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EXHIBIT 10.1
LICENSE AND SUBLICENSE AGREEMENT
THIS AGREEMENT (the "Agreement"), is made and effective this 18th day of
January, 2001, by and between Quantech, Ltd., a Minnesota Corporation having its
principal office at 000 Xxxxxxxxx Xxxxxxx, Xxxxx 000 Xxxxx, Xxxxxxxxx, the
United States of America ("QUANTECH") and Mitsubishi Chemical Corporation, a
Japanese corporation having its principal office at 0-0, Xxxxxxxxxx 0-xxxxx,
Xxxxxxx-xx, Xxxxx, Xxxxx ("MCC").
RECITALS
WHEREAS, QUANTECH owns or has exclusively licensed or sublicensed from The
Serono Companies, Quantech Patents (defined in Paragraph 1.20) with the right to
grant sublicenses and QUANTECH wishes to license, or sublicense, as the case may
be, the Quantech Patents to MCC for the Medical Diagnostics Field (defined in
Paragraph 1.11) in Japan and MCC wishes to obtain an exclusive license or
sublicense to the Quantech Patents for the Medical Diagnostic Field in Japan;
WHEREAS, QUANTECH is developing Quantech Products (defined in Paragraph
1.21) and if Quantech Products are successfully developed, QUANTECH wishes to
have MCC exclusively distribute Quantech Products in Japan and MCC wishes to
exclusively distribute Quantech Products in Japan under the reasonable terms and
conditions to be mutually agreed upon between the parties in the separate
distribution agreement ("Distribution Agreement");
WHEREAS, MCC will develop MCC Technology (defined in Paragraph 1.9) and MCC
Improvement (defined in Paragraph 1.10) and MCC wishes to non-exclusively
license or sublicense, as the case may be, MCC Technology and non-exclusively
license MCC Improvements to QUANTECH in Non-Pacific Rim Territories (defined in
Paragraph 1.17) and QUANTECH wishes to obtain such licenses or sublicenses; and
WHEREAS, MCC may develop MCC Products (defined in Paragraph 1.8) and MCC
wishes to have QUANTECH exclusively distribute MCC Products in Non-Pacific Rim
Territories and QUANTECH desires to exclusively distribute MCC products in
Non-Pacific Rim Territories under the reasonable terms and conditions to be
mutually agreed upon between the parties in a separate agreement ("MCC Products
Distribution Agreement");
NOW, THEREFORE, in consideration of these premises, and the mutual
covenants and agreements hereinafter set forth and other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
Parties agree as follows:
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1. DEFINITIONS
For the purposes of interpreting this Agreement, the following definitions
will apply and whenever appropriate, terms used in the singular will also
include the plural and vice versa:
1.1 Cartridge means an assembly that holds reagents and other chemistries,
receives a human sample (i.e. blood, urine etc.) and delivers and/or
mixes, such sample and/or reagents and/or chemistries, to, or in an
area that, allows the Instrument to read a human diagnostic test,
which cartridge may contain a Flow Cell.
1.2 Effective Date means January 18, 2001.
1.3 Earned Royalty means the royalty payable on the Net Sales from
Products.
1.4 Flow Cell means a device which allows liquids to flow through it and
comprises a base piece which contains a grating pursuant to the
Grating SPR Technology, is coated with a conductive surface and has an
optically clear cover slip which is attached to the base piece by a
means that allows for fluid flow.
1.5 Grating SPR Technology means the use of thin conductive films on a
surface or surfaces of a grating or other diffracting substrate to
conduct chemical analysis.
1.6 Instrument means a device that reads the events that occur in a
Cartridge or Flow Cell and may contain one or more Ports for use in
the Field of Medical Diagnostics using Grating SPR Technology covered
by one or more Valid Claim of the Quantech Patents.
1.7 Human Diagnostics means testing or detection of human biological
conditions.
1.8 MCC Products means Instruments, Cartridges, Flow Cells and Peripheral
Equipment for Human Diagnostics to be developed by MCC using Grating
SPR Technology covered by one or more valid claims of the Quantech
Patents.
1.9 MCC Technology means any technology owned or controlled by MCC's
diagnostic R&D sector as of the effective date of this Agreement and
to be developed by MCC's diagnostic R&D sector during the term of this
Agreement that (i) will, subject to MCC's reasonable judgement, be
useful for the development of MCC Products and/or Quantech Products
for the Medical Diagnostics Field and (ii) MCC is not restricted from
licensing or
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sublicensing the technology by an agreement MCC may have with a third
party.
1.10 MCC Improvement means any technology that is an improvement of the
Quantech Technology (defined in Paragraph 1.21) obtained by MCC during
the term of this Agreement that (i) is useful for the Medical
Diagnostics Field and (ii) MCC is not restricted from licensing or
sublicensing the technology by an agreement MCC may have with a third
party.
1.11 Medical Diagnostics Field means those fields, the applications and
products which under current laws and regulations of the United States
would require approval of the United States Food and Drug
Administration if the application or product incorporating the
application were sold for clinical use in the United States.
1.12 Net Sales means the total amount invoiced by MCC or any sublicensee
for sales of MCC Products to third Parties after a deduction of any:
(i) sales, use or excise taxes; (ii) freight or shipping charges;
(iii) duty or insurance included therein, (iv) credits or prepayments
due to rejections; (v) defects or returns; (vi) amounts for trade and
quantity discounts actually allowed and taken; and (vii) packaging
costs.
1.13 Pacific Rim Territory means the countries of Japan, China, Taiwan,
Korea, Australia, New Zealand, Indonesia, Singapore and Thailand.
1.14 Peripheral Equipment means those devices that are sold in conjunction
with the Instrument and/or Cartridges, including, but not limited to,
wireless communication devices that are able to transfer information
between the Instrument and the communication devices.
1.15 Port means an entry point for a Cartridge in an Instrument that holds
a Cartridge.
1.16 SPR means surface plasmon resonance.
1.17 Non-Pacific Rim Territories shall mean the U.S.A., Canada, Mexico and
all other countries of the world that are not in the Pacific Rim
Territory as defined in Paragraph 1.13.
1.18 Quantech Licensed Patents means those patents that QUANTECH has
exclusively licensed or sublicensed from The Serono Companies, with
right to sublicense, and are listed in Schedule A of this Agreement.
1.19 Quantech Owned Patents means those patents in which all, right, title
and interest has been assigned exclusively to QUANTECH and which are
listed in Schedule A of this Agreement.
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1.20 Quantech Patents means QUANTECH Owned and QUATECH Licensed Patents.
Those patents to be granted on the Quantech Technology (defined in
Paragraph 1.22) shall be added in Schedule A of this Agreement and
shall be included in the Quantech Patents.
1.21 Quantech Products means Instruments, Cartridges, Flow Cells and
Peripheral Equipment for Human Diagnostics developed or to be
developed by QUANTECH using Grating SPR Technology covered by one or
more valid claims of the Quantech Patents. Quantech Products existing
as of the effective date of this Agreement are listed in Schedule C.
1.22 Quantech Technology means any technology owned by QUANTECH as of the
effective date of this Agreement and to be developed during the term
of this Agreement that (i) subject to QUANTECH's reasonable judgement
will be useful for the development of MCC Products and/or Quantech
Products for the Medical Diagnostics Field and (ii) QUANTECH is not
restricted from licensing or sublicensing the technology by an
agreement QUANTECH may have with a third party. The Grating SPR
Technology shall be included in the Quantech Technology.
1.23 The Parties means both QUANTECH and MCC.
1.24 The Serono Companies means APPLIED RESEARCH SYSTEMS ARS HOLDING N.V.,
a Netherlands Antilles Corporation and Serono Diagnostic S.A., both
affiliated corporations of Ares-Serono S.A.
1.25 Valid Claim means an issued claim of a Quantech Patents, or a patents
to be granted on the MCC Technology or MCC Improvement, that has not
been expired nor has been held invalid or unenforceable by final
decision of a court of competent jurisdiction from which no appeal has
or can be taken.
1.26 Wholly Owned Subsidiary of a party means a corporation, company or
other entity of which 100% of the voting stock is directly or
indirectly owned or controlled by QUANTECH or MCC as the case may be.
2. LICENSE GRANTS FROM QUANTECH TO MCC
2.1 License Grant from QUANTECH to MCC. QUANTECH hereby grants to MCC the
sole and exclusive license and sublicense under the Quantech Patents
and Quantech Technology to develop, manufacture, have manufactured,
sell or have sold, MCC Products for the Medical Diagnostics Field in
Japan, provided, however, that MCC shall not develop, manufacture or
have manufactured products which are covered by one or more valid
claims of the Quantech Patents and for which there is a Quantech
Product commercially available from QUANTECH for distribution by MCC
under reasonable supply and purchase conditions of the Distribution
Agreement.
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2.2 Sublicense by MCC. MCC shall not sublicense the rights granted by
QUANTECH in Paragraph 2.1 except that MCC may sublicense the rights
granted in Paragraph 2.1 only to Yuka Medias Co. Ltd. ("Yuka"), a
Wholly Owned Subsidiary of MCC, and/or to another MCC Wholly Owned
Subsidiary for the Medical Diagnostics Field in Japan.
2.3 Grant-back from MCC to QUANTECH. MCC hereby grants to QUANTECH an
exclusive license to develop, manufacture, have manufactured, sell or
have sold the Quantech Products incorporating MCC Improvement in
Non-Pacific Rim Territories for the Medical Diagnostics Field.
3. ROYALTIES, PAYMENTS AND REPORTS
3.1 Initial Payment. In consideration of the license and sublicense
granted to MCC pursuant to Paragraph 2.1, MCC shall pay QUANTECH an
initial payment of one million US Dollars (US$1,000,000-) within
forty-five (45) days from the effective date of this Agreement.
3.2 Royalties on Account of Net Sales by MCC. Subject to the terms of this
Agreement, in consideration of the license and sublicense granted to
MCC pursuant to Paragraph 2.1, MCC agrees to pay to QUANTECH an Earned
Royalty of 7% of annual Net Sales of MCC Products, provided, however,
that no royalty shall be paid on Quantech Products purchased by MCC
from QUANTECH and resold by MCC under the Distribution Agreement. In
the event that MCC Products require payment of royalties to a third
party for technology other than that provided from QUANTECH under this
Agreement, the Parties agree to discuss a reduction of the royalty
rate stated in this Paragraph 3.2 to reflect the portion of each
technology provided in the MCC Product so as to address the issue of
royalty stacking.
3.3 Royalties on Account of Net Sales by QUANTECH. Subject to the terms of
this Agreement, in consideration of the license granted to QUANTECH
pursuant to Paragraph 2.3, QUANTECH agrees to pay MCC an Earned
Royalty of 7% of annual Net Sales of Quantech Products covered by one
or more Valid Claim of a patent to be granted on the MCC Improvement
in a country where the Quantech Product is sold and such a patent is
in force, provided, however, that no royalty shall be paid on MCC
Products purchased by QUANTECH from MCC and resold by QUANTECH under
the MCC Products Distribution Agreement.
3.4 Quarterly Royalty Payments. All Earned Royalties due by either party
to the other party hereunder shall be payable on a calendar quarterly
basis. Within sixty (60) days after the end of each Calendar Quarter
during the term of this Agreement, each party owing an Earned Royalty
under Paragraphs 3.2 or 3.3 shall pay the Earned Royalty owed to the
other party through the end of the
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preceding Calendar Quarter and shall furnish the other party with a
written statement setting forth the number of its own Products sold
and the Net Sales invoiced during such Calendar Quarter, and the
resulting amount of the royalty due under Paragraphs 3.2 and 3.3.
3.5 Late Payment. A party owing a payment to the other party under any of
Paragraphs 3.2 and 3.3 shall pay a late payment fee to the owed party
when payment is not made within the times set forth in Paragraphs 3.4.
The late payment fee shall be calculated at a variable rate of one
percent (1%) over the "3 Month T-Xxxx" as reported in "The Wall Street
Journal" on the date the payment is due (the "Interest Rate"), on any
and all amounts that are at any time overdue and payable under this
Agreement, such interest being calculated on each such overdue amount
from the date when such amount became due to the date of actual
payment thereof. Such late payment fee shall be in addition to and not
in lieu of any and all other rights or remedies that QUANTECH may have
under this Agreement or law relating to a default by the owing party
under this Agreement.
3.6 Records. During the term of this Agreement and for three (3) years
after termination of this Agreement the Parties shall at all times
maintain accurate and up-to-date records containing complete data from
which amounts due to the other party under this Agreement may be
readily calculated. Further, the Parties shall preserve and permit
examination of such records by independent auditors appointed by the
other party and accepted by itself at reasonable intervals and under
reasonable conditions during the term of this Agreement and for three
(3) years thereafter and, upon request, shall supply to the
independent auditors all information reasonably requested that is
useful in making a proper audit and verification of the other party's
performance of its obligations under this Agreement and of any of the
Parties' sublicensee(s) performance in accordance with the terms of
this Agreement.
3.7 Underpayment. If one party determines by audit and inspection of the
other party's books and records that the other party has failed to pay
all royalties due under Paragraph 3.2 or 3.3, the other party shall
pay the party owed one hundred ten percent (110%) of such additional
royalties as may be due in addition to the interest as provided for in
Paragraph 3.5. If the amount of underpayment exceeds 5% of the
royalties due under Paragraph 4.2, then the owed party shall, in
addition to any other remedies available to it, recover from the other
party the reasonable costs incurred in making any such audit and
inspection pursuant to Paragraph 3.8 hereof which revealed such
shortfall.
3.8 Payment Currency. All payments by one party to the other party under
this Agreement shall be made in U.S. Currency. The U.S. currency
payments hereunder shall be determined on the basis of the telegraphic
transfer selling
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(TTS) rate of exchange as reported by Tokyo Mitsubishi Bank in effect
on the date such payments are due. All payments due shall be made
without deduction for taxes, assessments, or other charges of any kind
that may be imposed on a party by any government other than that of
the United States or Japan. Provided, however, either party may deduct
from each payment due hereunder withholding income tax to be levied on
such payment in the U.S.A. or Japan according to the Treaty between US
and Japan for Avoidance of Double Taxation and shall furnish the other
party appropriate tax certificate issued by the tax authority in the
U.S.A. or Japan.
4. LICENSE GRANTS FROM MCC TO QUANTECH
4.1 License Grant from MCC to QUANTECH under MCC Technology. If and when
MCC developed and commercially manufacture and sell the MCC Products
which incorporated the MCC Technology, then MCC shall promptly notify
QUANTECH of such fact with sufficient information, data and sample
thereof for evaluation of such MCC Technology. Upon request from
QUANTECH, MCC and QUANTECH shall discuss, in good faith, reasonable
terms and conditions of license of the MCC Technology and enter into
the license agreement which includes, but not limited to, the
following basic conditions;
(1) MCC grants to QUANTECH the non-exclusive license to develop,
manufacture, sell and have sold the Quantech Products
incorporating MCC Technology in Non-Pacific Rim Territories for
the Medical Diagnostics Field.
(2) In consideration of the license granted to QUANTECH pursuant to
Paragraph 4.1, QUANTECH agrees to pay MCC an Earned Royalty of 7%
of annual Net Sales of Quantech Products covered by one or more
Valid Claim of a patent to be granted on the MCC Technology or MCC
Improvement in a country where the Quantech Product is sold and
such a patent is in force, provided, however, that no royalty
shall be paid on MCC Products purchased by QUANTECH from MCC and
resold by QUANTECH under the MCC Products Distribution Agreement.
In the event, to incorporate the MCC Technology into the Quantech
Products, QUANTECH is required to pay royalties to a third party
for technology other than that provided from MCC under this
Agreement, the Parties agree to discuss a reduction of the royalty
rate stated in this Subparagraph (2) to reflect the portion of
each technology provided in the Quantech Product so as to address
the issue of royalty stacking. In the event that MCC may provide a
lower royalty rate than provided for in this Subparagraph (2) when
MCC grants a license to a third party to manufacture, use and sell
a product directly competing with Quantech Products in a
particular country, the Earned Royalty rate for Net Sales by
QUANTECH of Quantech Products in that country shall be reduced to
equal the lower royalty rate.
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(3) The non-exclusive rights granted to QUANTECH to the MCC Technology
shall expire upon the expiration of the last of the patents of MCC
Technology to expire; provided, however, the license shall be
terminated if QUANTECH has not begun developing, commercializing
or selling the Quantech Products incorporating MCC Technology
within one (1) year after MCC notifies QUANTECH of any such MCC
Technology. Beginning six (6) months after MCC notifies QUANTECH
of any such MCC Technology and continuing every six (6) months,
QUANTECH shall provide a statement to MCC stating that it is
continuing to develop, commercialize or sell Quantech Products
incorporating MCC Technology or that the MCC Technology is being
abandoned.
5. TERM AND TERMINATION
5.1 Term of Agreement. This Agreement shall commence on the Effective Date
and shall expire, unless earlier terminated pursuant to Paragraphs
5.3, 5.4 or 5.5 of this Agreement, upon the expiration of the last of
the Quantech Patents. After the expiration of this Agreement, MCC
shall have the non-exclusive, royalty-free right (with the right to
grant sublicense) to use the Quantech Technology.
5.2 Termination of License Grant to QUANTECH Under MCC Improvement.
Notwithstanding the foregoing Paragraph 5.1, the exclusive license
granted to QUANTECH to MCC Improvement under Paragraph 2.3 and
obligation to pay Earned Royalty under Paragraph 3.3 of this
Agreement shall survive after the expiration of this Agreement and
shall expire upon the expiration of the last of the patents of MCC
Improvement to expire; provided, however, the license shall be
terminated if QUANTECH has not begun developing, commercializing or
selling the QUANTECH Products incorporating MCC Improvement within one
(1) year from the time when MCC notifies QUANTECH of any such MCC
Improvement. Beginning six (6) months after such notification and
continuing every six (6) months, QUANTECH shall provide a statement to
MCC stating that it is continuing to develop, commercialize or sell
the Quantech Products incorporating MCC Improvement or that the MCC
Improvement is being abandoned.
5.3 Termination by QUANTECH. If MCC is in material default of any of its
obligations under this Agreement, QUANTECH shall have the right to
terminate this Agreement by giving thirty (30) days' written notice of
termination specifying the reason for termination, provided that such
notice will be of no effect and termination will not occur if the
specified default is cured prior to the expiration of said thirty (30)
day notice period. In the event of any such termination, QUANTECH
shall at its sole discretion retain rights to use MCC Improvement
granted to it by MCC under Paragraph 2.3, unless earlier terminated as
provided in Paragraph 5.2. In the event that QUANTECH retains the
rights under Paragraph 2.3 or 4.1, QUANTECH
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shall continue paying to MCC any Earned Royalty as provided under
Paragraph 3.3 or 4.1, as the case may be.
5.4 Termination by MCC. If QUANTECH is in material default of any of its
obligations under this Agreement, MCC shall have the right to
terminate this Agreement by giving thirty (30) days' written notice of
termination specifying the reason for termination, provided that such
notice will be of no effect and termination will not occur if the
specified default is cured prior to the expiration of said thirty (30)
day notice period. In the event of any such termination, MCC shall at
its sole discretion retain rights to use the Quantech Patents and
Quantech Technology granted to it by QUANTECH under Paragraph 2.1. In
the event that MCC retains the rights under Paragraph 2.1, MCC shall
continue paying to QUANTECH any Earned Royalty as provided under
Paragraph 3.2.
5.5 MCC 90 days Termination. MCC may terminate all or a portion of this
Agreement at any time at will, with or without cause, by giving at
least ninety (90) days' prior written notice to QUANTECH.
5.6 Refunds. Termination of this Agreement at any time will not entitle
either party to a refund of payments of any type made prior to
termination.
5.7 Termination Resulting from Government Action. Either party may,
immediately upon notice, terminate this Agreement in its entirety or
with respect to any patent license granted under the Agreement if: (1)
such termination is necessary to comply with an order or official
request of the government of the terminating party; or (2) normal
conduct of the business of the other party as a private enterprise
ceases or is substantially altered as a consequence of action taken by
governmental or other authority.
5.8 Continued Obligations. Termination shall not relieve or release either
party from its obligations to make any payment which may be owing to
the other party under the terms of this Agreement or from any other
liability which either party may have to the other arising out of the
terms of this Agreement.
6. INTELLECTUAL PROPERTY
6.1 Patent Procurement and Costs. QUANTECH shall be respectively and
solely responsible for directing prosecution and paying all patent
costs and expenses (including reasonable attorneys' fees) incurred
during the term of this Agreement in obtaining, prosecuting, and
maintaining any of the Quantech Patents issued or to be issued under
the law of any country or jurisdiction identified in Schedule A,
including filing, prosecution, working and maintenance costs and
taxes.
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6.2 Patent Enforcement.
(1) In the event that MCC becomes aware of activity on the part of any
third party which may constitute infringement of Quantech Patents
in Japan, MCC shall give QUANTECH written notice thereof. Subject
to the License Agreement between QUANTECH and Ares Serono,
QUANTECH shall, at its sole discretion and expense, have the first
exclusive right to initiate and thereafter maintain reasonable
efforts to prevent and xxxxx such infringement, including the
initiation of an appropriate action for infringement and the
taking of such other action as it may determine to be necessary or
appropriate to enforce the Quantech Patents. In such event, (i)
MCC will execute all pleadings, documents and other papers
necessary or appropriate in conjunction therewith, and (ii)
QUANTECH shall receive the full benefits of any action it takes
pursuant to this Paragraph, including retaining all sums recovered
in any such suit or in settlement thereof.
(2) In the event that QUANTECH fails or refuses to take or cause to
be taken any such measures against any third party in Japan after
six (6) months from the date of receipt of written notice to
QUANTECH by MCC of such infringement, MCC may take such legal
action in its own name or in the name of QUANTECH (if needed) and
at its own expense upon giving fourteen (14) days advance, written
notice of its intention to do so. In this case, MCC shall received
the full benefits of any action it takes pursuant to this
Paragraph 6.2, including retaining all sums recovered in any such
suit or in settlement thereof.
(3) If either party litigates under this Paragraph 6.2, the other
party may, at its option and its cost and expense, participate in
meetings with the litigating party and/or its counsel and receive
all pleadings, documents and other related papers useful for the
purpose of keeping the other party informed of the status of any
proceedings commenced by the litigating party.
6.3 Joint Inventions. Each party shall have an equal, undivided interest
in any invention in the Medical Diagnostics Field, and any patent
thereon, that is jointly made by employees of both Parties. The
Parties agree to cooperate in obtaining and maintaining patents on
such jointly owned invention and to share equally the expense thereof.
Neither party shall grant a license under the jointly owned patent
without the prior written consent of the other party.
6.4 Marking. If requested by a party, the other party shall xxxx the
product(s) it sells, offers to sell or distributes with a notice to
the effect that such product(s) is licensed under the applicable
Patents.
7. CONFIDENTIALITY
7.1 Confidentiality. The Parties acknowledge that patent applications
listed in Schedule A attached hereto, the inventions claimed therein,
and all trade
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secrets and know-how which may be disclosed by the Parties in
performance of this Agreement constitute "Confidential Information" of
the Parties, subject to the exceptions set forth in Paragraph 7.2.
Each party agrees not to disclose or use any of the other party's
Confidential Information except as expressly permitted in connection
with the exercise of its rights hereunder for five (5) years after
respective termination of license granted under this Agreement.
7.2 The Parties shall not disclose the other party's Confidential
Information to any employee or consultant unless such employee or
consultant is obligated under a confidentiality agreement to maintain
such other party's Confidential Information in strict confidence, and
not to use such information other than, in accordance with the terms
of this Agreement. Each party agrees to hold the other party's
Confidential Information in strict confidence and treat it with not
less than the same degree of care to avoid disclosure as such party
employs with respect to its own information of like importance.
7.3 Confidential Information shall mean all information provided to a
party (the "receiving party") by a party (the "disclosing party") or
its employees, agents or consultants, excluding any information which:
(a) is or becomes publicly available through no fault of the receiving
party; or
(b) can be reasonably demonstrated to have been known to the
receiving party independently of any disclosure of "Confidential
Information" by the disclosing party or its employees, agents or
consultants; or
(c) is disclosed to the receiving party by a third party who, to the
best of the receiving party's knowledge, is lawfully in possession
of the same and has the right to make such disclosure; or
(d) has been independently developed by the receiving party without
reference to the information disclosed to the receiving party by
the disclosing party or its employees, agents or consultants.
8. INDEMNIFICATION
8.1 Indemnification by QUANTECH. QUANTECH shall defend, indemnify and hold
MCC and its shareholders, directors, officers, agents,
representatives, successors and assigns harmless from and against any
and all claims, damages, costs (including reasonable attorneys' fees),
judgments, fines, penalties, losses, diminution in value and
liabilities of and kind or nature: (a) arising out of the breach by
QUANTECH of any of its warranties, representations and covenants under
this Agreement.
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9. REPRESENTATIONS AND WARRANTIES
9.1 QUANTECH hereby warrants and represents to MCC as follows:
(a) QUANTECH is a corporation duly organized, validly existing and in
good standing under the laws of the State of Minnesota.
(b) This Agreement has been duly authorized, executed and delivered by
QUANTECH and constitutes a valid and binding obligation of
QUANTECH, enforceable in accordance with its terms, except as
rights to indemnification thereunder may be limited by applicable
law and except as and to the extent that the enforcement thereof
may be limited by bankruptcy, insolvency, reorganization,
moratorium or other similar laws relating to or affecting
creditors' rights generally or by general equitable principles.
The execution, delivery and performance of this Agreement and the
consummation of the transactions contemplated thereby have been
authorized by all necessary corporate action and do not and will
not conflict with or result in any material breach of any of the
provisions of, or constitute a material default under, or result
in a material violation of, or require any authorization, consent
or approval, under the provisions of any organizational charter,
articles, bylaw, member control, operating or other agreement,
contract or instrument to which QUANTECH is bound or affected, or
any law, statute, rule, regulation, judgment order or decree to
which QUANTECH is subject.
(c) QUANTECH is the sole and exclusive licensee, sublicensee, or
owner, as the case may be, of all the rights of Quantech Patents
listed in Schedule A and has full right, power and authority to
grant the rights under this Agreement.
(d) All Quantech Patents listed in Schedule A are in force having paid
all necessary maintenance fees. QUANTECH has no knowledge of
information that would render any of the listed patents invalid or
unenforceable.
(e) QUANTECH has good and marketable title to the Quantech Patents
free and clear of any and all liens, pledges, claims, licenses,
assignments, conditional sales contracts, agreements or
encumbrances of any kind that would impair QUANTECH's ability to
grant the licenses under this Agreement.
(f) The use of the Quantech Technology granted hereunder and use or
sale of the Quantech Products to be distributed under the
Distribution Agreement shall be free from and clear of
infringement of any intellectual property rights owned by third
parties.
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9.2 MCC hereby warrants and represents to QUANTECH as follows:
(a) MCC is a corporation duly organized, validly existing and in good
standing under the laws of Japan.
(b) This Agreement has been duly authorized executed and delivered by
MCC and constitutes a valid and binding obligation of MCC,
enforceable in accordance with its terms, except as rights to
indemnification thereunder may be limited by applicable law and
except as the enforcement thereof may be limited by bankruptcy,
insolvency, reorganization, moratorium or other similar laws
relating to or affecting creditors' rights generally or by general
equitable principles. The execution, delivery and performance of
this Agreement and the consummation of the transactions
contemplated thereby do not and will not conflict with or result
in any material breach of any of the provisions of, or constitute
a material default under, or result in a material violation of, or
require any authorization, consent or approval, under the
provisions of the Laws of Japan or Bylaws or other agreement,
contract or instrument to which MCC is bound or affected, or any
law, statute, rule, regulation, judgment order or decree to which
MCC is subject.
10. MISCELLANEOUS
10.1 Assignment. Either party may assign or otherwise transfer its rights
and obligations under this Agreement to any successor in interest (by
merger, share exchange, combination or consolidation of any type,
operation of Law, purchase or otherwise), provided that such assignee
or successor agrees to be bound by the terms hereof.
10.2 Entire Agreement. This Agreement, together with the Schedule, and the
SSA constitutes the entire agreement of the Parties with respect to
the subject matter hereof and supersedes all previous proposals or
agreements, oral or written, and all negotiations, conversations or
discussions heretofore had between the Parties related to the subject
matter of this Agreement. No modification of this Agreement or waiver
of any of its terms shall be binding upon the Parties unless said
modification or waiver is in writing, signed by both Parties, and
states that it is an amendment to this Agreement.
10.3 Survival. Sections 1, 4, 8, 9 and 10 shall survive termination or
expiration of this Agreement for any reason and continue thereafter in
full force and effect.
10.4 Discharge. This Agreement may not be released, discharged, abandoned,
changed or modified in any manner, except by an instrument in writing
signed on behalf of each of the Parties to this Agreement by their
duly authorized representatives.
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10.5 Waiver. The failure of either party to enforce at any time any of the
provisions of this Agreement shall in no way be construed to be a
waiver of any such provision, nor in any way to affect the validity of
this Agreement or any part of it or the right of either party after
any such failure to enforce each and every such provision. No waiver
of any breach of this Agreement shall be held to be a waiver of any
other or subsequent breach.
10.6 Force Majeure. Neither party shall be responsible for any delay or
failure in the performance of any obligation hereunder due to strikes,
lockouts, fires, floods, acts of God, embargoes, wars, riots, or act
or order of any government or governmental agency.
10.7 Execution in Counterparts. This Agreement may be executed in one or
more counterparts, all of which shall be considered one and the same
agreement, and shall become a binding agreement when one or more
counterparts have been signed by each party and delivered to the other
party.
10.8 Titles and Headings. The titles and headings to Sections herein are
inserted for the convenience of reference only and are not intended
to be a part of or to affect the meaning or interpretation of this
Agreement.
10.9 Construction. The Parties agree that the restrictions, covenants,
agreements and obligations contained in this Agreement are reasonable
and necessary to protect the legitimate interests of the Parties. This
Agreement shall be construed without regard to any presumption or
other rule requiring construction hereof against the party causing
this Agreement to be drafted.
10.10 Benefit. Nothing in this Agreement, expressed or implied, is intended
to confer on any person other than the Parties to this Agreement or
their respective permitted successors or assigns, any rights,
remedies, obligations or liabilities under or by reason of this
Agreement.
10.11 Notices. All notices, statements, reports, requests or other
communications to a party required or permitted hereunder shall be in
writing and shall be deemed effective and properly given when sent by
registered or certified mail, or by confirmed facsimile transmission
to the person as indicated below or such other person as may be
designated by MCC or QUANTECH by such notice;
if to MCC, to:
Mitsubishi Chemical Corporation.
0-0, Xxxxxxxxxx 0-xxxxx,
Xxxxxxx-xx, Xxxxx 000-0000 Xxxxx
Attention: General Manager, Life Science Business
Initiatives Department
Facsimile number: (00) 0000-0000
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and, if to QUANTECH, to:
Quantech Ltd.,
000 Xxxxxxxxx Xxxxxxx, Xxxxx 000
Xxxxx, Xxxxxxxxx 00000 X.X.X.
Attention: President
Facsimile number: (000) 000-0000
MCC and QUANTECH may change their respective above-specified recipient
and/or mailing address by notice to the other party given in the manner
herein prescribed. All notices shall be deemed given on the day when
actually delivered as provided above (if delivered by facsimile) or on
the day shown on the return receipt (if delivered by mail).
10.12 Severability. If any provision of this Agreement is held invalid by a
court of competent jurisdiction, the remaining provisions shall
nonetheless be enforceable according to their terms. Further, if any
provision is held to be overbroad as written, such provision shall be
deemed amended to narrow its application to the extent necessary to
make the provision enforceable according to applicable Law and shall
be enforced as amended.
10.13 Governing Law. This Agreement shall be construed in accordance with
the laws of the State of New York, excluding its choice of law
provisions. The Parties further agree to submit themselves to the
non-exclusive jurisdiction of the state and federal courts of the
State of New York in the event that any dispute arises under this
Agreement.
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IN WITNESS WHEREOF, each of the Parties has caused this Agreement to be
executed in the manner appropriate to each as of the day and year first above
written.
MITSUBISHI CHEMICAL CORPORATION
/s/ Xxxxxxx Xxxxxxxx
-------------------------------------------------
By: Xxxxxxx Xxxxxxxx
Its: General Manager,
Life Science Business Initiatives Department
QUANTECH LTD.
/s/ Xxxxxx Xxxx
-------------------------------------------------
By: Xxxxxx Xxxx
Its: Chief Executive Officer
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SCHEDULE A
QUANTECH LICENSED OR SUBLICENSED PATENTS
PATENT NO. TITLE JAPANESE PATENT NO.
----------------------------------------------------------------------------------------
US 4,931,384 Optical Assay Technique (Merlin I) JP 1903195
US 5,118,608 Optical Assay Technique (Merlin I) JP 2502222
US 4,882,288 Assay Technique and Equipment JP 1928364
(Xxxxxx XX)
US 4,992,385 Polymer-Coated Optical Structures JP 2528134
and Methods of Making and Using JP 2592588
the Same (Cellulose Nitrate Films)
US 4,828,387 Film Measuring Device and Method JP 2511057
with Internal Calibration to
Minimize the Effect of Sample
Movement (Calibration Notches)
US 5,310,686 Polymer-Coated Optical Structures JP 2710243
(Sensor Using Photoresist)
CA 1,302,875 (Waveguide Sensor) JP 2572829
US 6,093,536 (Enhanced SPR Assay) JP 2073383
QUANTECH OWNED PATENTS
U.S.
SERIAL NO. TITLE
----------------------------------------------------------------------------------------------
09/564,140 Method and Devices for Signal Position Analysis
09/680,702 Methods and Devices for Assays Using Analyte-Binding Partners
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