Sample Business Contracts

License Agreement - Life Sciences Inc. and Organon Teknika BV

Sponsored Links

                               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.,


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

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;



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.

<PAGE>   2
                                     Page 2


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.


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.


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.


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.

<PAGE>   3

                                     page 3

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


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

<PAGE>   4
                                     page 4

         (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.


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

         (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.


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.


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.


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

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.
<PAGE>   5
                                     page 5

         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.


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
<PAGE>   6

                                     page 6

         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.


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


                  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.
<PAGE>   7
                                     page 7

IN WITNESS WHEREOF, the parties hereto have executed this Agreement by their
duly authorized officers in duplicate the day, month and year first written

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: