License Agreement - Life Sciences Inc. and Organon Teknika BV
LICENSE AGREEMENT
This License Agreement ("Agreement") is entered into this 25th day of May 2000,
by and between
LIFE SCIENCES INC., (hereinafter referred to as "Licensor"), a corporation
established under the laws of Delaware, having its registered offices at 2900
72nd Street North, St. Petersburg, Florida 33710, U.S.A.,
and
ORGANON TEKNIKA B.V. (hereinafter referred to as "Licensee"), a private company
with limited liability incorporated under the laws of The Netherlands, having
its principal place of business at Boseind 15, 5281 RM Boxtel, The Netherlands,
Licensor and Licensee to be referred to as each a "party" or together as "the
parties".
WHEREAS, Licensor possesses Know How (as defined herein) relating to a NASBA
Enzyme Cocktail which includes T7 RNA Polymerase in glycerol free medium,
AMV-Reverse Transcriptase in glycerol free medium and E.coli RNase H in
glycerol free medium;
WHEREAS, Licensee wishes to acquire rights under the Know How for the purpose
of developing, manufacturing and using the Product (as defined herein);
WHEREAS, Licensor has the right to license, and is desirous of licensing the
Know How, to the extent set forth herein;
NOW, THEREFORE, THE PARTIES AGREE AS FOLLOWS:
ARTICLE 1 DEFINITIONS
1.1. The term "Know How" means all the know how, show-how, information,
methods, techniques, specifications, formulae, instructions, procedures
and data, whether patented or unpatented and disclosed by Licensor
orally, in writing or in any other form to Licensee, and related to the
development, manufacture and use of the Product.
1.2. The term "Product" means a NASBA Enzyme Cocktail which includes T7 RNA
Polymerase in glycerol free medium, AMV-Reverse Transcriptase in
glycerol free medium and E.coli RNase H in glycerol free medium.
1.3. The term "Supply Agreement" means the agreement for the supply of the
Products entered into by Licensor and Licensee on; May 25th, 2000.
1.4. The term "Affiliate" means any company or other business entity which,
by ownership of a majority of shares or more than 50% interest in income
or otherwise, directly or indirectly controls, is controlled by or is
under common control with either party.
1.5. The term "Effective Date" shall mean the day, month and year first set
out above.
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ARTICLE 2 - RIGHTS
2.1. Commencing with the effective date, Licensor hereby grants to
Licensee, which accepts the same, a royalty free, non-transferable,
non-exclusive and indivisible license, without the right to
Sublicense, to manufacture the Product for use in Licensee's own
products for sale under its own label throughout the entire world.
2.2. Licensee is not permitted to develop, manufacture, use or sell any
Product other than the Product for which a license is hereby granted
under paragraph 2.1.
ARTICLE 3 - DEVELOPMENT
3.1. Promptly after execution of this Agreement, Licensor will disclose and
deliver to Licensee all Know How in the possession of Licensor as
needed by Licensee in the manufacture of the Product.
The parties acknowledge, for the avoidance of doubt, that no transfer
of ownership rights to intellectual property embodied in the Know How
will be effected by such transfer of Know How.
3.2. After the transfer of the Know How by Licensor to Licensee pursuant to
paragraph 3.1, Licensee shall assume and diligently pursue at its own
expense all activities reasonably necessary to develop and manufacture
the Product.
3.3. Where Licensee makes improvements to the Product or discovers or
develops a new application of the Know How or the Product during the
term of this Agreement, Licensee will grant a royalty free, non
exclusive license to Licensor for the manufacture, development and use
of these improvements for the commercial sale throughout the world of
goods including the improvements.
ARTICLE 4 - TRADE MARK
Licensee will provide markings on the Product indicating that the Product was
manufactured subject to a know how license of Licensor. Such markings do not
in any way effect the exclusion of liability of Licensor as provided for in
Article 8.
ARTICLE 5 - DURATION AND TERMINATION
5.1. This Agreement shall become effective as from the Effective Date and
shall remain in effect for the duration of the underlying Supply
Agreement or until Licensor has resumed production of the Products as
provided for in paragraph 11.2 of the Supply Agreement, whichever
event occurs first.
5.2. In the event of a major breach by either party of this Agreement, in
addition to all other rights and remedies which either party may have,
the party not in default may terminate this Agreement by written
notice to the other. Such termination shall become effective on the
date set forth in the notice of termination, but in no event shall it
be earlier than sixty (60) days from the date of mailing thereof and
shall have no effect if to the satisfaction of the party not in
default the breach has been cured within the said period of notice.
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5.3. If one of the parties hereto becomes insolvent or makes an assignment
for the benefit of creditors or proceedings in voluntary or involuntary
bankruptcy are instituted on behalf of or against said party or a
receiver or trustee of said party's property is appointed, this
Agreement may be terminated with immediate effect by written notice by
the other party without any notice period.
5.4. Licensor may terminate this Agreement in the event that Licensee,
without the prior written consent of Licensor, assigns, in whole or in
part, this Agreement to a third party other than an Affiliate or in the
event there is a substantial change in the identity of Licensee's
present control or shareholding. Licensor shall, at its own discretion,
only exercise such right if such event has or might have a substantial
impact on the business of Licensor or on the proper implementation of
this Agreement.
5.5. Licensor may terminate this Agreement immediately where Licensee
challenges, or threatens to challenge the validity and/or ownership of
the Know How, including the secret nature, substance or identity of the
owner of the Know How.
5.6. Upon termination, Licensee shall immediately cease to use the Know How
and shall return promptly to the Licensor upon its request all data,
information, records, reports etc. in respect of the Know How, and
transfer all rights accruing to Licensee as a consequence of this
Agreement.
ARTICLE 6 - CONFIDENTIALITY
6.1. Licensee agrees that any Confidential Information (as defined in
paragraph 19.2 of the Supply Agreement) obtained by it from Licensor
pursuant to this Agreement or the Supply Agreement, shall be kept in
the strictest confidence and shall only be used for the proper
performance of this Agreement, except that this obligation shall not
apply to:
a) information which is in or becomes part of the public domain
otherwise than by breach of this Agreement; or
b) information which the Licensee can show by written documents
was in its possession at the date of receipt thereof from the
Licensor; or
c) information which was received by Licensee on a
non-confidential basis from a third party having the legal
right to transmit the same.
6.2. In the event that either party, its representatives or its Affiliates,
or anyone to whom either party, its representatives or its Affiliates
supply Confidential Information of the other party, are requested or
required by oral questions, interrogations, requests for information or
documents, subpoena, or any informal or formal investigation by any
government or governmental agency or authority, or as a result of
relevant laws, rules or regulations, to disclose any Confidential
Information of the other party or such person's opinion, judgment, view
or recommendation concerning or as developed from the Confidential
Information of the other party, the parties agree:
(a) to notify the other party immediately of the existence, terms
and circumstances surrounding such a request or requirement;
(b) to consult with the other party on the advisability of taking
legally available steps to resist or narrow such request or
requirement; and
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(c) if disclosure of such information is required, to furnish
only that portion of the Confidential Information of the
other party which, in the opinion of the disclosing party's
counsel, such party is legally compelled to disclose and to
cooperate with any action by the other party to obtain an
appropriate judicial order or other reliable assurance that
confidential treatment will be accorded the Confidential
Information of the other party.
6.3. The foregoing obligations shall cease five (5) years after termination
or expiration of this Agreement.
ARTICLE 7 - LIABILITY
7.1. Licensee hereby undertakes to indemnify, defend and hold Licensor
harmless against any claims, demands, damages and expenses (including
reasonable attorneys' fees) in connection with any loss, damage, injury
or death suffered by Licensee, its Affiliates, employees or any third
party and either directly or indirectly arising or resulting or alleged
to arise or result from the development, manufacture or use or sale of
the Product.
7.2. The provisions of Paragraph 7.1 above shall apply with the provision
that:
(a) Licensor promptly notifies Licensee in writing after Licensor
receives notice of any claim;
(b) Licensee shall have as between Licensor and Licensee the
right to sole control of the defense, trial, and any related
settlement negotiations; and
(c) Licensor reasonably cooperates with Licensee in the defense
of any such claim.
ARTICLE 8 - ASSIGNMENT
Licensor shall have the right to assign this Agreement to, or to delegate its
obligations hereunder to be performed by any successor, Affiliate of Licensor or
third party. Subject to paragraph 2.1, this Agreement is not assignable by
Licensee without the prior written consent of Licensor, which shall not be
unreasonably withheld.
ARTICLE 9 - WHOLE AGREEMENT
This Agreement sets forth or refers to the entire agreement between the parties
hereto relating to the subject matter of this Agreement and supersedes all prior
agreements. This Agreement may be modified in writing only.
ARTICLE 10 - REPRESENTATIONS AND WARRANTIES
10.1. Licensor represents and warrants to Licensee that it has the full right
and power to grant the license to the Know How as set forth in this
Agreement.
10.2. Except as specifically set forth in paragraph 10.1. herein, Licensor
makes no representations or warranties, either express or implied,
arising by law or otherwise, including, but not limited to, implied
warranties of merchantability or fitness for a particular purpose. In
no event will Licensor have any obligation or liability arising from
tort, or for loss of revenue or profit, or for incidental or
consequential damages in this respect.
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In particular, with no limitation, nothing in this Agreement will be
construed as:
(i) A warranty or representation that anything made, used, sold or
otherwise disposed of under the license granted in this
Agreement is or will be free from infringement of patents or
other intellectual property rights of third parties;
(ii) Conferring the right to use in advertising, publicity, or
otherwise any trademark, trade name, or any contraction,
abbreviation, simulation, or adaptation thereof, of Licensor,
unless specifically authorized in this Agreement; or
(iii) Conferring by implication, estoppel, or otherwise any license
or rights under any patents or licenses of Licensor.
10.3. In the event of Licensee becomes aware of infringement of the Know How
by a third party, it will immediately notify Licensor thereof.
Licensor intends to use such reasonable efforts, as it in its sole
discretion determines, to pursue infringers and enforce its rights in
respect of the Know How.
Licensee at Licensor's request, shall render all reasonable assistance
and cooperation in that regard. Any recoveries resulting from such
action by Licensor shall be Licensor's property.
ARTICLE 11 - APPLICABLE LAW AND DISPUTE RESOLUTION
11.1. This Agreement shall be deemed to have been made in and shall be
construed in accordance with the laws of the State of Florida.
11.2. The parties shall attempt in good faith to resolve promptly any dispute
arising out of or relating to this Agreement by negotiation. If the
matter can not be resolved in the normal course of business, any
interested party shall give the other party written notice of any such
dispute not resolved, after which the dispute shall be referred to more
senior executives of both parties, who shall likewise attempt to
resolve the dispute.
11.3. If the dispute has not been resolved by negotiation within forty-five
(45) days of the disputing party's written notice, or if the parties
fail to meet within twenty (20) days as from such notice, the parties
shall endeavor to settle the dispute by mediation under the supervision
of and in accordance with the guidelines of the Centre for Dispute
Resolution (CEDR) in London, UK.
Unless otherwise agreed, both parties or each individual party may
request the CEDR to appoint an independent mediator. The language of
mediation shall be English and the seat of mediation shall be agreed
upon by both parties and, in the event parties do not timely agree, the
seat will be determined by the mediator.
11.4. If the dispute has not been resolved by non-binding means as provided
in 11.3 hereof within ninety (90) days of the initiation of such
procedure, the dispute shall be finally and exclusively settled by
arbitration in The Hague, or any other mutually agreed upon venue under
the Uncitral Arbitration Rules by three (3) independent arbitrators
appointed in accordance with said Rules. The appointing authority shall
be The London Court of International Arbitration in London, England.
The language of the arbitration shall be English. The arbitration shall
be in lieu of any other remedy and the award shall be final
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binding and enforceable by any court having jurisdiction for that
purpose. This Paragraph shall, however, not be construed to limit or to
preclude either party from bringing any action in any court of
competent jurisdiction for injunctive or other provisional relief as
necessary or appropriate.
ARTICLE 12 - MISCELLANEOUS PROVISIONS
12.1. All notices which shall or may be given hereunder shall be in writing
in English and shall be sent by registered mail or recognized carrier
service addressed to the recipient at the addresses herein stated, or
at such other address as a party may from time to time designate:
Organon Teknika B.V.
Boseind 15
5281 RM Boxtel
The Nethelands
Attn.: President
and
Life Sciences Inc.
2900 72nd Street North
St. Petersburg
Florida 33710, U.S.A.
Attn.: Vice President
12.2. The invalidity or impracticability of any terms of this Agreement
shall not affect the validity of its remaining terms. In such a case,
the parties shall agree without delay on a valid substitute term which
shall approximate as closely as possible the purpose of the invalid or
impracticable term.
12.3. The following provisions shall survive the expiration or termination
of this Agreement.
(a) for an indefinite period: Article 6 and 12; and
(b) for a period of five (5) years: Article 7.
12.4. This Agreement does not appoint either party as the agent or legal
representative of the other party, nor does it give either party the
right or authority, expressed or implied, to incur liability of any
kind in the name of or on behalf of the other party.
12.5. This Agreement is written in the English language and executed in two
(2) counterparts, each of which shall be deemed an original. The
English language is the official language of this Agreement and that
text of the Agreement shall prevail over any translation thereof.
12.6. Each party shall bear its own attorneys' fees and other expenses
incurred in evaluating, drafting and negotiating this Agreement and in
connection with the execution of this Agreement and shall hold the
other party harmless for any such charges.
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IN WITNESS WHEREOF, the parties hereto have executed this Agreement by their
duly authorized officers in duplicate the day, month and year first written
above.
For and on behalf of For and on behalf of
ORGANON TEKNIKA B.V. LIFE SCIENCES INC.
/s/ DR. R. SALSMANS /s/ ALEX BURNS
-------------------------------- --------------------------------
Name: Dr. R. Salsmans Name: Alex Burns
Title: President Title: Vice President
/s/ A.J.F. STAP
-------------------------------- --------------------------------
Name: A.J.F. Stap Name:
Title: Executive Vice President Title: