Exhibit 10.6
AGREEMENT
THIS AGREEMENT is made the day of third day of April, two thousand
and four
BETWEEN:
(1) ADM Tronics Unlimited Inc, a corporation incorporated in the State
of Delaware with principal offices at 000 Xxxxxxx Xxxxxx, Xxxxxxxxx,
Xxx Xxxxxx ("the Licensor")
(2) CarePoint Group, a partnership formed by Xxxx Xxxxx Xxxxxxx of
000 Xxxxxx Xxxx, Xxxxxxxxxx XX0 0XX, Xxxxxxx, Xxxxxx Xxxxxxx Xxxxxx
of 0 Xxxxxxx Xxxx, Xxxxxxxxxxx, XX0 0XX, Xxxxxxx and Xxxxxxx Xxxxx
Pomlett of 00 Xxxxxx Xxxx, Xxxxxx Xxxxxxxxx, X00 0XX, Xxxxxxx ("the Licensee")
WHEREAS
The Licensor is the proprietor of intellectual property relating to
a device known as Aurex-3(R) for the treatment and alleviation of
tinnitus.
The Licensee wishes to manufacture, use, lease and sell articles made
in accordance with the said intellectual property and the Licensor
is willing to grant the right to the Licensee to do so upon the terms
and conditions hereinafter contained.
NOW IT IS HEREBY AGREED as follows
DEFINITIONS
In this Agreement unless the context requires otherwise: -
1.1 "Article" means any article or device incorporating the
Intellectual Property or any part thereof.
1.2 "Articles sold" means all and any Article(s) sold,
leased put into use by or otherwise disposed of by the Licensee
or any sub-licensee and all references to "sell", "sale", "sold"
or similar shall be construed accordingly where the context so
requires or admits.
1.3 "Group" means the Licensee and any holding or subsidiary company
of the Licensee and any other subsidiary company of the holding
company of the Licensee.
1.4 "Effective Date" means the date upon which this Agreement is made.
1.5 "Know-How" means technical know-how, technical data, designs,
experience, knowledge, specifications, drawings, plans, process
sheets, procedure books, operating and instruction manuals and such
other technical and production information and documentation which
relates to the manufacture of Articles.
1.6 "Patents" means United States Patents no. 5,788,656 and no.
6,210,321 and World Patent no. WO108617.
1.7 "Copyrights" means all copyrights in works relating to Articles.
1.8 "Net Invoiced Selling Price" means the total amount invoiced to
purchasers or lessees (as appropriate) of articles (and where Articles
are incorporated into or sold together or with any other device
Articles shall in each case be invoiced separately) less
(i) haulage, packing costs, return allowances and insurance
(ii) normal quantity and trade discounts and rebates actually
allowed
(iii) sales and excise taxes (including Value Added Tax) and
duties payable by the seller.
1.9 "Royalty Payment Date" means the 31 March, 30 June, 30 September
and 31 December in each year and the date of termination of this
Agreement (whether by affluxion of time or otherwise).
1.10 "Royalty" means in respect of each Article which is sold
by or on behalf of the Licensee pursuant to this Agreement
(including any Article sold incorporated into any other product)
a royalty calculated upon the Invoiced Price of that Article at
the rate of ten per cent (10%).
1.11 "Term" means the period of ten years after the Effective Date.
1.12 Clause headings are inserted for convenience only and shall
be ignored in construing the terms of this Agreement.
1.13 In construing this Agreement words importing the singular
shall include the plural and vice versa if the context so permits.
1.14 References to clauses are to clauses of this Agreement,
references to sub-clauses are to sub-clauses of the clause in
which the reference appears and references to the Schedule are to
the Schedule to this Agreement.
2. GRANT
Subject to the terms and conditions of this Agreement the Licensor
hereby grants to the Licensee under the Know-How, Patents and
Copyrights during the continuance of this Agreement with effect
from the Effective Date an exclusive licence to manufacture
Articles and to sell Articles so manufactured by the Licensee.
3. COMMENCEMENT AND DURATION
This Agreement shall come into force on the Effective Date and
subject to prior determination as provided in clause 15 shall
continue in force for the duration of the Term and thereafter may
be terminated by either party giving the other not less than
twelve months' written notice expiring at or at any time after
the end of the Term.
4. SUPPLY OF KNOW-HOW
4.1 Subject to the provisions of sub-clause 3 the Licensor shall
so soon after this Agreement become effective as the Licensee may
reasonably require supply to the Licensee such of the Know-How as
the Licensor may at that time have in its possession relating to
the manufacture of Articles as the Licensor may in its opinion
think necessary. The Licensee hereby confirms that the Licensor
has already provided such Know-How to the extent expected by Licensee.
4.2 Subject to the provisions of sub-clause 3, during the continuance
of this Agreement the Licensor shall also from time to time supply
to the Licensee, as the Licensor may think necessary, additional
Know-How which may come into the possession of the Licensor which
shall relate specifically to improvements or modifications to Articles.
4.3 The Licensor shall not be bound to disclose or provide to the
Licensee any Know-How or other data which is not in the possession of
the Licensor or which the Licensor is precluded from disclosing or
which would or might result in the violation of the laws of any
territory.
5. CONFIDENTIALITY
5.1 All Know-How and other information, documents, experience and
knowledge supplied by or on behalf of the Licensor under or pursuant
to or in contemplation of this Agreement shall be treated as
confidential and shall be used solely to enable the Licensee to
manufacture Articles in accordance with this Agreement and during
the continuance thereof, the documents whilst in the possession of
the Licensee shall be at the Licensee's risk and the Licensee hereby
undertakes with the Licensor for the safe custody thereof.
5.2 The Licensee shall ensure that no Know-How or other information,
documents, experience or knowledge as aforesaid are disclosed without
prior written consent of the Licensor to any person except to
responsible officers, technicians or employees of the Licensee and
shall take all responsible steps and precautions to ensure that any
such persons to whom such Know-How and other information, documents,
experience or knowledge is disclosed are themselves bound by a prior
written undertaking in terms similar to those contained herein to keep
and will keep such Know-How and other information documents,
experience and knowledge confidential PROVIDED THAT consent as aforesaid
shall not be required in respect of Know-How: -
5.2.1 which become a matter of public knowledge other than through
the fault of the Licensee or a person to whom the same was disclosed
by the Licensee, or
5.2.2 which the Licensee can prove to the reasonable satisfaction of
the Licensor was known to the Licensee at the time of its disclosure
to the Licensee or have been taken by the Licensee, or
5.2.3 which is required to be disclosed in any legal proceedings
provided that all possible legal means of preventing disclosure have
been taken by the Licensee.
5.3 If the Licensee hires any sub-contractors for the purpose of the
manufacture of any Articles the Licensee shall take all necessary steps
and precautions to ensure that any such subcontractors to whom such Know-
How or other information, documents, experience or knowledge as aforesaid
is disclosed are themselves bound by a prior written undertaking in terms
similar to those contained herein to keep and will keep such Know-How or
other information, documents, experience and knowledge completely
confidential at all times thereafter.
6. DUTIES OF THE LICENSEE AS DISTRIBUTOR
The Licensee shall use its best endeavour to promote and extend sales
of Articles and in particular shall:
6.1 work diligently to obtain orders for Articles by personal visits,
circularising, advertising, and all other means available to it.
6.2 use the Licensor's name only in conjunction with its appointment
under this Agreement and in carrying out its duties hereunder but then
only in relation to Articles and with a clear reference that Articles are
manufactured under licence from the Licensor.
6.3 employ staff trained in the operation, demonstration and repair of
Articles.
6.4 immediately bring to the Licensor's attention any improper use which
the Licensee may suspect of the Know-How, Patents, Copyrights or any
other intellectual property rights of the Licensor.
7. TERRITORY
7.1 This agreement allows the Licensor to sell Articles herein defined
either directly or though appointed distributors to all regions of the
world with the exception as defined in sub-clause 7.2.
7.2 It is a condition of this agreement that the licensee appoints the
licensor as manufacturer and Master Distributor for North America, South
America and Canada on an exclusive basis. A separate agreement will be
drawn up on completion of this manufacturing licence agreement showing
terms and ex works supply price with recommended consumer sales price.
Such separate agreement shall provide for an ex-works price for the sub-
components for manufacture of the units by the licensor to be purchased
by the licensor from the licensee at a maximum of 60% of the lowest
selling price of any units sold by the licensee.
7.3 The Master Distributor agreement described in 7.2 will remain in
place for the duration of this agreement.
8. AFTER SALES SERVICE
The Licensee shall supply an after-sales service to customers of Articles
of such a standard as to maintain the Licensor's reputation.
9 WARRANTIES
9.1 The Licensor gives no warranty and makes no representation whatsoever
to any person or party whomsoever in respect of any Articles manufactured
by the Licensee or for their quality or performance; the Licensor shall
not be liable for any loss; damage, injury, death or expense (including
without prejudice to the generality of the foregoing indirect or
consequential damage, loss or expense or any loss of profit or legal
fees) incurred or suffered by the Licensee, its employees, customers
or any other person as a result of the manufacture, sale or use or defect
in quality or performance of any Articles and the Licensee shall
indemnify the Licensor against any liability for claims made by any
employees or customers of the Licensee or any other person arising from
such matters.
9.2 Any Know-How or other information supplied by the Licensor under this
Agreement is believed to be correct and is supplied in good faith but its
accuracy or effectiveness is not guaranteed and shall not be made the
basis of any claim against the Licensor.
10. CONSIDERATION
In consideration of the licences and rights hereby granted under the
Know-How, Patents, Copyrights and of the other information supplied and
to be supplied hereunder the Licensee shall pay to the Licensor the
Royalty.
11. ACCOUNTS
11.1 The Licensee shall keep full and true records and accounts of all
Articles manufactured or sold or supplied or otherwise disposed of by or
on behalf of the Licensee.
11.2 The Licensee shall within one (1) month after each Royalty
Payment Date supply to the Licensor a true copy of the accounts referred
to in sub-clause 1 which relate to the period of three (3) months ending
on that Royalty Payment Date and commencing on the immediately preceding
Royalty Payment Date (or in the case of the first accounting period the
Effective Date) together with a statement showing the amounts due to the
Licensor for Royalty over that period.
11.3 The Licensor may at its own expense at any time and from time to
time designate a representative to examine or audit the accounts kept by
the Licensee pursuant to this clause and all other documents books or
records which may be necessary or appropriate with a view to determining
or verifying the monies due to the Licensor under this agreement and the
Licensee shall give that representative all such access and facilities in
connection with the examination or audit as the representative may
reasonably require.
12. PAYMENT
12.1 The Licensee shall pay and remit or cause to be remitted to the
Licensor any amount due to the Licensor in respect of Royalty for each
period ending with a Royalty Payment Date by bank wire transfer in US
Dollars and in accordance with and at the same time as it delivers (or
ought to have delivered) to the Licensor the statement and copy accounts
required to be delivered under sub-clause 11.2.
12.2 All sums payable and remitted by the Licensee under this Agreement
shall be paid and remitted subject to tax deductions required to be made
PROVIDED THAT the Licensee shall use its best endeavours to procure that
any such deductions do not exceed the minimum required by any such law
and that the Licensee shall in each case furnish the Licensor with an
appropriate official certificate of deduction of tax.
12.3 Where any payments provided for under this Agreement remain unpaid
and unremitted for three (3) month from the date upon which they became
due the Licensee shall, if so requested by the Licensor, immediately
cease to manufacture and sell any Articles; notwithstanding the
aforementioned provision, the Licensor shall also be entitled to exercise
and enforce any other of its rights and remedies set forth in this
Agreement or otherwise enforceable at law in case of delay of payment and
remittance on the part of the Licensee.
13. PATENTS
13.1 If at any time while this Agreement is in force the Patent expires
or if the Patent shall in any action for infringement or proceedings for
revocation by declared to be invalid then from the date from which
invalidity shall be proved this Agreement shall be determined PROVIDED
THAT if the decision of the Court making such declaration as aforesaid
shall be reversed on appeal royalties shall again become payable at the
full prescribed rate together with all royalties and payments which would
have been payable but for the adverse decision and this Agreement shall
continue in full force and effect as if such declaration had not been
made. Notwithstanding anything herein to the contrary this agreement and
the obligations of the parties hereto to each other are not dependent
upon the existence or enforceability of the Patent.
13.2 The Licensee shall promptly notify the Licensor if: -
13.2.1 Any infringement of the Patent Rights come to the attention of the
Licensee
13.2.2 Any suit should be commenced or threatened by any third party
against the Licensee arising out of its exploitation of the Patent Rights
herein.
13.3 In either of the events mentioned in sub-clause 12.2 the parties
shall promptly discuss the situation to determine if and how far the
infringer shall be proceeded against or the suit defended and which party
or parties shall defray the expense in either case.
14. IMPROVEMENTS
If either party makes any improvement in the technology associated
with the Articles it shall promptly notify the other in writing of the
improvement and shall upon request provide the other party with
sufficient details for such other party to be able to assess the same.
Where the improvement is dependent on and is not severable from the
technology associated with the Articles, then such improvement shall be
deemed to be included within the scope of this Agreement and the Licensee
shall make royalty payments to the Licensor in respect of its use of such
improvements in accordance with clauses 10, 11 and 12 above.
15. ASSIGNMENT, SUB-LICENSING, TRANSFER AND VARIATION
The licences herein granted are personal to the Licensee which shall
not be entitled to cede, assign sublicence or otherwise transfer the
benefit of the same to any other person whatsoever without the prior
written consent of the Licensor.
16. PRIOR DETERMINATION
16.1 If either party commits or knowingly permits any breach of any of
the terms of this Agreement notice to this effect may be given to that
party by the other together with the request that the breach insofar as
it can be remedied shall be remedied and that insofar as it is incapable
of being remedied adequate compensation shall be made within a period of
three (3) months thereafter; if the breach is not remedied and/or
adequate compensation is not made within the said period of three (3)
months then the party aggrieved may give to the other written notice
terminating this Agreement forthwith.
16.2 Notwithstanding anything hereinbefore contained either party may
by written notice to the other terminate this Agreement forthwith in any
of the following events namely: -
16.2.1 if the other party becomes insolvent or if any order is made for
the compulsory liquidation or winding up of the other party or if it be
voluntarily wound up other than a voluntary winding up for the purpose of
a bona-fide reconstruction to which the first party shall have given its
prior approval
16.2.2 if a receiver or manager or administrator is appointed of the
whole or substantially the whole of the undertaking of the other party
16.2.3 if any distress, execution or other process is levied upon
any part of the property or assets of the other party
16.2.4 if the other party fails to make and remit any payment due to be
made by it hereunder within three months after the same has become due.
17. EFFECT OF TERMINATION OR EXPIRY
17.1 Any termination (howsoever arising) of this Agreement shall be
without prejudice to any claim or right hereunder which may have accrued
or be available to the Licensor before termination of this Agreement and
the continued operation of clauses 5 and 6 hereof in relation to any
Articles whether manufactured or sold prior to such termination.
17.2 The following provisions shall apply immediately on any
termination (howsoever arising) of this Agreement: -
17.2.1 all licences granted or agreed to be granted hereunder to
the Licensee shall terminate
17.2.2 the Licensee shall forthwith cease to manufacture or sell or
in any way be concerned or interested in or facilitate the manufacture or
sale of Articles
17.2.3 the Licensee shall return or procure the return to the Licensor
forthwith of all specifications, working and other drawings and other
information supplied to it hereunder and all documents containing or
disclosing that information in the power or possession or control of
itself or any agent or sub-contractor of it or of any third party.
18. FORCE MAJEURE
Neither the Licensor nor the Licensee shall be responsible or liable
for any loss, damage, costs, charges, expenses, detention or delay caused
by Act of God, force majeure, government or legislative action, fire,
strikes, civil or military authority, insurrection or riot, embargoes,
lockouts, tempest, accident, breakdown of manufacturing machinery or
delay in delivery of goods or materials by other persons or by any other
cause whatsoever which is unavoidable or beyond its reasonable control
and shall not in any event be liable for any indirect loss or damage
arising therefrom.
19. NOTICES
Any notice which under this Agreement is to be or may be given by
the Licensor to the Licensee shall be delivered at or posted in a prepaid
letter addressed to the Licensee's registered office and any such notice
which is to be or may be given by the Licensee to the Licensor shall be
delivered at or posted in a prepaid letter addressed to the Licensor's
normal place of business or to such other person as may be advised
to the Licensee from time to time, and any notice so posted shall be
deemed to have been given on the third day following the date of posting.
20. WAIVER
Any waiver by either party of any breach of any provision of this
Agreement shall not constitute a waiver of any subsequent breach or
affect in any way the effectiveness of this Agreement.
21. PROPER LAW
This Agreement shall be governed by English law and the Licensee
hereby submits to the non-exclusive jurisdiction of the English Courts.
22. VALIDITY OF AGREEMENT
The invalidity or unenforceability for any reason of any part of this
Agreement or any partial annulment shall not prejudice or affect the
validity or enforceability of the remainder.
23. ALTERATION OF THE AGREEMENT
No variation, amendment, modification or waiver of the terms of this
Agreement shall be of any effect unless the same shall have been
recorded in writing in duplicate and signed on each copy by each of
the parties hereto.
24. IMPLIED TERMS
This agreement embodies the entire understanding of the parties
and there are no promises, terms, conditions or obligations, oral or
written, express or implied other than those written here.
25. NO AUTHORITY
Nothing in this Agreement shall constitute or be deemed to constitute
a partnership between the parties hereto or constitute the Licensee as
agents for the Licensor for any purpose and the Licensee shall have no
right or authority to and shall not do any act, enter into any contract,
make any representation, give any warranty, incur any liability, assume
any obligation whether express or implied of any kind on behalf of the
Licensor or bind the Licensor in any way.
26. COUNTERPARTS
This Agreement has been executed in two counterparts each
of which shall be deemed an original.
IN WITNESS WHEREOF the parties hereto have duly executed
this Agreement in manner binding upon them the day and year first
before written.
SIGNED BY: /s/ Andre' Di Mino, President
For and on behalf of ADM TRONICS UNLIMITED, INC.
SIGNED BY: Dr. Xxxx Xxxxxxx, Chairman
for and on behalf of CarePoint Group
