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EXHIBIT 10.2
License Agreement
THIS AGREEMENT ("the Agreement") effective June 1, 1993 for VALVED TIP
ANGIOGRAPHIC & INFUSION CATHETERS by and between MICRO THERAPEUTICS, INC.
("MTI"), a California Corporation, located at ▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇▇▇▇. ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇; and ▇▇▇▇▇▇ ▇▇▇▇▇, M.D. ("▇▇▇▇▇"), an individual,
located at ▇▇▇▇ ▇▇▇▇ ▇▇▇., ▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇.
1. Definitions
a. "Field of Interest" and "Field" shall mean products
and methods related to the concept embodied in the Products (as defined herein).
of a valved tip to allow injection or infusion of fluids in the body.
b. "First Commercial Sale" with respect to a particular
Product shall mean the first arms length sale to a third party of such Product
in the United States or other country under the approval of appropriate federal
and state governmental agencies for distribution and sale of said Product.
c. "Net Sales Price" of a Product means an amount equal
to the gross sales price of the Product sold, less credits and allowances for
defective and returned Products, trade discounts, duties, taxes applicable to
sales or use, and transportation charges paid or allowed.
d. "Products" shall mean valved tip angiographic and
infusion catheters that incorporate U.S. Patent #5,085,635.
2. License
▇▇▇▇▇ hereby grants to MTI, under all of ▇▇▇▇▇'▇ patents, copyrights,
trade secrets, knowhow, and other intellectual property rights now and hereafter
existing, an exclusive, worldwide, perpetual, irrevocable license, with rights
to sublicense, to make, have made, use and sell or otherwise dispose of
products. Including U.S. patent #5,085,635 titled "VALVED-TIP ANGIOGRAPHIC
CATHETER" and dated Feb. 4, 1992.
3. Confidentiality
a. As used in this Section 2, the term "Confidential
Information" shall mean any written or oral information disclosed by one party
to the other pursuant to this Agreement.
b. Each of the parties shall use at least the same
degree of care which he uses to prevent the disclosure of his own confidential
information of like importance to prevent the disclosure of Confidential
Information disclosed to him by the other party under
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this Agreement. Each party warrants to the other that such degree of care is
reasonably calculated to prevent the disclosure of Confidential Information.
Notwithstanding the above, MTI may disclose ▇▇▇▇▇'▇ Confidential Information to
third parties for the purposes of development, manufacture, operation and
maintenance of Products and other devices incorporating the Licensed
Technology, providing, however, that MTI shall require such third parties to
keep confidential any of ▇▇▇▇▇'▇ Confidential Information.
Notwithstanding the above, neither party shall have liability to the
other with regards to any Confidential Information of the other which:
(i) was in the public domain at the time it was disclosed
or hereafter enters the public domain through no fault of the receiving party;
(ii) was known to the receiving party at the time of
disclosure;
(iii) was independently developed by the receiving party
without any use of the Confidential Information; or
(iv) becomes known to the receiving party from a source
other than the disclosing party without breach of the Agreement or like
Agreement.
4. Joint Development
a. The parties hereto agree to use their best business efforts to
develop the Products. The parties acknowledge and agree that the purpose of
the joint development effort is to develop and market the Products which may be
sold by MTI. ▇▇▇▇▇ shall be principally responsible for the clinical and
design input directed toward the development of the Products in accordance with
the requirements mutually agreed upon by the parties, and MTI shall be
principally responsible for the development of prototypes and final marketable
Products based in part upon the designs developed by ▇▇▇▇▇. Notwithstanding
the generality of the foregoing statement, each party shall provide all
reasonable advice, guidance, and assistance to the other party, as requested by
the other party, to help ensure the success of the development effort. MTI's
responsibility shall include development, prototyping, FDA approval,
manufacture, and marketing of the Products. Failure to accomplish or achieve
any of the goals set forth above shall not constitute a breach of this
Agreement so long as the failing party has used its/his best business Efforts
in connection therewith.
b. MTI shall reimburse ▇▇▇▇▇'▇ reasonable documented
out-of-pocket expenses incurred with prior approval of MTI.
5. Consulting Service
Until September 30, 1996 ▇▇▇▇▇ shall provide such reasonable consulting
services as MTI shall request with respect to the Products. Subject to terms
and conditions of a Consulting agreement dated June 1, 1993.
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6. Assignment
▇▇▇▇▇ hereby assigns to MTI his entire right, title and interest in
and to all patents. Copyrights, trade secrets, know-how, and other
intellectual property rights which relate to the Field and which exist now or
at any time prior to the expiration of the term of the Consulting Agreement.
7. Royalties and Other Considerations
a. MTI agrees to pay to ▇▇▇▇▇ a one percent (1.0%) royalty on
the Net Sales Price of the Products sold by MTI. Such royalties shall be
payable based on sales of the Product for a period of twelve (12) years from
the date of First Commercial Sale of such product type to an Unrelated Third
Party. Thereafter MTI shall have no further royalty obligations under this
Agreement.
b. Royalties due shall be paid within thirty (30) days after the
close of each calendar quarter, beginning with the first full quarter following
First Commercial Sale. Each royalty payment shall be accompanied by a
statement setting forth, how the amount then being paid was determined.
▇. ▇▇▇▇▇ shall have the right, no more than once per year and at
his expense, to retain an independent accounting firm to audit, in confidence,
the relevant books and records of MTI to determine MTI's compliance with its
royalty obligations hereunder. If such audit reveals an understatement of
twenty percent (20%) or more of the royalties due ▇▇▇▇▇ hereunder, MTI shall
bear the expense of such audit.
8. Intellectual Property Rights
a. All discoveries, improvements and other inventions which
relate to the Field and are either conceived or first reduced to practice (as
that term is used before the U.S. Patent and Trademark Office) by either party
during the term of this Agreement, shall be the sole and exclusive property of
MTI.
▇. ▇▇▇▇▇ agrees to execute any and all assignment documents which
are required to implement the intent of this paragraph. MTI shall retain any
and all rights to file any applications for patents, copyrights, mask work
rights, or other statutory intellectual property rights on such inventions.
Title to all such applications, patents, mask work rights, copyrights or other
statutory intellectual property rights shall vest in MTI.
c. MTI shall bear the expenses of obtaining and maintaining all
patents and other intellectual property rights developed pursuant to this
Agreement so long as MTI has agreed, in its reasonable discretion, that such
patent or other intellectual property right should be pursued.
9. Term and Termination
a. Unless earlier terminated pursuant to this Section, this
Agreement shall remain in full force and effect for a term of twelve (12)
years.
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b. Either party may terminate this Agreement on notice
to the other party if the other party materially breaches any material
obligation or representation under this Agreement and does not cure such breach
and provide notice thereof to the other party within sixty (60) days after
written notice to the other party setting forth, in reasonable detail, the
nature of the alleged breach. MTI's bankruptcy, insolvency, assignment for the
benefit of creditors shall be deemed to be a breach of a material obligation
under this Agreement.
c. Upon termination or expiration of this Agreement, the
rights and obligations of the parties pursuant to the following sections shall
survive: Sections 3, 6, 7, and 8.
10. Miscellaneous
a. Entire Agreement This Agreement embodies the entire
understanding of the parties as it relates to the subject matter hereof, and
this Agreement supersedes any prior Agreement or understanding between the
parties with respect to such subject matter.
b. Waiver Should either party fail to enforce any
provision of this Agreement, or fail to exercise, or waive, any right with
respect thereto, such failure or waiver shall not be construed as constituting
a waiver or a continuing waiver of its rights to enforce such provision or
right or any other provision or right.
c. Survivability This Agreement shall be binding upon
and inure to the benefit of the parties hereto and their respective heirs,
successors and assigns.
d. Governing Law This Agreement and any matter in
connection with the performance hereof shall be construed, interpreted, applied
and governed in all respects in accordance with the laws of the State of
California.
IN WITNESS WHEREOF, the parties have caused the Agreement to be
executed where applicable in their respective corporate names and by their duly
authorized representatives on the date first above written.
MICRO THERAPEUTICS, INC. ▇▇▇▇▇▇ ▇▇▇▇▇ M.D.
By:_____________________________ By:____________________________
▇▇▇▇▇▇ ▇▇▇▇▇▇▇ - President ▇▇▇▇▇▇ ▇▇▇▇▇
Date:___________________________ Date:__________________________