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EXHIBIT 10.4
LICENSE AND SUBLICENSE AGREEMENT
THIS AGREEMENT (the "Agreement"), is made and effective this 18th day of
January, 2001, by and between HTS Biosystems, Inc., a Minnesota Corporation
having its principal office at 00 Xxxxx Xxxxxx, Xxxxxxxxx, Xxxxxxxxxxxxx, the
United States of America ("HTS") and Mitsubishi Chemical Corporation, a Japanese
corporation having its principal office at 0-0, Xxxxxxxxxx 0-xxxxx, Xxxxxxx-xx,
Xxxxx, Xxxxx ("MCC").
RECITALS
WHEREAS, HTS has exclusively licensed or sublicensed HTS Patents (defined
in Paragraph 1.7) listed in Schedule A from Applied Biosystems Inc., with the
right to grant sublicenses and HTS is willing to exclusively sublicense the HTS
Patents to MCC for the Field of Research Applications (defined in Paragraph 1.4)
in Japan and MCC wishes to obtain an exclusive sublicense to the HITS Patents
for the Field of Research Applications in Japan;
WHEREAS, HTS is developing HTS Products (defined in Paragraph 1.8) and if
HTS Products are successfully developed, HITS wishes to have MCC exclusively
distribute HTS Products in Japan and MCC wishes to exclusively distribute HTS
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 1.13) and
MCC Improvement (defined in Paragraph 1.14) and MCC wishes to non-exclusively
license or sublicense, as the case may be, MCC Technology and non-exclusively
license MCC Improvements to HTS in Non-Pacific Rim Territories (defined in
Paragraph 1.19) and HTS wishes to obtain such licenses or sublicenses; and
WHEREAS, MCC may develop MCC Products (defined in Paragraph 1.12) and MCC
wishes to have HITS exclusively distribute MCC Products in Non-Pacific Rim
Territories and HTS 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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I. 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 Chip means a substrate which contains a grating pursuant to the
Grating SPR Technology and is coated with a conductive surface.
1.2 Effective Date means January 18, 2001.
1.3 Eamed Royalty means the royalty payable on the Net Sales from
Products.
1.4 Field of Research Applications means the field of target discovery and
validation for pharmaceutical and diagnostic research; the Field of
Research Applications expressly excludes the Medical Diagnostics Field
(defined in Paragraph 1.15), food testing applications and
environmental testing applications.
1.5 Flow Cell means a device which allows liquids to flow through it and
consist of a Chip and has an optically clear cover slip which is
attached to the Chip by a means that allows for fluid flow
therethrough.
1.6 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.
1.7 HTS Patents means those patents that HTS has exclusively licensed or
sublicensed from Applied Biosystems Inc. and which HTS has the right
to sublicense. The HTS Patents are listed in Schedule A of this
Agreement.
1.8 HTS Products means Instruments, Chips, Flow Cells and Peripheral
Equipment for use in the Field of Research Applications developed or
to be developed by HTS using Grating SPR Technology covered by one or
more Valid Claim of the HTS Patents.
1.9 HTS SPR Array System means grating coupled SPR detection systems
capable of reading distinct detection sites on a 1cm x 1cm Chip and
will include future upgrades or versions of such original system with
the first HTS SPR Array Systems being capable of reading up to 400
distinct detection sites.
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1.10 HTS Technology means any technology including and relating to the
Grating SPR Technology owned by HTS as of the effective date of this
Agreement and to be developed during the term of this Agreement that
(i) subject to HTS's, reasonable judgement will be useful for the
development of MCC Products and/or HTS Products for the Field of
Research Applications and (ii) HTS is not restricted from licensing or
sublicensing the technology by an agreement HTS may have with a third
party.
1.11 Instrument means a device that reads the events that occur in a Chip
for use in the Field of Research Applications using Grating SPR
Technology covered by one or more Valid Claim of the HTS Patents.
1.12 MCC Products means Instruments, Chips, Flow Cells and Peripheral
Equipment for the Field of Research Applications to be developed by
MCC using Grating SPR Technology covered by one or more Valid Claim
of the HTS Patents.
1.13 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 HTS Products for the
Field of Research Applications and (ii) MCC is not restricted from
licensing or sublicensing the technology by an agreement MCC may have
with a third party.
1.14 MCC Improvement means any technology that is an improvement of the HTS
Technology (defined in Paragraph 1.10) obtained by MCC during the term
of this Agreement that (i) is useful for the Field of Research
Applications and (ii) MCC is not restricted from licensing or
sublicensing the technology by an agreement MCC may have with a third
party.
1.15 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.
1.16 Net Sales means the total amount invoiced by either MCC or HTS, or any
sublicensee, for sales of its own 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.
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1.17 Pacific Rim Territory means the countries of Japan, China, Taiwan,
Korea, Australia, New Zealand, Indonesia, Singapore and Thailand.
1.18 Peripheral Equipment means those devices that are sold in conjunction
with the Instrument and/or Chips, including, but not limited to,
chemistry coating, sample preparation and Chip handling equipment,
excluding, however, any other detection instruments that do not use
the Grating SPR Technology.
1.19 Non Pacific Rim Territories shall mean the U.S.A., Canada, Mexico and
other countries of the world that are not in the Pacific Rim Territory
as defined in Paragraph 1.17.
1.20 SPR means surface plasmon resonance.
1.21 The Parties means both HTS and MCC.
1.22 Valid Claim means an issued claim of a HTS 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.
1.23 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 HTS or MCC as the case may be.
2. LICENSE GRANTS FROM HTS TO MCC
2.1 License Grant from HTS to MCC. HTS hereby grants to MCC the sole and
exclusive license and sublicense under the HTS Patents and HTS
Technology to develop, manufacture, have manufactured, sell or have
sold MCC Products for the Field of Research Applications 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 HTS Patents and for which there is a HTS Product commercially
available from HTS for distribution by MCC under reasonable supply and
purchase conditions of the Distribution Agreement.
2.2 Sublicense by MCC. MCC shall not sublicense the rights granted by HTS
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 Field of Research Applications in Japan.
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2.3 Grant-back from MCC to HTS. MCC hereby grants to HTS an exclusive
license to develop, manufacture, have manufactured, sell or have sold
the HTS Products incorporating MCC Improvement in Non-Pacific Rim
Territories for the Field of Research Applications.
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 HTS an initial
payment of one million and five hundred thousands US Dollars
(US$1,500,000-) 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 HTS an
Earned Royalty of 7% of annual Net Sales of MCC Products, provided,
however, that no royalty shall be paid on HTS Products purchased by
MCC from HTS 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 HTS 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 HTS. Subject to the terms of
this Agreement, in consideration of the license granted to HTS
pursuant to Paragraph 2.3, HTS agrees to pay MCC an Earned Royalty of
7% of annual Net Sales of HTS Products covered by one or more Valid
Claim of a patent to be granted on the MCC Improvement in a country
where the HTS Product is sold and such a patent is in force, provided,
however, that no royalty shall be paid on MCC Products purchased by
HTS from MCC and resold by HTS 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 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.
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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 HTS 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 3.2 or 3.3, 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 (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
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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 HTS
4.1 License Grant from MCC to HTS 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 HTS of
such fact with sufficient information, data and sample thereof for
evaluation of such MCC Technology. Upon request from HTS, MCC and HTS
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 HTS the non-exclusive license to develop,
manufacture, sell and have sold the HTS Products incorporating
MCC Technology in Non-Pacific Rim Territories for the Field of
Research Applications.
(2) In consideration of the license granted to HTS pursuant to
Paragraph 4.1, HTS agrees to pay MCC an Earned Royalty of 7% of
annual Net Sales of HTS 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 HTS Product is sold and such a
patent is in force, provided, however, that no royalty shall be
paid on MCC Products purchased by HTS from MCC and resold by HTS
under the MCC Products Distribution Agreement. In the event, to
incorporate the MCC Technology into the HTS Products, HTS 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 HTS 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 a HTS Products in a particular country,
the Earned Royalty rate for Net Sales by HTS of HTS Products in
that country shall be reduced to equal the lower royalty
rate.
(3) The non-exclusive rights granted to HTS 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 HTS has not begun developing, commercializing or
selling the HTS Products incorporating MCC Technology within one
(1) year after MCC notifies HTS of any such MCC Technology.
Beginning six (6) months after MCC notifies HTS of any such MCC
Technology and continuing every six (6) months, HTS shall provide
a statement to MCC stating that it is
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continuing to develop, commercialize or sell HTS Products
incorporating MCC Technology or that the MCC Technology is being
abandoned.
5. TERMS 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 HTS 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 HTS Technology.
5.2 Termination of License Grant to HTS Under MCC Improvement.
Notwithstanding the foregoing Paragraph 5.1, the exclusive license
granted to HTS 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 HTS has
not begun developing, commercializing or selling the HTS Products
incorporating MCC Improvement within one (1) year from the time when
MCC notifies HTS of any such MCC Improvement. Beginning six (6) months
after such notification and continuing every six (6) months, HTS shall
provide a statement to MCC stating that it is continuing to develop,
commercialize or sell the HTS Products incorporating MCC Improvement
or that the MCC Improvement is being abandoned.
5.3 Termination by HTS. If MCC is in material default of any of its
obligations under this Agreement, HTS 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, HTS 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 HTS retains the rights under
Paragraph 2.3 or 4.1, HTS 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 HTS 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 HTS
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Patents and HTS Technology granted to it by HTS under Paragraph 2.1.
In the event that MCC retains the rights under Paragraph 2.1, MCC
shall continue paying to HTS 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 HTS.
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. HTS 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 HTS 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.
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 HTS Patents
in Japan, MCC shall give HTS written notice thereof. Subject to
the License Agreement between HTS and Ares Serono, HTS 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 HTS Patents. In such event, (i) MCC will execute all
pleadings,
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documents and other papers necessary or appropriate in
conjunction therewith, and (ii) HTS 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 HTS 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 HTS by MCC of such infringement, MCC may
take such legal action in its own name or in the name of
HTS (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 Field of Research Application,
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 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,
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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 HTS. HTS 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 HTS of any of its warranties,
representations and covenants under this Agreement.
9. REPRESENTATIONS AND WARRANTIES
9.1 HTS hereby warrants and represents to MCC as follows:
(a) HTS 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 HTS and constitutes a valid and binding obligation of HTS,
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,
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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 HTS is bound or affected, or any law,
statute, rule, regulation, judgment order or decree to which HTS
is subject.
(c) HTS is the sole and exclusive licensee, sublicensee, or owner,
as the case may be, of all the rights of HTS Patents listed in
Schedule A and has full right, power and authority to grant the
rights under this Agreement.
(d) All HTS Patents listed in Schedule A are in force having paid
all necessary maintenance fees. HTS has no knowledge of
information that would render any of the listed patents invalid
or unenforceable.
(e) HTS has good and marketable title to the HTS 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 HTS's ability to
grant the licenses under this Agreement.
(f) The use of the HTS Technology granted hereunder and use or sale
of the HTS 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.
9.2 MCC hereby warrants and represents to HTS 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
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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. Section 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.
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,
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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 HTS 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
and, if to HTS, to:
HTS Biosystems, Inc.,
00 Xxxxx Xxxxxx,
Xxxxxxxxx, Xxxxxxxxxxxxx 00000 U.S.A.
Attention: CEO
Facsimile number: (000) 000-0000
MCC and HTS 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).
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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.
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
HTS BIOSYSTEMS, INC.
/s/ Xxxxxxx X. Xxxxxxx
----------------------------------------
By: Xxxxxxx X. Xxxxxxx
Its: Chief Executive Officer
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SCHEDULE A
HTS 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 (Xxxxxx XX) JP 1928364
------------------------------------------------------------------------------------------
US 4,992,385 Polymer-Coated Optical Structures and JP 2528134
Methods of Making and Using the Same JP 2592588
(Cellulose Nitrate Films)
------------------------------------------------------------------------------------------
US 4,828,387 Film Measuring Device and Method with JP 2511057
Internal Calibration to Minimize the Effect
of Sample Movement (Calibration Notches)
------------------------------------------------------------------------------------------
US 5,310,686 Polymer-Coated Optical Structures (Sensor JP 2710243
Using Photoresist)
------------------------------------------------------------------------------------------
CA 1,302,875 (Waveguide Sensor) JP 2572829
------------------------------------------------------------------------------------------
US 6,093,536 (Enhanced SPR Assay) JP 2073383
------------------------------------------------------------------------------------------
Optical Array JP Application #
JP 2000-524645
------------------------------------------------------------------------------------------
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