EXHIBIT 10.54
LICENSE AGREEMENT
Agreement effective this first day of April, 2000 by and between InnoVet,
Inc. a Florida Corporation, having a place of business at 0000 Xxxxxx Xxxxx,
Xxxxxxx, Xxxxxxx 00000 (INNOVET), and SSG Incorporated, a Mississippi
corporation having a place of business at X X Xxx 0000, Xxxxxxxxxx, XX 00000
(SSG) collectively referred to herein after as the "Parties".
1. REPRESENTATIONS
1.1 INNOVET is the owner of certain technology relating to a biological
product identified by the tradename IVET 629.
1.2 INNOVET is the owner of US Patent 5,219,578 entitled Composition and
Method for Immunostimulation in Mammals and which relates to the biological
product identified by the tradename IVET 629.
1.3 SSG desires to develop the product, have the required approvals obtained
and market the IVET 629 product.
1.4 SSG understands that the IVET 629 product cannot be sold until certain
Federal regulatory approvals are received, which approvals require
significant expenditures for development and testing of the product.
1.5. SSG desires to obtain exclusive rights to the IVET 629 product to
further develop the product, have the required approvals obtained and market
the product.
2. DEFINITIONS
2.1 "Product" means the biological product described and claimed in US Patent
5,219,578.
2.2 "Patents" means US Patent 5,219,578, together with any patents
1) issuing on or as a result of any continuation, continuation-in-part, or
division thereof or 2) issuing as a result of any other patent application
which may be substituted therefor or 3) which are reissues and/or extensions
of any such patent. It also includes any patents owned by INNOVET which may
in the future issue anywhere in the world to the extent that such patents
contain claims equivalent to those contained in such patent.
2.3 "Technical Information" means all information licensable by INNOVET as
of the effective date of this Agreement including that contained in pending
applications for patent and which relates to the development, registration,
production or use of Product.
2.4 "Confidential Information" means Technical Information relating to
Product disclosed by INNOVET to SSG pursuant to the original license
agreement dated August 5, 1995; provided, however, that there is excluded
any part of such information which
a) was known to SSG prior to disclosure thereof by or for INNOVET; or
b) is or becomes generally publicly available through no fault of SSG; or
c) is furnished to SSG by a third party not under a secrecy obligation to
INNOVET with respect thereto.
2.5 "Net Sales Value" means, with regard to Product sold or otherwise
disposed of, the greater of a) the actual sum of money due or b) the sum of
money which would be due in an arm's length transaction with a
non-affiliated third party calculated in accordance with SSG's normal
pricing policy for Product sold at time of invoicing, less the following:
(i) Transportation charges or allowances, if any, paid, or allowed;
(ii) Trade discounts and quality discounts allowed, if any;
(iii)Cash discounts allowed, if any;
(iv) Any taxes or duties imposed on sales of Product and payable directly by
SSG;
(v) Allowance of credits to customers on account of rejection or return
of Product or retroactive price reduction.
Product shall be considered sold when billed out, or if not billed out, when
delivered to a purchaser or to a carrier for delivery to a purchaser.
3. GRANT
3.1. INNOVET grants to SSG a world-wide exclusive license, with right to
sublicense, under patents, to make use and sell Product.
3.2 INNOVET grants to SSG a world-wide exclusive license, with right to
sublicense, to utilize Technical Information, to make, use and sell Product.
3.3 To facilitate INNOVET's due diligence obligations to its shareholders as
a public company, SSG will notify INNOVET of the identity of any proposed
sublicensee, furnish INNOVET with a copy of the proposed sublicense
agreement and give InnoVet the right to make comments and recommendations
before entering into any such agreement.
4. FEES: PAYMENTS
4.1 SSG shall pay to INNOVET a royalty of six (6) percent of the Net Sales Value
of Product sold by SSG or any sublicensee of SSG.
4.2 SSG shall make payments accruing pursuant to paragraph 4.1
quarter-annually during the term of this Agreement within thirty (30) days
after each December 31, March 31, June 30 and September 30 and within thirty
(30) days after termination of this Agreement.
4.3 SSG shall pay to INNOVET an amount equal to twenty-five [25] percent
of any amounts received from a third party in consideration of SSG's grant
to such third party of rights to make use or sell Product.
4.4 INNOVET acknowledges receipt of payment of an initial fee of sixteen
thousand one hundred three dollars [$16,103].
5. ANNUAL MINIMUM PAYMENTS; OPTION; CONVERSION
5.1 Commencing with the payment under paragraph 4.2 due within thirty (30)
days after December 31, 2000 SSG shall determine whether the royalties
earned during the previous calendar year equal or exceed ten thousand
dollars $10,000.
5.2 If the royalties earned pursuant to paragraph 4.1 do not equal or exceed
$10,000 for the 2001 calendar year or any calendar year thereafter during
the term of this Agreement, SSG shall have the option of including with the
payment due within thirty (30) days after each December 31st, an amount
equal to the difference between the amounts earned under paragraph 4.1 and
ten thousand dollars ($10,000).
5.3 If, commencing with the 2000 calendar year, 1] the royalties earned
during the calendar year do not equal or exceed ten thousand dollars
$10,000, and 2] SSG does not exercise its option under paragraph 5.2, then
INNOVET shall have the option of
a] converting the exclusive licenses granted pursuant to this Agreement to
non-exclusive licenses or
b] terminating this Agreement.
5.4 Due to unforeseen costs in developing and marketing Product, INNOVET will
waive the right to exercise its option under paragraph 5.3 for the 2000
calendar year.
6. REPORTS AND RECORDS
6.1 SSG shall for the term of this Agreement submit a report to INNOVET
within thirty (30) days after each December 31, March 31, June 30 and
September 30 setting forth the royalty and fees then due and the basis for
the calculation of such royalty and fees. Each such report shall include at
least the following information for each shipment of Product: 1] the
identity of the Purchaser; 2] the identity of the Product shipped; 3] the
date of shipment; 4] the lot number of Product shipped; 5] the quantity of
Product shipped; and 6] the price of Product. SSG shall submit a report even
though no royalties or fees are due.
6.2 SSG shall within thirty (30) days after termination of this Agreement
submit a report to INNOVET setting forth the royalty and fees then due and
the basis for the calculation of such royalty and fees. Each such report
shall include at least the following information for each shipment of
Product: 1] the identity of the Purchaser; 2] the identity of the Product
shipped; 3] the date of shipment; 4] the lot number of Product shipped; 5]
the quantity of Product shipped; and 6] the price of Product. SSG shall submit
a report enen though no royalties or fees are due.
6.3 SSG shall keep separate, complete, accurate and current records and
books of account of its sale of Product and of any other information
required for the computation and verification of the amounts payable to
INNOVET and shall allow inspection of such records by authorized
representatives of INNOVET during reasonable hours and upon reasonable prior
notice during the term of this Agreement and ninety (90) days thereafter.
Copies of such records shall be furnished to INNOVET at its business address
on ten [10] days written notice to SSG. INNOVET shall pay all copying and
mailing costs.
6.4 SSG acknowledges that INNOVET is a public company and must file
reports with the Securities and Exchange Commission. Accordingly, records
maintained by SSG pursuant to this Agreement shall be sufficiently detailed
to satisfy INNOVET's auditors in connection with the preparation of
INNOVET's financial statements.
7. CONFIDENTIALITY; NON-USE
7.1 SSG agrees that, during the full term period of this Agreement, SSG will
keep secret all Confidential Information, and will not use the same for its
own benefit or for the benefit of another except as licensed herein.
7.2 Nothing in this Agreement shall oblige INNOVET to disclose any
information received without the right of further disclosure from a third
party.
8. PATENT AND LEGAL COSTS
SSG shall be responsible for maintaining Patents in force and shall pay all
prosecution and maintenance costs for Patents.
9. PERSONNEL
9.1 The parties acknowledge the necessity of excluding Xxxxxx X. Xxxxxx
from participating in the development of Product by or for SSG, AJW, LLC
("AJW") or GCT Consulting, Inc. ("GCT") and therefore agree that Xx. Xxxxxx
will not participate in the development or marketing of Product by or for
SSG, AJW or GCT.
9.2 The parties acknowledge that Xxxxxx X. Xxxxxx will continue to have a
membership interest in AJW and that such ownership is not within the
prohibition of paragraph 9.1.
9.3 Breach of the obligation of paragraph 9.1 shall result in automatic
termination of this Agreement and transfer back to INNOVET of all rights
SSG may have in or relating to Product.
10. DISCLAIMER
INNOVET shall not be liable either directly or as an indemnitor of SSG
because of any patent infringement claim arising in any way from SSG's
possession or use of Patents or Technical Information.
11. TERM, RIGHTS & OBLIGATIONS ON TERMINATION
11.1 This Agreement shall be effective as of the date first above written and
shall extend thereafter until June 15, 2010.
11.2 Upon termination of this Agreement as above provided, and subject to
SSG's payment to INNOVET of all fees and royalties, SSG shall have a
perpetual, paid-up, non-exclusive license, under Technical Information and
Patents, as shall have been licensed hereunder to SSG.
11.3 Upon default of any provision herein by either party, including payment
of applicable royalties or rendering of reports, the injured party may give
to the defaulting party written notice of intent to terminate this
Agreement, specifying the alleged default, and if, within thirty (30) days
after the giving of such notice, (a) the default is not cured, the injured
party may terminate this Agreement forthwith by written notice to such
effect to the defaulting party.
11.4 Termination pursuant to paragraphs 11.1, and 11.3 shall not relieve SSG
of the obligation (a) to hold in confidence Confidential Information, (b) to
make a final report, (c) to make payments as may be due to INNOVET on the
effective date of any such termination, (d) to maintain records, and (e) to
allow INNOVET the right of final audit.
12. NOTICES AND REPORTS
Any written notice or report which a party hereto is required or permitted to
give to the other party may be made (and shall be deemed to have been duly
served) by personal delivery or by facsimile or postal service (registered
air mail, return receipt requested) at the facsimile number or the address
set forth below or at such other address as shall have been previously
designated by written notice to the other party.
FOR INNOVET:
Xxxxx Xxxxxxxxx
InnoVet, Inc.
0000 Xxxxxx Xxxxx
Xxxxxxx, XX 00000
Telephone: 000 000-0000
Fax: 000 000-0000
Email: xxxxxxxxxx@xxxxxxxxx.xxx
FOR SSG:
E. Xxxx Xxxxx, President
SSG Incorporated
X X Xxx 0000
Xxxxxxxxxx, XX 00000
Telephone: 000 000-0000
Fax: 000 000-0000
Email: xxxxxxx@xxxxxxxxxxx.xxx
The date of receipt for personal delivery, five (5) days from the date of
mailing for postal service, or the date of notice of transmission for
facsimile shall be deemed the date of any such notice or report.
13. RESOLUTION OF DISPUTES
13.1. Any dispute, claim or controversy arising out of or relating to this
Agreement or the breach thereof, which the parties are unable to resolve
within thirty (30) days after written notice by one party to another of the
existence of such controversy or dispute, shall be resolved by litigation.
The venue for the litigation shall be Palm Beach County, Florida, if the
litigation is initiated by SSG as plaintiff, and shall be Oktibbeha County,
Mississippi if the litigation is initiated by INNOVET as plaintiff. The court
shall apply the law of the situs of the litigation, without giving effect to
conflicts of law provisions, to all questions concerning the construction,
validity and interpretation of this Agreement.
13.2. If the dispute between the parties relates to payment of royalties
and fees by the SSG, SSG shall place the money in dispute in escrow with an
escrow agent in accordance with the terms of an escrow agreement. The escrow
agent and escrow agreement shall be mutually acceptable to the parties.
13.3. The prevailing party in any litigation shall be entitled to reasonable
attorneys fees and costs.
14. MISCELLANEOUS RIGHTS AND OBLIGATIONS
14.1 Entire Agreement. This Agreement represents the full and complete
understanding between the parties, and there are no understandings,
representations or warranties of any kind between the parties except as
expressly set forth in this Agreement.
14.2 Amendments. This Agreement shall not be amended except by an
instrument in writing signed by the parties and stating the parties' intent
by such instrument to amend this Agreement.
14.3 Non-Waiver. The failure by either party to exercise, or delay in
exercising, or any partial exercise by such party of any rights, power or
privilege available to such party hereunder shall not operate as a waiver
thereof, or preclude any other or further exercise thereof, or the exercise
by such party of any other right, power or privilege.
14.4 Force Majeure. The failure in performance of any obligation assumed
hereunder by either party shall not be deemed a breach of this Agreement if
such failure arises from any cause beyond the control of such party.
14.5 Severability. If any provision of this Agreement, or the application
thereof to either party hereto, is held illegal, unenforceable or otherwise
invalid by government promulgations or court decree, such holding shall not
affect the other provisions or applications of this Agreement which can be
given effect without the invalid provision; provided that the parties shall
promptly negotiate in good faith as to adjustments in this Agreement as may
be necessary to make it fair and equitable to both parties.
14.6 Succession and Assignment. This Agreement shall inure to the benefit of
and shall be binding upon the successors and assigns of the respective
parties hereto; provided, however, that this Agreement shall not be
assigned by SSG without the prior written consent of INNOVET and any
attempted assignment by SSG without such consent shall be void and shall
automatically terminate all rights of SSG under this Agreement.
IN WITNESS WHEREOF, the parties hereto, by their duly authorized
representative have caused this Agreement to be executed on the dates set
forth below.
INNOVET, INC. SSG INCORPORATED
By: /S/ Xxxxx Xxxxxxxxx By: /S/ E. Xxxx Xxxxx
------------------------ -----------------------
Xxxxx Xxxxxxxxx, Executive E. Xxxx Xxxxx, President
Vice President
Date: 5/9/2000 Date: 5/15/2000
