Exhibit 10.1
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LAWYERS
AMENDED AND RE-STATED
TECHNOLOGY LICENCE
AGREEMENT
NOVOGEN RESEARCH PTY LIMITED
GLYCOTEX, INC.
▇▇▇▇▇ ▇▇, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇▇▇ ▇▇▇ ▇▇▇▇
Telephone: ▇▇▇▇ ▇▇▇▇
Fax: ▇▇▇▇ ▇▇▇▇ REF: BLM SJH 02 1389 1453
(C) ▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ 2005
CONTENTS
1. INTERPRETATION 1
1.1 Definitions 1
1.2 Rules for interpreting this document 5
1.3 Business Days 6
2. LICENCE 6
2.1 Grant of licence 6
2.2 Rights included 6
2.3 No sub-licence 6
2.4 Sub-contractors 6
3. RESEARCH AND DEVELOPMENT 7
3.1 Research and development 7
3.2 Glucan Material 7
3.3 Conduct of research 7
3.4 Facilities and personnel 7
3.5 Records 7
3.6 Inspection 7
4. DEVELOPMENTS 7
4.1 Novogen Developments 7
4.2 Glycotex Developments 8
5. MARKETING AND COMMERCIALISATION 8
5.1 Marketing and Exploitation 8
5.2 Exploitation obligations 8
5.3 Compliance with laws 8
5.4 Commercialisation Income 8
5.5 Books and records 9
5.6 Auditors' certificates 9
5.7 Inspection 9
5.8 Assistance 9
6. ROYALTIES 9
6.1 Royalties 9
6.2 Payment 10
6.3 Statements 10
6.4 Disputed statements 10
6.5 Certification 10
6.6 Adjustments 11
7. DEDUCTIONS AND WITHHOLDINGS 11
1.
8. PATENTS 11
8.1 Maintenance of patents 11
8.2 Patent costs 11
8.3 Glycotex's option 11
9. INTELLECTUAL PROPERTY RIGHTS 12
9.1 Acknowledgment 12
9.2 Notification 12
9.3 Proceedings involving Glycotex 12
9.4 Directions by Novogen Research 12
9.5 Joinder of Novogen Research 13
9.6 Proceedings involving Novogen Research 13
9.7 Joinder of Glycotex 13
10. CONFIDENTIAL INFORMATION 13
10.1 Confidentiality 13
10.2 Security 13
10.3 Exceptions 14
11. REPRESENTATIONS AND WARRANTIES 14
11.1 Warranties by Novogen Research 14
11.2 Warranties by Glycotex 14
11.3 Reliance on representations and warranties 15
11.4 Acknowledgement by Glycotex 15
11.5 Exclusion of warranties and other terms 15
12. INDEMNITY AND INSURANCE 16
12.1 Indemnity 16
12.2 Insurance policies 16
12.3 Novogen Research's name 16
12.4 Certificates of currency 16
12.5 Default 17
12.6 Expiry 17
13. LIMITATION OF LIABILITY 17
13.1 No liability 17
13.2 Other claims 17
14. TERM AND TERMINATION 18
14.1 Term 18
14.2 Expiration of patents 18
14.3 Termination by Novogen Research 18
14.4 Consequences of termination 18
14.5 Survival and accrued rights 18
15. DISPUTE RESOLUTION 19
2.
15.1 Disputes 19
15.2 Notice of Dispute 19
15.3 Parties to attempt to resolve Dispute 19
15.4 Mediation 19
16. NOTICES 19
17. AMENDMENT AND ASSIGNMENT 20
17.1 Amendment 20
17.2 Assignment 20
18. GENERAL 20
18.1 Governing law 20
18.2 Liability for expenses 20
18.3 Relationship of the parties 21
18.4 Giving effect to this document 21
18.5 Waiver of rights 21
18.6 Operation of this document 21
18.7 Operation of indemnities 21
18.8 Consents 22
18.9 Exclusion of contrary legislation 22
18.10 Counterparts 22
SCHEDULE A 23
3.
AMENDED AND RE-STATED TECHNOLOGY LICENCE AGREEMENT
DATE SEPTEMBER 2005
PARTIES
NOVOGEN RESEARCH PTY LIMITED (ACN 060 202 931) of ▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇
▇▇▇▇, ▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇ (NOVOGEN RESEARCH)
GLYCOTEX, INC., a company incorporated under the laws of the United States
of America, of ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇, ▇▇▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇ (GLYCOTEX)
RECITALS
A. Novogen Research is the owner of certain patent applications and know how
relating to a process of production of glucan and the use of glucan for the
treatment of skin ulceration, bone fracture or the enhancement of fixation
of implanted orthopaedic devices or the prevention/treatment of ultraviolet
light-induced skin damage.
B. Novogen Research granted a licence to Glycotex to conduct further research
and development and to commercialise this technology for certain human
therapeutic uses on the terms and conditions of the Technology Licence
Agreement dated 1999.
C. The parties now amend and re-state the Technology Licence Agreement in
accordance with this document.
OPERATIVE PROVISIONS
1. INTERPRETATION
1.1 DEFINITIONS
The following definitions apply in this document.
BUSINESS DAY means a day that is not a Saturday, Sunday or public holiday
in Sydney, Australia.
CHANGE IN CONTROL, in relation to Glycotex means:
(a) the acquisition by any Person or Group other than Novogen Limited of
more than 50% of the combined voting power of the then outstanding
securities entitled to vote generally in the election of directors of
Glycotex; or
(b) any merger, consolidation, reorganization, recapitalization, tender or
exchange offer or any other transaction with or effecting Glycotex as
a result of which a Person or Group other than the stockholders of
Glycotex immediately before the transaction owns after the transaction
more than 50% of the combined voting power of the then outstanding
securities entitled to vote generally in the election of the directors
of Glycotex,
1.
but does not include any acquisition as a result of, or transaction
involving, an initial public offering of Glycotex's common stock.
COMMENCEMENT DATE means the date this document is executed by the last of
the parties to execute it.
COMMERCIALISATION INCOME means all gross income received by or on behalf of
Glycotex as a result of or in connection with the sale, distribution,
production, licensing, marketing or other commercialisation of Licensed
Products or licensing, sub-licensing or other exploitation of the Glucan
Technology.
CONFIDENTIAL INFORMATION means the Glucan Know How, Glycotex Developments,
Novogen Developments and any other written or oral information disclosed to
Glycotex which Novogen Research considers confidential and informs Glycotex
is confidential, other than information which Glycotex can establish:
(a) was in the public domain when it was given to Glycotex;
(b) becomes, after being given to Glycotex, part of the public domain,
except through disclosure contrary to this document;
(c) was in Glycotex's possession when it was given to Glycotex and was not
otherwise acquired from Novogen Research directly or indirectly; or
(d) was lawfully received by Glycotex from another person having the
unrestricted legal right to disclose that information without
requiring the maintenance of confidentiality.
CORPORATIONS ACT means the Corporations ▇▇▇ ▇▇▇▇ (Cth).
DILIGENT EFFORTS, in relation to an obligation of a party, means the level
of efforts required to carry out the obligations in a sustained manner
consistent with the efforts a reasonable person in the same position as
that party devotes to a product of high market potential, profit potential
or strategic value based on conditions then prevailing. Diligent Efforts
requires that a party:
(a) promptly assign responsibility for obligations to specific employees
who are held accountable for progress and monitor such progress on an
on-going basis;
(b) set and consistently seek to achieve specific and meaningful
objectives for carrying out such obligations; and
(c) consistently make and implement decisions and allocate resources
designed to advance progress in order to fulfil such obligations.
DISPUTE has the meaning given to that term in clause 15.1.
DISPUTE NOTICE has the meaning given to that term in clause 15.2.
2.
EXPLOIT, in relation to an invention, means:
(a) where the invention is a product - make, hire, sell or otherwise
dispose of the product, offer to make, sell, hire or otherwise dispose
of it, use or import it or keep it for the purpose of doing any of
those things; and
(b) where the invention is a method or process - use the method or process
or do any act mentioned in paragraph (a) in respect of a product
resulting from such use.
FIELD means the fields of:
(a) therapeutic treatment of skin ulceration (including pressure sores,
bed sores, venous ulcers, diabetic ulcers and ▇▇▇▇▇) in humans;
(b) treatment of bone fracture and the enhancement of fixation of
implanted orthopaedic devices (including pins, screws and artificial
joints) in humans;
(c) prevention/treatment of ultraviolet light induced skin damage in
humans;
(d) treatment of injured connective tissues (including injuries to tendons
and ligaments, such as sporting injuries, inflammation and surgical
injury) in humans;
(e) joint repair (particularly with artificial joints) in humans; and
(f) treatment of poorly healing surgically dissected or transected tissue
in humans.
GLUCAN KNOW HOW means the Know How set out in Schedule A, any Know How in
any Novogen Developments disclosed in accordance with clause 4.1 and any
Glycotex Developments assigned to Novogen Research in accordance with
clause 4.2, and all other Know How in the Field concerning or relating to
the Glucan Patent Rights.
GLUCAN MATERIAL means documents, records, biological and chemical
substances containing, referring to or embodying the Glucan Technology
(including any micro-organisms, cell samples, carbohydrate materials and
solvents) in the possession or control of Novogen Research which Novogen
Research is free to provide or disclose to Glycotex.
GLUCAN PATENT RIGHTS means the Patent Rights set out in Schedule A, any
Patent Rights in any Novogen Developments disclosed in accordance with
clause 4.1 and any Glycotex Developments assigned to Novogen Research in
accordance with clause 4.2, and any other Patent Rights in relation to
inventions claimed in those Patent Rights.
GLUCAN TECHNOLOGY means the Glucan Patent Rights, the Glucan Know How, any
Novogen Developments disclosed in accordance with clause 4.1 and any
Glycotex Developments in the Field assigned to Novogen Research in
accordance with clause 4.2.
GLYCOTEX DEVELOPMENTS means all developments, improvements, enhancements,
adaptations and new discoveries, inventions, applications and further Know
How, whether patentable or otherwise, in relation to the Glucan Patent
Rights or the Glucan Know How, which during the Term are made or acquired
by Glycotex, its employees, agents or sub-contractors, which Glycotex is
able to assign.
3.
GOVERNMENT AGENCY means:
(a) a government or government department or other body;
(b) a governmental, semi-governmental or judicial person; or
(c) a person (whether autonomous or not) who is charged with the
administration of a law.
GROUP means two or more Persons acting as a partnership, limited
partnership, syndicate, or other group for the purpose of acquiring,
holding, or disposing of any securities.
INSOLVENCY EVENT means, for a person, being in liquidation or provisional
liquidation or under administration, having a controller or analogous
person appointed to it or any of its property, being taken to have failed
to comply with a statutory demand, being unable to pay its debts or
otherwise insolvent, dying, ceasing to be of full legal capacity or
otherwise becoming incapable of managing its own affairs for any reason,
taking any step that could result in the person becoming an insolvent under
administration, entering into a compromise or arrangement with, or
assignment for the benefit of, any of its members or creditors, or any
analogous event.
INTELLECTUAL PROPERTY RIGHTS means all existing and future intellectual and
industrial property rights throughout the world, including rights in
relation to any copyright, trade marks, designs, circuit layouts, trade
secrets and know how (including the right to apply for registration of any
such rights) and Patent Rights.
KNOW HOW means unpatented technical and other information which is not in
the public domain including inventions, discoveries, concepts, data,
formulae, ideas, specifications, procedures for experiments and tests and
results of experiments, experimentation and testing, results of research
and development including laboratory records, clinical trial data, case
reports, data analysis and summaries and information in submissions to and
information from ethics committees and regulatory authorities.
LICENSED PRODUCT means a preparation in final form for sale, administration
or delivery for use in the Field which, or the process of production of
which, falls within the claims of the Glucan Patent Rights or otherwise
embodies any Glucan Know How, Novogen Developments or Glycotex
Developments.
NOVOGEN DEVELOPMENTS means all developments, improvements, enhancements,
adaptations and new discoveries, inventions, applications and further Know
How, whether patentable or otherwise, in the Field in relation to the
Glucan Patent Rights or the Glucan Know How, which during the Term are made
or acquired by Novogen Research, its employees or agents, which Novogen
Research is free to licence.
PATENT RIGHTS means patents (including any divisions, continuations,
continuations in part, renewals, reissues, extensions, supplementary
protection certificates, utility models and foreign equivalents thereof)
and rights with respect to patent applications and patentable inventions,
including the right to apply for registration of any such rights.
4.
PERSON means a natural person, company, government, or political
subdivision, agency, or instrumentality of a government.
TAX means a tax, levy, duty, charge, deduction or withholding, however it
is described, that is imposed by a Government Agency, together with any
related interest, penalty, fine or other charge other than one that is
imposed on net income.
TERM means the term of this document in accordance with clause 14.
TERRITORY means the world.
1.2 RULES FOR INTERPRETING THIS DOCUMENT
Headings are for convenience only, and do not affect interpretation. The
following rules also apply in interpreting this document, except where the
context makes it clear that a rule is not intended to apply.
(a) A reference to:
(i) legislation (including subordinate legislation) is to that
legislation as amended, re-enacted or replaced, and includes any
subordinate legislation issued under it;
(ii) a document or agreement, or a provision of a document or
agreement, is to that document, agreement or provision as
amended, supplemented, replaced or novated;
(iii) a party to this document or to any other document or agreement
includes a permitted substitute or a permitted assign of that
party;
(iv) a person includes any type of entity or body of persons, whether
or not it is incorporated or has a separate legal identity, and
any executor, administrator or successor in law of the person;
and
(v) anything (including a right, obligation or concept) includes each
part of it.
(b) A singular word includes the plural, and vice versa.
(c) A word which suggests one gender includes the other genders.
(d) If a word is defined, another part of speech has a corresponding
meaning.
(e) If an example is given of anything (including a right, obligation or
concept), such as by saying it includes something else, the example
does not limit the scope of that thing.
(f) The word AGREEMENT includes an undertaking or other binding
arrangement or understanding, whether or not in writing.
(g) The words SUBSIDIARY, HOLDING COMPANY and RELATED BODY CORPORATE have
the same meanings as in the Corporations Act.
5.
1.3 BUSINESS DAYS
If the day on or by which a person must do something under this document is
not a Business Day:
(a) if the act involves a payment that is due on demand, the person must
do it on or by the next Business Day; and
(b) in any other case, the person must do it on or by the previous
Business Day.
2. LICENCE
2.1 GRANT OF LICENCE
Novogen Research grants to Glycotex an exclusive, non-transferable licence
to use and Exploit the Glucan Technology for the Term in the Territory,
solely in the Field.
2.2 RIGHTS INCLUDED
The licence in clause 2.1 includes the right, for the Term, in the
Territory and in the Field, to:
(a) make, use, reproduce, market, distribute, sell, hire or otherwise
dispose of Licensed Products and inventions the subject of the Glucan
Patent Rights;
(b) modify, enhance, create derivative works based on and further develop
the Glucan Technology; and
(c) keep, use, reproduce and make adaptations of the Glucan Material
provided by Novogen Research under clause 3.2; and
(d) use any methods or processes forming part of the Glucan Technology to
do any of the things in paragraphs (a) to (c).
2.3 NO SUB-LICENCE
Glycotex must not grant sub-licences of any of the rights granted to it
under this clause 2 without the prior written consent of Novogen Research.
2.4 SUB-CONTRACTORS
Glycotex may engage agents and sub-contractors to exercise the rights and
perform its obligations under this document in Glycotex's reasonable
discretion, provided Glycotex shall first cause all such agents and
sub-contractors to agree in writing:
(a) to comply with the confidentiality obligations of Glycotex under this
document; and
(b) to assign to Glycotex all Intellectual Property Rights in the Field
accrued or accruing to them in the course of their engagement.
6.
3. RESEARCH AND DEVELOPMENT
3.1 RESEARCH AND DEVELOPMENT
Novogen Research appoints Glycotex as its independent contractor to
undertake further research and development in relation to the Glucan
Technology in the Field and subject to clauses 3.3, 3.4 and 3.5 in such
manner as it thinks fit in the Territory.
3.2 GLUCAN MATERIAL
Within 28 days of the Commencement Date and from time to time during the
Term, Novogen Research shall provide to Glycotex copies and samples of such
Glucan Material as in Novogen's reasonable opinion is necessary or useful
to enable Glycotex to have the full benefit of the licence granted under
clause 2 and to conduct research, development and commercialisation in
accordance with the provisions of this clause 3.
3.3 CONDUCT OF RESEARCH
Glycotex must conduct any further research and development diligently, in
good scientific manner and in compliance with any applicable laws, rules
and regulations of any Government Agency and consistently with the
requirements of any applicable good laboratory practices.
3.4 FACILITIES AND PERSONNEL
In order to comply with its obligations under this clause 3, Glycotex shall
engage personnel with appropriate skill and experience and use appropriate
equipment and facilities.
3.5 RECORDS
Glycotex shall maintain complete and accurate records in good scientific
manner, which shall fully reflect all work done and results achieved in the
course of research and development under this clause 3. Glycotex shall
maintain such records in confidence and must not use such records or
information other than in accordance with the provisions of this document.
3.6 INSPECTION
Novogen Research shall have the right, during normal business hours and
upon reasonable notice, to inspect and copy all records maintained by
Glycotex under clause 3.5 and Novogen Research may retain such copies as it
thinks fit.
4. DEVELOPMENTS
4.1 NOVOGEN DEVELOPMENTS
Novogen Research shall disclose to Glycotex all Novogen Developments as
soon as is reasonably practicable after becoming aware of them.
7.
4.2 GLYCOTEX DEVELOPMENTS
Glycotex must disclose to Novogen Research all Glycotex Developments
immediately upon becoming aware of them and by this document Glycotex
assigns to Novogen Research absolutely its entire right, title and interest
in all Intellectual Property Rights in any Glycotex Developments.
5. MARKETING AND COMMERCIALISATION
5.1 MARKETING AND EXPLOITATION
Subject to clause 5.2 and 5.3, Glycotex may use, market and Exploit the
Glucan Technology and any Licensed Product in the Field in such manner as
it thinks fit in the Territory and at its sole cost and expense.
5.2 EXPLOITATION OBLIGATIONS
Glycotex must use Diligent Efforts to:
(a) identify major markets for commercial Exploitation of Licensed
Products;
(b) further develop Licensed Products towards commercial Exploitation;
(c) pursue opportunities in major markets for commercial Exploitation of
Licensed Products;
(d) promote, market and Exploit Licensed Products in major markets in the
Territory; and
(e) otherwise maximise Commercialisation Income.
5.3 COMPLIANCE WITH LAWS
Glycotex must conduct any marketing and Exploitation activities under this
clause 5 on a commercially reasonable basis, in compliance with any
applicable laws and requirements of any Government Agency.
5.4 COMMERCIALISATION INCOME
Glycotex shall be responsible for negotiation and collection of
Commercialisation Income and shall apply any Commercialisation Income
received by it in cleared funds net of Taxes:
(a) firstly by way of reimbursement in full of all costs and expenses
incurred by Glycotex in the course of marketing and Exploitation of
the Glucan Technology and any Licensed Products;
(b) secondly by way of reimbursement in full of all costs and expenses
incurred by Glycotex in research and development of the Glucan
Technology and any Licensed Products;
8.
(c) thirdly by way of reimbursement in full of all costs and expenses
incurred by Glycotex of and incidental to its business to the extent
that business relates to research, development, marketing or
Exploitation of the Glucan Technology and any Licensed Products; and
(d) fourthly in accordance with the provisions of clause 6.
5.5 BOOKS AND RECORDS
Glycotex must keep and maintain separate and complete records and books of
account relating to the sale, distribution, production, licensing,
marketing or other Exploitation of Licensed Products and any licensing,
sub-licensing or other Exploitation of the Glucan Technology, which must
depict the application of any Commercialisation Income in accordance with
clause 5.4 and must contain clear particulars sufficient to enable the
calculation of the royalties payable to Novogen Research under clause 6.1.
5.6 AUDITORS' CERTIFICATES
Glycotex must within 28 days of a request by Novogen Research at any time
during the Term, produce a certificate by the auditors or accountants of
Glycotex as to the accuracy and completeness of the records and books of
account maintained under clause 5.5.
5.7 INSPECTION
Novogen Research shall have the right during normal business hours and upon
reasonable notice by its authorised representatives (including accountants
and auditors) to inspect the records and books of account referred to in
clause 5.5. In the course of inspection, Novogen Research's authorised
representatives may take and retain such copies and extracts of the records
and books of account of Glycotex as they think fit.
5.8 ASSISTANCE
Glycotex shall give Novogen Research's authorised representatives such
assistance as they may require, including by providing access to
facilities, hardware, software and documents, to enable them to perform an
inspection under clause 5.6 and to enable the Commercialisation Income and
royalties payable to Novogen Research to be ascertained and verified.
6. ROYALTIES
6.1 ROYALTIES
(a) Subject to paragraph (b), in consideration of the licence granted in
clause 2, Glycotex must pay to Novogen Research a royalty of 2% of any
Commercialisation Income remaining after the deductions referred to in
sub-clauses 5.4(a), (b) and (c) in accordance with this clause 6.
(b) If the Amended and Re-stated Manufacturing Licence and Supply
Agreement between Glycotex and Novogen Laboratories Pty Limited dated
on or about the date of this document is terminated under clause
15.2(e) of that document, then from the date of termination, Glycotex
must pay to Novogen Research a royalty of
9.
4% of any Commercialisation Income remaining after the deductions
referred to in sub-clauses 5.4(a), (b) and (c) in accordance with this
clause 6.
6.2 PAYMENT
All royalties payable by Glycotex to Novogen Research under clause 6.1 must
be calculated in United States Dollars and must be paid:
(a) by bank cheque or electronic transfer to an account notified by
Novogen Research to Glycotex in writing;
(b) six monthly in arrears, within 28 days of 30 June and 31 December of
each year during the Term; and
(c) without any set-off or counterclaim and (to the maximum extent
permitted by the law) free and clear of, and without deduction or
withholding for or on account of, any Taxes.
6.3 STATEMENTS
Glycotex must prepare statements as at 30 June and 31 December each year
during the Term, showing:
(a) the details and progress of research, development, marketing and
commercial Exploitation of the Glucan Technology and any Licensed
Products;
(b) details of any Commercialisation Income in the period to which the
statement relates and the manner in which that Commercialisation
Income is applicable in accordance with clause 5.4; and
(c) the calculation of the royalty (if any) payable to Novogen Research,
and must submit such statements to Novogen Research within 28 days of the
end of the period to which they relate, together with payment of any
royalties due to Novogen Research under this clause 6.
6.4 DISPUTED STATEMENTS
If Novogen Research disputes any statement submitted by Glycotex under
clause 6.3, Novogen Research may have that statement certified in
accordance with clause 6.5.
6.5 CERTIFICATION
If Novogen Research wishes to exercise its rights under clause 6.4, Novogen
Research shall give notice to Glycotex that it wishes to do so, and may, by
its authorised representations, have the statement certified at Novogen
Research's cost, and in order to do so, may inspect Glycotex's records and
books of account in accordance with the provisions of clauses 5.5 and 5.7.
10.
6.6 ADJUSTMENTS
The certification by Novogen Research of any statement under clause 6.5
shall be final and binding on the parties and the parties shall make such
adjustments (including adjustments for interest) required as a result of
the certification within 14 days of the certification. In the event the
certification reveals the royalty paid to Novogen Research was
underestimated by 5% or more, Glycotex must also reimburse Novogen Research
for the cost of certification.
7. DEDUCTIONS AND WITHHOLDINGS
If at any time any applicable law obliges Glycotex to make a deduction or
withholding in respect of any Tax from any payment by Glycotex to Novogen
Research under this document, Glycotex must:
(a) notify Novogen Research of the obligation promptly after Glycotex
becomes aware of it;
(b) ensure that the deduction or withholding does not exceed the minimum
amount required by law;
(c) pay to the relevant Government Agency on time the full amount of the
deduction or withholding and promptly deliver to Novogen Research a
copy of any receipt, certificate or other proof of payment; and
(d) indemnify Novogen Research against the deduction or withholding, by
paying to Novogen Research, at the time that the payment is due, an
additional amount that ensures that after the deduction or withholding
is made, Novogen Research receives a net sum equal to the sum that it
would have received if the deduction or withholding had not been made.
8. PATENTS
8.1 MAINTENANCE OF PATENTS
Subject to clause 8.2, Novogen Research shall be responsible for filing,
prosecution and maintenance in the Territory of the Glucan Patent Rights
and may file, prosecute and maintain the Glucan Patent Rights in its sole
discretion.
8.2 PATENT COSTS
Glycotex shall be responsible for payment of all costs and expenses
relating to the filing, prosecution and maintenance of the Glucan Patent
Rights under clause 8.1 and must reimburse Novogen Research such costs and
expenses within 28 days of receipt of an invoice from Novogen Research.
8.3 GLYCOTEX'S OPTION
Novogen Research shall give notice to Glycotex of any intention to cease
prosecution and/or maintenance of any Glucan Patent Rights and shall permit
Glycotex to continue
11.
prosecution or maintenance of any such Glucan Patent Rights on its own
behalf and at its own cost and expense.
9. INTELLECTUAL PROPERTY RIGHTS
9.1 ACKNOWLEDGMENT
Glycotex acknowledges that this document does not effect a transfer to
Glycotex of any right, title or interest in any Intellectual Property
Rights in the Glucan Technology and Glycotex must not represent that it has
any right, title or interest in any Intellectual Property Rights in the
Glucan Technology other than the rights expressly granted to it under this
document.
9.2 NOTIFICATION
Each party must notify the other immediately upon becoming aware of:
(a) any actual or apparent infringement by any person of any Intellectual
Property Rights in the Glucan Technology; or
(b) any assertion or claim by any person that the activities of either
party under this document infringe the Intellectual Property Rights of
any person.
9.3 PROCEEDINGS INVOLVING GLYCOTEX
Subject to clause 9.4, Glycotex may in its discretion, for its own benefit
and at its own cost and expense, enforce and defend in the Territory the
Intellectual Property Rights in the Glucan Technology and in order to do so
may take and defend any legal proceedings. In the event Glycotex is
involved in any such legal proceedings, Glycotex shall have the conduct and
control of those proceedings subject to clause 9.4.
9.4 DIRECTIONS BY NOVOGEN RESEARCH
Glycotex must:
(a) take and conduct any proceedings in respect of any actual or suspected
infringement in the Territory of any Intellectual Property Rights in
the Glucan Technology;
(b) defend and conduct the defence of any claim of infringement against
the parties; and
(c) defend and conduct the defence of any claim seeking revocation of the
Glucan Patent Rights,
as Novogen Research reasonably directs (having regard to questions of
prospects of success and commercial feasibility) by notice in writing from
time to time, at Glycotex's cost and expense.
12.
9.5 JOINDER OF NOVOGEN RESEARCH
If it is necessary that Novogen Research be a party to any proceedings
commenced or intended to be commenced by Glycotex, Novogen Research shall
join such proceedings as a plaintiff and shall provide all reasonable
assistance in relation to those proceedings, including by executing any
documents, as Glycotex reasonably requests, at Glycotex's cost.
9.6 PROCEEDINGS INVOLVING NOVOGEN RESEARCH
In the event Glycotex fails to commence proceedings within 21 days of
receipt of a notice from Novogen Research under sub-clause 9.4(a), then in
addition to any other right Novogen Research may have under this document
or otherwise, Novogen Research may commence those proceedings in its sole
discretion. In the event it does so, Novogen Research shall have the
conduct and control of the proceedings including the right to settle them.
9.7 JOINDER OF GLYCOTEX
If it is necessary that Glycotex be a party to any proceedings commenced or
intended to be commenced by Novogen Research under clause 9.6, Glycotex
must join such proceedings as a plaintiff and must provide all assistance
in relation to those proceedings, including by executing any documents, as
Novogen Research requests, at Glycotex's cost.
10. CONFIDENTIAL INFORMATION
10.1 CONFIDENTIALITY
Glycotex must:
(a) keep and maintain all Confidential Information strictly confidential;
(b) use Confidential Information only for the purposes for which it is
disclosed to Glycotex; and
(c) not disclose any Confidential Information other than to its employees,
authorised sub-contractors, legal advisers, auditors or other
consultants requiring the information for the purposes of this
document upon those persons undertaking to Glycotex to keep that
information strictly confidential.
10.2 SECURITY
For the purposes of clause 10.1, Glycotex must establish and maintain
effective security measures to safeguard the Confidential Information from
unauthorised use or access and must notify Novogen Research immediately
upon becoming aware of any suspected or actual unauthorised use or
disclosure of Confidential Information.
13.
10.3 EXCEPTIONS
The obligations in clauses 10.1 and 10.2 do not apply to the extent that:
(a) Glycotex is required by law to disclose any Confidential Information,
promptly gives notice to Novogen Research of that requirement and
discloses only that portion of Confidential Information which it is
legally required to disclose; or
(b) disclosure of any Confidential Information is required to comply with
any applicable law or requirement of any Government Agency, Glycotex
promptly gives notice to and consults with Novogen Research to the
extent practicable and uses its best endeavours to minimise any such
disclosure and to ensure that any Confidential Information so
disclosed will be treated confidentially.
11. REPRESENTATIONS AND WARRANTIES
11.1 WARRANTIES BY NOVOGEN RESEARCH
Novogen Research represents and warrants to Glycotex that:
(a) (PROPER AUTHORISATION) its execution and delivery of this document has
been properly authorised by all necessary corporate action;
(b) (CORPORATE POWER) it has full corporate power and lawful authority to
execute and deliver this document and to perform or cause to be
performed its obligations under this document;
(c) (NO BREACH) its execution of this document will not result in the
breach of or default under any material term or provision of any
agreement or deed, or any writ, order or injunction, judgment, law,
rule or regulation to which it is a party or is subject or by which it
is bound; and
(d) (NO ACTIONS) to its knowledge there are no actions, claims,
proceedings or investigations pending or threatened against it or by,
against or before any person which may have a material effect on the
subject matter of this document.
11.2 WARRANTIES BY GLYCOTEX
Glycotex represents and warrants to Novogen Research that:
(a) (PROPER AUTHORISATION) its execution and delivery of this document has
been properly authorised by all necessary corporate action;
(b) (CORPORATE POWER) it has full corporate power and lawful authority to
execute and deliver this document and to perform or cause to be
performed its obligations under this document;
(c) (BINDING OBLIGATION) this document constitutes a legal, valid and
binding obligation on it in accordance with the intentions of the
parties as expressed in its terms;
14.
(d) (NO BREACH) its execution of this document will not result in the
breach of or default under any material term or provision of any
agreement or deed, or any writ, order or injunction, judgment, law,
rule or regulation to which it is a party or is subject or by which it
is bound; and
(e) (NO ACTIONS) there are no actions, claims, proceedings or
investigations pending or threatened against it or by, against or
before any person which may have a material effect on the subject
matter of this document.
(f) (OWNERSHIP) Glycotex is, and will be immediately before assignment to
Novogen Research under clause 4.2, the legal and beneficial owner of
all Intellectual Property Rights in any Glycotex Developments and no
other person has or shall have any claim of ownership with respect to
any Glycotex Developments; and
(g) (NO DEALINGS) immediately before assignment to Novogen Research under
clause 4.2, Glycotex has not assigned, transferred or granted any
interest or licence, or otherwise encumbered or dealt with its right,
title or interest in any Glycotex Developments.
11.3 RELIANCE ON REPRESENTATIONS AND WARRANTIES
Each party acknowledges that the other party has executed this document and
agreed to take part in the transactions that this document contemplates in
reliance on the representations and warranties that are made in this clause
11.
11.4 ACKNOWLEDGEMENT BY GLYCOTEX
Glycotex acknowledges that apart from the warranties in clause 11, Novogen
Research has not made, and does not in this document make, any
representation or warranty:
(a) regarding the Glucan Technology;
(b) as to the validity or enforceability of the Glucan Patent Rights
anywhere in the world; or
(c) to the effect that the exploitation of any Licensed Product anywhere
in the world will not infringe the Intellectual Property Rights of any
person.
11.5 EXCLUSION OF WARRANTIES AND OTHER TERMS
To the extent permitted by law, Novogen Research excludes:
(a) all representations, warranties and other terms in or in connection
with this document and the transactions that it contemplates, other
than those expressly stated in this document; and
(b) all terms that may otherwise be implied into this document.
15.
12. INDEMNITY AND INSURANCE
12.1 INDEMNITY
Glycotex must indemnify and keep indemnified Novogen Research and its
directors, employees and agents against all damages, costs or expenses
(including legal costs and expenses on an indemnity basis) in respect of
any claims, demands, actions, proceedings or prosecution which may be
brought or commenced against Novogen Research as a result of or in relation
to:
(a) the licensing or sub-licensing of the Glucan Technology;
(b) the sale, distribution, production, licensing, marketing or other
Exploitation of Licensed Products;
(c) any marketing, advertisement or promotion of Licensed Products or
Glucan Technology;
(d) any breach of any term of this document, including the representations
and warranties in clause 11.2; or
(e) any negligence, wilful misconduct or misleading conduct,
by Glycotex, its employees, agents and sub-licensees, including any
warranty claims, product liability claims, product recalls and claims for
personal injury or property damage.
12.2 INSURANCE POLICIES
Glycotex must take out and maintain in force in the Territory:
(a) a product liability insurance policy;
(b) a public liability insurance policy; and
(c) a product recall insurance policy,
in relation to any Licensed Products on terms satisfactory to Novogen
Research.
12.3 NOVOGEN RESEARCH'S NAME
If requested by Novogen Research, Glycotex must ensure Novogen Research is
included on the policies referred to in clause 12.2 as a joint insured or
loss payee.
12.4 CERTIFICATES OF CURRENCY
At Novogen Research's request from time to time, Glycotex must provide to
Novogen Research a certificate of currency evidencing the compliance by
Glycotex with its obligations under this clause 12.
16.
12.5 DEFAULT
If within 28 days of a request by Novogen Research under clause 12.4,
Glycotex does not produce the certificate of currency under clause 12.4, or
if at any time Novogen Research becomes aware that Glycotex has failed to
perform its obligations under this clause 12 Novogen Research may (but is
not obliged to) take out and maintain the insurance and may recover any
premiums paid as a debt due by Glycotex.
12.6 EXPIRY
Each insurance policy is to by maintained until the expiry date of the last
Licensed Product sold, hired or otherwise disposed of by or on behalf of
Glycotex or its sub-licensees.
13. LIMITATION OF LIABILITY
13.1 NO LIABILITY
To the fullest extent permitted by law, and notwithstanding any other
provision of this document, in no circumstances shall Novogen Research be
liable in contract, tort (including negligence or breach of statutory duty)
or otherwise, and whatever the cause, to compensate Glycotex for any
damages, costs or expenses suffered or incurred by Glycotex as a result of
or in connection with:
(a) the licensing or sub-licensing of the Glucan Technology;
(b) the sale, distribution, production, licensing, marketing or other
Exploitation of Licensed Products; or
(c) any marketing, advertisement or promotion of Glucan Technology or
Licensed Products.
13.2 OTHER CLAIMS
Notwithstanding any other provision of this document, in no circumstances
is Novogen Research liable in contract, tort (including negligence or
breach of statutory duty) or otherwise, and whatever the cause, to
compensate Glycotex for:
(a) any increased costs or expenses;
(b) any loss of profit, revenue, business, contracts or anticipated
savings;
(c) any special, indirect or consequential loss or damage of any nature
whatsoever; or
(d) in any other case, for an amount which is greater than $AUD 5 million.
17.
14. TERM AND TERMINATION
14.1 TERM
The rights and obligations of the parties under this document commence on
the Commencement Date and subject to clauses 14.3, 14.4 and 14.5 shall
terminate on the expiration of the last Glucan Patent Right in the
Territory.
14.2 EXPIRATION OF PATENTS
If during the Term a Glucan Patent Right in any country in the Territory
lapses or is held invalid, then subject to clause 14.1, any licence or
right granted under this document to use and exploit any invention the
subject of such Glucan Patent Right shall continue in full force and effect
in that country on the same terms as a licence in respect of the
Confidential Information only.
14.3 TERMINATION BY NOVOGEN RESEARCH
Novogen Research may terminate this document immediately at any time if:
(a) (BREACH) Glycotex commits any breach of any term of this document
which is not remedied within 21 days of written notice from Novogen
Research requiring the breach to be remedied;
(b) (INSOLVENCY EVENT) Glycotex is involved in an Insolvency Event; or
(c) (CHANGE IN CONTROL) there is a Change in Control of Glycotex without
Novogen Research's written consent.
14.4 CONSEQUENCES OF TERMINATION
Upon termination of this document other than by effluxion of time, Glycotex
shall immediately:
(a) cease using and exploiting the Glucan Technology; and
(b) return to Novogen Research or destroy at Novogen Research's election,
all Glucan Material, any copies (including electronic copies) of the
Glucan Know How, all labelling and packaging materials relating to
Licensed Products and any other Confidential Information in Glycotex's
possession, custody or power,
provided that Glycotex may complete any contracts for sale or supply of
Licensed Products to which Glycotex became bound prior to the date of
termination.
14.5 SURVIVAL AND ACCRUED RIGHTS
Upon termination under this clause 14, this document, other than the
obligations of the parties under clauses 10, 12.1, 13, 14 and 15 (which
shall survive termination), is at an end as to its future operation except
for the enforcement of any right or claim which arises on or has arisen
before termination.
18.
15. DISPUTE RESOLUTION
15.1 DISPUTES
If a dispute arises out of or in relation to this document (including any
dispute as to breach or termination of the document or as to any claim in
tort, in equity or pursuant to any statute) (a DISPUTE), a party to this
document may not commence any court or arbitration proceedings relating to
the Dispute unless it has complied with this clause 15 except where the
party seeks urgent interlocutory relief.
15.2 NOTICE OF DISPUTE
A party claiming that a Dispute has arisen under or in relation to this
document must give written notice to the other party specifying the nature
of the Dispute (a DISPUTE NOTICE).
15.3 PARTIES TO ATTEMPT TO RESOLVE DISPUTE
On receipt of a Dispute Notice, the parties must endeavour to resolve the
Dispute expeditiously using informal dispute resolution techniques such as
mediation, expert evaluation or determination or similar techniques agreed
by the parties.
15.4 MEDIATION
If the parties do not agree within seven (7) days of receipt of a Dispute
Notice (or such further period as the parties agree in writing) as to:
(a) the dispute resolution technique and procedures to be adopted;
(b) the timetable for all steps in those procedures; and
(c) the selection and compensation of the independent person required for
such technique,
the parties must mediate the Dispute in accordance with the Mediation Rules
of the Law Society of New South Wales, and the President of the Law Society
of New South Wales (or the President's nominee) will select the mediator
and determine the mediator's remuneration.
16. NOTICES
(a) A notice, consent or other communication under this document is only
effective if it is in writing, signed and either left at the
addressee's address or sent to the addressee by mail or fax. If it is
sent by mail, it is taken to have been received 3 working days after
it is posted. If it is sent by fax, it is taken to have been received
when the addressee actually receives it in full and in legible form.
(b) The parties' addresses and fax numbers are those set out below, or as
either party notifies the other:
19.
NOVOGEN RESEARCH
Address: ▇▇▇ ▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇, ▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇
Fax number: Int + 61 2 9878 0055
Attention: The Managing Director
GLYCOTEX
Address: ▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇, ▇▇▇▇▇▇▇▇ ▇▇ ▇▇▇▇▇
Fax number: Int + 1 203 327 0011
Attention: The President
17. AMENDMENT AND ASSIGNMENT
17.1 AMENDMENT
This document can only be amended, supplemented, replaced or novated by
another document signed by the parties.
17.2 ASSIGNMENT
(a) Subject to paragraph (b), neither party may dispose of, declare a
trust over or otherwise create an interest in its rights under this
document with the written consent of the other party.
(b) Novogen Research may dispose of, declare a trust over or otherwise
create an interest in its rights in the Glucan Intellectual Property
and its rights under this document to a related body corporate without
the consent of Glycotex, and may disclose to any related body
corporate any information relating to this document or any party to
it.
18. GENERAL
18.1 GOVERNING LAW
(a) This document is governed by the law in force in New South Wales.
(b) Each party submits to the non-exclusive jurisdiction of the courts
exercising jurisdiction in New South Wales, and any court that may
hear appeals from any of those courts, for any proceedings in
connection with this document, and waives any right it might have to
claim that those courts are an inconvenient forum.
18.2 LIABILITY FOR EXPENSES
(a) Subject to paragraph (b), each party must pay its own expenses
incurred in negotiating, executing and registering this document.
(b) Glycotex must indemnify Novogen Research against, and must pay Novogen
Research on demand the amount of, any duty that is payable on or in
relation to this document.
20.
18.3 RELATIONSHIP OF THE PARTIES
Nothing in this document creates a relationship of employment, partnership
or joint venture between the parties under the laws of any applicable
jurisdiction and neither party may act or has the authority to act as agent
of or in any way bind or commit the other party to any obligation.
18.4 GIVING EFFECT TO THIS DOCUMENT
Each party must do anything (including execute any document), and must
ensure that its employees and agents do anything (including execute any
document), that the other party may reasonably require to give full effect
to this document.
18.5 WAIVER OF RIGHTS
A right may only be waived in writing, signed by the party giving the
waiver, and:
(a) no other conduct of a party (including a failure to exercise, or delay
in exercising, the right) operates as a waiver of the right or
otherwise prevents the exercise of the right;
(b) a waiver of a right on one or more occasions does not operate as a
waiver of that right if it arises again; and
(c) the exercise of a right does not prevent any further exercise of that
right or of any other right.
18.6 OPERATION OF THIS DOCUMENT
(a) This document contains the entire agreement between the parties about
its subject matter. Any previous understanding, agreement,
representation or warranty relating to that subject matter is replaced
by this document and has no further effect.
(b) Any right that a person may have under this document is in addition
to, and does not replace or limit, any other right that the person may
have.
(c) Any provision of this document which is unenforceable or partly
unenforceable is, where possible, to be severed to the extent
necessary to make this document enforceable, unless this would
materially change the intended effect of this document.
18.7 OPERATION OF INDEMNITIES
(a) Each indemnity in this document survives the expiry or termination of
this document.
(b) A party may recover a payment under an indemnity in this document
before it makes the payment.
21.
18.8 CONSENTS
Where this document contemplates that either party may agree or consent to
something (however it is described), that party may:
(a) agree or consent, or not agree or consent, in its absolute discretion;
and
(b) agree or consent subject to conditions,
unless this document expressly contemplates otherwise.
18.9 EXCLUSION OF CONTRARY LEGISLATION
Any legislation that adversely affects an obligation of a party, or the
exercise by a party of a right or remedy, under or relating to this
document is excluded to the full extent permitted by law.
18.10 COUNTERPARTS
This document may be executed in counterparts.
EXECUTED as an agreement.
EXECUTED by NOVOGEN
RESEARCH PTY LIMITED:
/s/ ▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ /s/ ▇▇▇ ▇▇▇ ▇▇▇▇▇▇
------------------------------------- ----------------------------------------
Signature of director Signature of director/secretary
▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇ ▇▇▇▇▇▇
------------------------------------- ----------------------------------------
Name Name
EXECUTED by GLYCOTEX, INC.:
/s/ ▇▇▇▇▇ ▇▇▇▇▇▇ /s/ ▇▇▇▇▇ ▇▇▇▇▇▇
------------------------------------- ----------------------------------------
Signature of director Signature of director/secretary
▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇
------------------------------------- ----------------------------------------
Name Name
22.
SCHEDULE A
GLUCAN PATENT RIGHTS
COUNTRY NO. PRIORITY STATUS
------- --- -------- ------
PCT PCT/AU96/00138 13 March 1995 Filed
Australia 716181 13 March 1995 Granted
Canada 2 214 899 13 March 1995 Under examination
Europe 0815144 13 March 1995 Granted
Japan 08-527114 13 March 1995 Pending
UK 2331014 13 March 1995 Granted
UK (divisional) 2314850 13 March 1995 Granted
USA 6242594 13 March 1995 Granted
USA (continuation) 10/421,659 13 March 1995 Under examination
GLUCAN KNOW HOW
1. chemical descriptions and manufacturing processes of NG-1, NG-2 and NG-3;
2. formulation data;
3. clinical trial data; and
4. therapeutic opportunities in the Field.
23.