Practice acceptable to both parties or if no
agreement can be reached within fourteen days of one party notifying
the other of its wish to refer such a matter to an arbitrator, such
arbitrator shall, upon the application of either party, be appointed
by the President, for the time being, of the Law Society. The costs
of any such arbitration shall be awarded by the arbitrator and the
results of such arbitration shall be final and binding on both
parties. Nothing in the foregoing shall prevent either party from
applying to the Court in order to enforce the obligation of the other
party to continue to perform its obligations hereunder pending
resolution of any dispute, including without limitation, the
obligation of CV to continue to pay royalties or any other sums due
in accordance with this Licence.
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* Confidential treatment has been requested from the Securities and Exchange
Commission. Omitted portions have been filed separately with the Commission
14.2 The procedure to be followed for such arbitration shall be agreed
between the parties or in default of agreement determined by the
arbitrator.
15. NOTICES
15.1 Any notice, report or statement to either party required or permitted
under this Agreement shall be in writing and shall be forwarded by
recorded delivery courier such as Federal Express or similar and
shall be deemed to be given when received by the Party to which it is
addressed. Such notification shall be sent to the address set forth
below or to such other address which may be notified from one Party
to another from time to time during the term of this Agreement.
To CV: To the Patent Owners:
15.2 The President 15.7 c/o ▇ ▇ ▇▇▇▇▇▇
15.3 ▇▇▇▇▇▇ Vision, Inc. 15.8 Red Lodge
15.4 10 Faraday 15.9 The Close
15.5 Irvine 15.10 ▇▇▇▇▇▇▇▇▇▇
▇▇.▇ ▇▇ ▇▇▇▇▇ 15.11 ▇▇▇▇▇▇ ▇▇▇ ▇▇▇
15.12
16. AVC LICENCE AND CLT LICENCE
The Parties agree that, upon entry into force of this Agreement, the
parties shall procure that the AVC Licence and the CLT Licence ("the
Existing Licenses") shall be terminated and that this Agreement will
supersede the Existing Licences provided that it is agreed that
royalties accrued under the Existing Licenses until the Effective
Date shall be paid to the Patent Owners within 60 days of the
Effective Date.
17. VALUE ADDED TAX
All consideration payable to the Patent Owners under the terms of
this Agreement is exclusive of value added tax.
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IN WITNESS WHEREOF, the parties hereto have entered into this Agreement as of
the date first written above.
▇▇▇▇▇▇ VISION, INC. 17.1 ▇ ▇ ▇▇▇▇▇▇
10 FARADAY 17.2 ▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇ 17.3 THE CLOSE
USA 17.4 ▇▇▇▇▇▇▇▇▇▇
▇▇.▇ ▇▇▇▇▇▇ ▇▇▇ ▇▇▇
17.6
A ▇▇▇▇▇▇ ▇▇▇▇▇▇ 17.7 ▇ ▇ ▇▇▇▇▇▇
................................ 17.8 .....................
...........
17.9 ▇ ▇ ▇▇▇▇▇▇
17.10 PATENT OWNER
17.11
17.12
17.13
17.14
B ▇▇▇▇▇ 17.16 ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
53, WILDERNESS HEIGHTS 17.17 ▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇ ▇▇▇ ▇▇.▇▇ ▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇ 17.19 ISLE OF WIGHT
17.20
B ▇▇▇▇▇ 17.21 A D Galley
17.15 ..................... 17.22 .....................
.......... ...........
B ▇▇▇▇▇ A D GALLEY
PATENT OWNER 17.23 PATENT OWNER
17.24
17.25
17.26
17.27
A D GALLEY ▇ ▇ ▇▇▇▇▇▇▇▇
BEACON WEY ▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇
THE HANGERS SURBITON
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇ ▇▇▇▇ ▇▇▇ ▇▇▇ ▇▇▇
A D Galley ▇ ▇ ▇▇▇▇▇▇▇▇
17.28 ..................... 17.29 .....................
.......... ...........
A D GALLEY ▇ ▇ ▇▇▇▇▇▇▇▇
PATENT OWNER PATENT OWNER
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EXHIBIT 1
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COUNTRY APPLICATION NO. PATENT NO. STATUS
------------------------------------------------------------------------------------------------------------------------
Australia 629280 Granted Patent
------------------------------------------------------------------------------------------------------------------------
Great Britain 2,226,977 A Lapsed, replaced by European (UK) 383425
------------------------------------------------------------------------------------------------------------------------
Singapore 1137/93 Registered European (UK) Patent
------------------------------------------------------------------------------------------------------------------------
Europe 383,425 Granted Patent Austria, Belgium,
Switzerland, Liechtenstein, Germany,
Denmark, Spain, France, Greece, Italy,
Luxembourg, Netherlands, Sweden and Great
Britain
------------------------------------------------------------------------------------------------------------------------
Taiwan 39682 Granted Patent
------------------------------------------------------------------------------------------------------------------------
USA 5,087,015 Granted Patent
------------------------------------------------------------------------------------------------------------------------
Canada 2,007,536 Pending, under examination
------------------------------------------------------------------------------------------------------------------------
Japan 3697/90 Pending, under examination
------------------------------------------------------------------------------------------------------------------------
S. Korea 90355 Pending, under examination
------------------------------------------------------------------------------------------------------------------------
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