Confidential Materials omitted and filed separately with the
Securities and Exchange Commission. Asterisks denote omissions.
Exhibit 10.6
EXCLUSIVE LICENSE AGREEMENT
---------------------------
This Exclusive License Agreement ("Agreement"), effective as of May
8th, 2000 ("Effective Date"), is entered into by and between BIOSPHERE MEDICAL,
INC., a Delaware corporation having principal offices at BioSphere Medical,
Inc., 0000 Xxxxxxx Xxxxxx, Xxxxxxxx, XX 00000 X.X.X. ("BioSphere"); XX.
XXXX-ICHI HORI, an individual having an address at 0-0-0 Xxxxxxxxx, Xxxxxxxx,
Xxxxx-xxx, Xxxxx 000-0000, Xxxxx ("Hori"), and Xx. XXXXXX XXXX, an individual
having an address at 0-0-0 Xxxxxxxxx, Xxxxxxxx, Xxxxx-xxx, Xxxxx 000-0000, Xxxxx
(together with Hori, "Licensors").
WHEREAS, Licensors are the owners of certain patent rights in and to
super absorbing polymer microspheres ("SAP-MS") useful for, among other things;
embolotherapy; and
WHEREAS, the parties have entered into an agreement under which
Licensors granted rights in such technology to BioSphere; and
WHEREAS, the parties are desirous of setting forth with more
particularity their rights and obligations concerning such patent rights and new
developments based thereon.
NOW, THEREFORE, BioSphere and Licensors agree as follows:
Section 1
Definitions
-----------
In this Agreement, unless otherwise provided, the following terms shall
have the meanings set forth in this section.
1.1 Affiliate means, with respect to BioSphere, any other entity that
---------
directly, or indirectly through one or more intermediaries, controls or is
controlled by or is under common control with BioSphere. For purposes hereof,
the term "control" (including, with its correlative meanings, the terms
-------
"controlled by" and "under common control with"), with respect to BioSphere,
------------- -------------------------
means the possession, directly or indirectly, of the power to direct or cause
the direction of the management and policies of BioSphere (whether through the
ownership of voting securities, by contract or otherwise); provided that in each
--------
event in which any entity owns directly or indirectly more than fifty percent
(50%) of the securities having ordinary voting power for the election of
directors or other governing body of a corporation or more than fifty percent
(50%) of the ownership interest of any other entity, such entity shall be deemed
to control such corporation or other entity.
1.2 Follow-On Inventions means and includes any inventions relating to
--------------------
SAP-MS useful for embolotherapy, conceived or reduced to practice by Hori during
the period commencing on January 1, 1992 and continuing during the term of this
Agreement.
1.3 Improvement means (a) any new or modified product or method that
-----------
performs the same function as a Licensed Product or Licensed Method in a better
or more economical way; or (b) any new or modified product or method that
performs the same function as a Licensed Product Or Licensed Method and costs
less to manufacture than a Licensed Product or costs less to practice than a
Licensed Method.
1.4 Know-How means unpublished research and development information,
--------
unpatented know-how, trade secrets, and technical data necessary or useful for
practicing the Licensed Patents.
1.5 Licensed Method means any method the practice of which, without this
---------------
license, would infringe a claim of a Licensed Patent.
1.6 Licensed Patents means (i) Japan patent number JP 0000000 ("JP `676
----------------
patent") entitled Suspension For Blocking Blood Vessels, any patent application
any where in the world that claims or relies on the JP `676 patent for priority,
or any patent issuing on any such application, and any reissue, reexamination,
or extension of any such patent, and (ii) any patent application filed any where
in the world that discloses and claims a Follow-On Invention, any patent
application any where in the world relying on any such application for priority,
any patent issuing on either of the foregoing and, any reissue, reexamination or
extension of any such patent.
1.7 Licensed Products means any product the manufacture, use, sale,
-----------------
offer for sale, or import of which, without this license, would infringe a claim
of a Licensed Patent.
1.8 "Net Sales" means the invoiced price of Licensed Products sold by
---------
BioSphere or its Affiliates (a) after deduction of (i) [**]; (ii) [**]; (iii)
[**] (if any); (iv) [**]; (v) [**]; (vi) [**], and (vii) [**]; but (b) [**].
Licensed Products used in testing, clinical trials, or as marketing samples to
develop or promote the Licensed Products shall not be included as sold under the
definition of Net Sales, provided, however, that such excluded Licensed Products
are (a) supplied to the user at no cost; (b) supplied to the user at a cost
which is intended to enable BioSphere or its Affiliates to recover its costs for
manufacturing such Licensed Products and/or (c) used for developing a
formulation or manufacturing process for the Licensed Products. For purposes of
this definition, except when BioSphere's Affiliates are the end users of
Licensed Products, Licensed Products shall be considered sold when billed out to
a customer other than BioSphere's Affiliates. No deductions shall be made for
commissions paid to sales persons or agents or for the cost of collections.
In the event a Licensed Product is sold in [**], Net Sales, for purposes
of determining royalties [**] will be calculated by [**], in which [**] of the
Licensed Product [**], and [**] of the [**] in the [**]. If the Licensed
Products and the [**] in the [**], then royalties on the [**] will be calculated
by the same method, in which [**] the Licensed Product and [**]. However, in no
case shall the [**].
1.9 Valid Claim means an issued claim of an unexpired patent, which
-----------
shall not have been withdrawn, canceled or disclaimed, or held invalid or
unenforceable by a court of competent jurisdiction in an unappealed or
unappealable decision.
2
Section 2
License Grant
-------------
2.1 Grant. Licensors hereby grant to BioSphere an exclusive, worldwide,
-----
right and license, with the right to grant sublicenses, under the Licensed
Patents, unpatented Follow-On Inventions, Improvements and/or Know-How to make,
have made, use, offer to sell, sell, import and otherwise dispose of Licensed
Products, and to practice Licensed Methods.
2.2 Reservation of Rights. The license granted in Section 2.1 of this
---------------------
Agreement, is subject to a reserved non-exclusive license to Hori to practice
the Licensed Patents solely for (a) the conduct of clinical trials in Japan for
and on behalf of BioSphere; (b) the treatment of patients by Hori at Xxxxx
Medical Center and Osaka Medical Center, and (c) Hori's research at Osaka
University, provided any such research is not sponsored by or disclosed to any
third party commercial entities.
Section 3
Payments and Royalties
----------------------
3.1 Initial Fee. BioSphere shall pay to Hori, on behalf of Licensors, as
-----------
a license execution fee the sum of [**] dollars ($[**]), receipt of which is
hereby acknowledged by Hori, on behalf of Licensors.
3.2 Royalties. BioSphere and/or its Affiliates shall pay to Hori, on
---------
behalf of Licensors, (a) a continuing royalty of [**] percent ([**]%) of the Net
Sales of Licensed Products covered by a Valid Claim of an issued patent within
the Licensed Patents or Improvements in each country in the world in which such
Valid Claim exists; (b) a continuing royalty of [**] percent ([**]%) of the Net
Sales of Licensed Products under the Know-How, unpatented Improvements or
unpatented Follow-On Inventions; and (c) [**] percent ([**]%) of royalties
actually received by BioSphere based on the sales of the Licensed Products by
its sublicensees.
3.3 Stock Issuance. In further consideration of the rights and options
--------------
granted to BioSphere hereunder, and pursuant to the terms and conditions of the
Stock Purchase Agreement attached hereto as Exhibit A, BioSphere shall issue to
Hori, on the Effective Date, an option to acquire ten thousand (10,000) shares
of BioSphere's Common Stock, at a par value of $0.01, through BioSphere's 1997
Stock Option Plan.
3.4 No Multiple Royalties. No multiple royalties shall be payable in the
---------------------
event that any of the Licensed Products or the manufacture, use or sale thereof
is covered by more then one patent included in Licensed Patents or any
combination of Licensed Patents and Know-How and/or Improvements.
3.5 Credits. If BioSphere is required to make royalty payments to a
-------
third party to obtain a license or similar right necessary to make, use, offer
for sale, sell or import Licensed Products or practice Licensed Methods,
BioSphere may deduct [**] percent ([**]%) of such royalty payments due to such
third party from royalties thereafter payable to Hori, provided, however, that
in no event shall the royalty payments to Hori be reduced by more than [**].
3
3.6 Royalty Payment Period. BioSphere's obligation to pay royalties to
----------------------
Hori under this Agreement shall commence, on a product by product basis, one
year after the Effective Date and end (i) upon the expiration of the last to
expire patent within Licensed Patents covering such product, or (ii) ten (10)
years after the Effective Date on products covered only by Know-How or
unpatented Improvements.
3.7 Disposition of Sublicenses. If this Agreement is terminated for
--------------------------
any reason, BioSphere shall immediately assign all of is right, title, and
interest to all sublicenses to Licensors, including all right to receive all
income from sublicensees. BioSphere shall, prior to execution of each
sublicense, make the sublicensee aware of this contingency.
3.8 Notice of Improvements. Licensors shall provide BioSphere with
----------------------
prompt written notice of any improvements. Such notice shall contain a detailed
explanation of any such Improvement.
3.9 Currency. Payments hereunder shall be made to Hori in United
--------
States of America Dollars or in Japanese Yen.
3.10 Withholding Taxes. The parties acknowledge and agree that there
-----------------
may be deducted from any payments or royalties otherwise due and payable
hereunder any taxes or other payments required to be paid by Hori under
applicable law with respect to such payments or royalties or otherwise relating
to the Licensed Products.
Section 4
Payment Of Royalties, Accounting For Royalties and Records
----------------------------------------------------------
4.1 Payment. Royalties payable hereunder shall be paid within [**]
-------
days after the end of each calendar quarter, based on the Net Sales of the
Licensed Products by BioSphere and its sublicensees and Affiliates during the
preceding calendar quarter.
4.2 Accounting Reports. With each quarterly payment, BioSphere shall
------------------
deliver to Hori; a full and accurate accounting that sets forth the following
information:
(a) total receipts for each Licensed Product sold or otherwise
disposed of by BioSphere and/or its Affiliates subject to royalty,
by country, and, to the extent used in any royalty calculations
during such quarter, the exchange rate set forth in Section 4.3 of
this Agreement;
(b) Royalties and other payments received by BioSphere in connection
with any sublicense of BioSphere's rights under this Agreement,
and compensation due to Hori on sales of Licensed Products by
sublicensees pursuant to such sublicense; and
(c) total royalties and/or compensation payable to Hori.
4.3 Accounting; Foreign Currency. The aggregate amount of the Net
----------------------------
Sales of the Licensed Products used for computing the royalties payable
hereunder shall be computed in U.S.
4
Dollars or in Japanese Yen, and all payments of such royalties shall be made in
U.S. Dollars or in Japanese Yen. For purposes of determining the amount of
royalties due, the amount of the Net Sales of the Licensed Products in any
foreign currency shall be computed by converting such amounts into U.S. Dollars
or Japanese Yen at the prevailing commercial rate of exchange for purchasing
same quoted in The Wall Street Journal, New York edition, on the last business
day of the calendar quarter with respect to which such royalty payment is
payable hereunder.
4.4 Records. BioSphere shall keep, and shall cause each of its
-------
Affiliates and sublicenses to keep, for three (3) years, complete and accurate
records of the Net Sales of the Licensed Products sold in sufficient detail to
allow the royalties payable by BioSphere to be accurately determined. Hori shall
have the right for a period of three (3) years after receiving any report or
statement with respect to royalties due and payable hereunder by BioSphere to
appoint an independent accounting firm to inspect and audit the relevant records
of BioSphere and its Affiliates to verify such report or statement. BioSphere
and its Affiliates shall make their records available for inspection and audit
by such independent accounting firm, no more than once per year, during regular
business hours at such place or places where such records are customarily kept,
upon reasonable notice to BioSphere, to the extent reasonably necessary to
verify the accuracy of the reports and payments required hereunder. The cost of
any such inspection and audit shall be paid by Hori unless such inspection and
audit discloses for any calendar quarter examined that there shall have been a
discrepancy of greater than ten percent (10%) between the royalties payable
hereunder by BioSphere and the royalties actually paid by BioSphere with respect
to such calendar quarter, in which case BioSphere shall be responsible for the
payment of the entire cost of such inspection and audit. In all cases, BioSphere
shall pay to Hori any underpaid royalties promptly and with interest at the
prime rate quoted by Citibank, N.A. on the date such payment was due.
Section 5
Due Diligence
-------------
BioSphere shall use commercially reasonable efforts to develop,
manufacture, and sell Licensed Products. For purposes of this Agreement,
commercially reasonable efforts means funding studies required to obtain
regulatory approval for marketing Licensed Products in Japan in an amount up to
[**] dollars ($[**]).
5
Section 6
Patent Prosecution
------------------
6.1 Filing and Prosecution. BioSphere shall have the right, but not the
----------------------
obligation, to apply for, prosecute and maintain during the term of this
Agreement any and all Licensed Patents and patents on Improvements in any
countries in which BioSphere desires in its sole discretion to commercialize the
Licensed Products. All reasonable costs and expenses of the filing, prosecution
and maintenance of the Licensed Patents in such countries (including all
governmental filing fees) shall be paid by BioSphere. Licensors shall render
reasonable assistance to BioSphere in filing and prosecuting such applications
and maintaining the Licensed Patents in such countries whenever requested to do
so, at BioSphere's expense.
Section 7
Representations And Warranties
------------------------------
7.1 By BioSphere. BioSphere hereby represents and warrants to Licensors
------------
that BioSphere has full legal right, power and authority to execute, deliver and
perform its obligations under this Agreement.
7.2 By Licensors and Hori. Licensors and Hori, jointly and severally,
---------------------
hereby warrant and represent to BioSphere that (a) Hori and Licensors have full
legal right, power and authority to execute, deliver and perform their
respective obligations under this Agreement; (b) the execution, delivery and
performance by Hori and Licensors of this Agreement does not contravene or
constitute a default under any provision of applicable law or of any agreement,
judgment, injunction, order, decree or other instrument binding upon Hori or
Licensors; (c) all licenses, consents, authorizations and approvals, if any,
required for the execution, delivery and performance by Hori and/or Licensors of
this Agreement have been obtained and are in full force and effect and all
conditions thereof have been complied with, and no other action by or with
respect to, or filing with, any governmental authority or any other person or
entity is required in connection with the execution, delivery and performance by
Hori and/or Licensors of this Agreement, (d) Licensors are the exclusive owner
of all legal and beneficial right, title and interest in and to the Licensed
Patents, (e) as of the Effective Date, Licensors are not aware of any patent or
other right of any third party that would be infringed or violated by the
practice of the Licensed Patents as contemplated by this Agreement, and (f) this
Agreement constitutes a valid and binding agreement of Hori and Licensors,
enforceable against Hori and Licensors, in accordance with its terms.
7.3 Survival of Representations and Warranties. The representations and
------------------------------------------
warranties contained herein shall survive the execution, delivery and
performance of this Agreement by the parties, notwithstanding any investigation
at any time on or prior to the date hereof made by or on behalf of any party or
parties.
6
Section 8
Third Party Infringement
------------------------
8.1 Third Party Infringement.
------------------------
8.1.1 Notice. In the event that either party becomes aware of any
------
substantial infringement of the Licensed Patents, such party shall notify the
other party of the substantial infringement in writing and provide a summary of
the relevant facts and circumstances known to such party relating to such
infringement. Neither party will notify a third party of the substantial
infringement of any of the Licensed Patents without first obtaining consent of
the other party, which consent shall not be unreasonably withheld or delayed.
8.1.2 BioSphere's Options. During the term of this Agreement,
-------------------
BioSphere shall have the right, but shall not be obligated, to prosecute, at its
own expense, any infringements of the Licensed Patents, to defend the Licensed
Patents and to recover, for its own account, any damages, awards or settlements
resulting therefrom. Licensors hereby agree that BioSphere may join Licensors as
a party plaintiff(s) in any such suit, without expense to Licensors. BioSphere
shall hold harmless and indemnify Licensors from and against any order for costs
arising without fault of Licensors that may be made against Licensors by reason
of being named a party plaintiff(s) in such proceedings. BioSphere shall have
sole control of any such suit and all negotiations for its settlement or
compromise, provided that, BioSphere shall not settle or compromise any such
suit or enter into any consent order for the settlement or compromise thereof
that adversely affects the Licensed Patents without the prior written consent of
Licensors, which consent shall not be unreasonably withheld or delayed. The
total cost of any infringement action commenced or defended solely by BioSphere
shall be borne solely by BioSphere.
8.1.3 Licensors's Options. If, within one (1) year after having been
-------------------
notified of any potential infringement subject to the provisions of Sections
8.1.2, BioSphere shall have been unsuccessful in causing the alleged infringer
to desist and shall not have brought and shall not be diligently prosecuting an
infringement action, or if BioSphere notifies Licensors at any time prior
thereto of its intention not to bring suit against any alleged infringer, then,
in those events only, Licensors shall have the right, but shall not be
obligated, to prosecute, at its own expense, any infringements of the Licensed
Patents, to defend the Licensed patents and to recover, for its own account, any
damages, awards or settlements resulting therefrom. BioSphere hereby agrees that
Licensors may join BioSphere as a party plaintiff in any such suit, without
expense to BioSphere. Licensors shall hold harmless and indemnify BioSphere from
and against any order for costs arising without fault of BioSphere that may be
made against BioSphere by reason of being named a party plaintiff in such
proceedings. Licensors shall have sole control of any such suit and all
negotiations for its settlement or compromise, provided that Licensors shall not
settle or compromise any such suit or enter into any consent order for the
settlement or compromise thereof that adversely affects the Licensed Patents or
any of the licenses or rights of BioSphere hereunder, without the prior written
consent of BioSphere which consent shall not be unreasonably withheld or
delayed. The total cost of any infringement action commenced or defended solely
by Licensors shall be borne by Licensors.
7
8.2 Infringement Charge Against BioSphere. In the event that any action,
-------------------------------------
suit or proceeding is brought against, or written notice of threat thereof is
provided to, BioSphere alleging infringement of any patent or unauthorized use
or misappropriation of technology arising out of or in connection with
BioSphere's practice of Licensed Patents, BioSphere shall defend at its own
expense such action, suit or proceeding and, in furtherance of such rights,
Licensors hereby agree that BioSphere may join Licensors as a party(ies) in such
suit, without expense to Licensors. BioSphere shall hold harmless and indemnify
Licensors from and against any order for costs arising without fault of
Licensors that may be made against Licensors in such proceedings. Licensors
agrees to cooperate with BioSphere, at BioSphere's expense, in connection with
BioSphere's response to or defense of such action, suit or proceeding, or notice
or threat thereof.
8.3 Cooperation. In the event that a party shall undertake the enforcement
-----------
and/or defense of the Licensed Patents by legal or patent office proceedings
pursuant to this Agreement, the other party shall, at the request and expense of
the party undertaking such enforcement and/or defense, cooperate in all
reasonable respects and, to the extent possible, have its employees testify when
requested and make available relevant records, papers, information, samples and
the like.
8.4 BioSphere's Rights. BioSphere shall have the sole right in accordance
------------------
with the terms and conditions hereof to sublicense any alleged infringer for
future use of the Licensed Patents to which it has exclusive rights under
Section 2.1 of this Agreement.
Section 9
Indemnification
---------------
9.1 Indemnification. BioSphere hereby agrees that it shall be responsible
---------------
for, indemnify, hold harmless and defend Licensors and their successors and
assigns (collectively, the "Indemnitees"), from and against any and all claims,
-----------
demands, losses, liabilities, damages, costs and expenses (including the cost of
settlement, reasonable legal and accounting fees and any other expenses for
investigating or defending any actions or threatened actions) (collectively,
"Losses") suffered or incurred by any Indemnitee arising out of, relating to,
resulting from or in connection with (a) a claim brought by a third party of
personal injury (including death) or property damage caused by a Licensed
Product manufactured by or for BioSphere its Affiliates or sublicensees, (b) the
exercise of any of the rights and/or licenses granted herein to BioSphere, its
Affiliates, or any sublicensee, and (c) any action, suit or other proceeding, or
compromise, settlement or judgment, relating to any of the foregoing matters
described in subparagraph (a) hereof with respect to which the Indemnitees are
entitled to indemnification hereunder. The foregoing shall not apply to the
extent that such Losses are due to the willful misconduct or gross negligence of
any of the Indemnitees.
9.2 Notice of Claims. In the event that a claim is made pursuant to
----------------
Section 9.1 above against any Indemnitee, the Indemnitee agrees to promptly
notify BioSphere of such claim or action and, in any such case BioSphere shall
assume control of the defense of such claim or action; provided, however, that
-------- -------
(a) all Indemnitees shall be entitled to participate therein (through a single
counsel of their own choosing) at the Indemnitees' sole cost and expense,
8
(b) the Indemnitees shall fully cooperate with BioSphere in all reasonable
respects, and (c) BioSphere shall not settle or compromise any such claim or
action without the prior written consent of the Indemnitees, unless such
settlement or compromise includes a general release of the Indemnitees from any
and all liability with respect thereto and does not include an admission of
liability on the part of any Indemnitee, and does not impose any restriction on
the conduct by such Indemnitee of any of its activities.
Section 10
Limitations on Liability
10.1 No Warranties. Except as expressly set forth in Section 7 hereof,
-------------
neither party makes any representations or warranties as to any matter
whatsoever. EACH PARTY HEREBY DISCLAIMS ANY AND ALL OTHER REPRESENTATIONS AND
WARRANTIES, EXPRESS OR IMPLIED, WITH RESPECT TO THE LICENSED PATENTS, THE
KNOW-HOW AND THE LICENSED PRODUCTS, INCLUDING, WITHOUT LIMITATION, ANY
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR ANY PARTICULAR PURPOSE.
10.2 Limitations of Liability. UNDER NO CIRCUMSTANCES SHALL EITHER PARTY
------------------------
BE LIABLE TO THE OTHER PARTY OR ANY OTHER PERSON FOR ANY SPECIAL, CONSEQUENTIAL
OR INDIRECT DAMAGES OF ANY KIND WHATSOEVER.
10.3 Force Majeure. No party shall be liable for failure or delay in
-------------
performing any of its obligations hereunder if such failure or delay is
occasioned by compliance with any governmental regulation, request or order, or
by circumstances beyond the reasonable control of the party so failing or
delaying, including, without limitation, Acts of God, war, insurrection, fire,
flood, accident, labor strikes, work stoppage or slowdown (whether or not such
labor event is within the reasonable control of the parties), or inability to
obtain raw materials, supplies, power or equipment necessary to enable such
party to perform its obligations hereunder. Each party shall (a) promptly notify
the other party in writing of any such event of force majeure, the expected
duration thereof and its anticipated effect on the ability of such party to
perform, its obligations hereunder, and (b) make reasonable efforts to remedy
any such event of force majeure.
Section 11
Term and Termination
11.1 Term. The term of this Agreement will commence on the Effective Date
----
of this Agreement and remain in full force and effect until either the later of
(i) expiration of the term of the last patent of the Licensed Patent covering
any Licensed Product, or (ii) ten (10) years.
11.2 Termination By BioSphere. BioSphere may terminate this Agreement in
------------------------
part or in whole at any time upon one hundred eighty (180) days' written notice
in advance to Licensors.
11.3 Termination By Default. If either party shall be in default of any
----------------------
obligation hereunder, or shall be adjudged bankrupt, or become insolvent, or
make an assignment for the
9
benefit of creditors, or be placed in the hands of a receiver or a trustee in
bankruptcy; the other party may terminate this Agreement by giving sixty (60)
days' notice by Registered Mail to the other party, specifying the basis for
termination. If within sixty (60) days after the receipt of such notice, the
party who received notice shall remedy the condition forming the basis for
termination, such notice shall cease to be operative, and this Agreement shall
continue in full force.
Section 12
Export Controls
---------------
All obligations to furnish goods, technology, or software under this
Agreement may be subject to various laws and regulations governing the export of
goods, including U.S. and/or Japanese Export Control Laws and Regulations.
BioSphere agrees to comply fully with all applicable laws and regulations before
exporting any goods, technology, or software. BioSphere recognizes and agrees
that its obligations to comply with such export control laws and regulations
survive the termination or expiration of this Agreement.
Section 13
Miscellaneous
-------------
13.1 Notices. All notices, reports and/or other communications made in
-------
accordance with this Agreement, shall be deemed to be duly made or given (i)
when delivered by hand, (ii) three days after being mailed by registered or
certified mail (air mail if mailed overseas), return receipt requested, or (iii)
when received by the addressee, if sent by facsimile transmission or by Express
Mail, Federal Express or other express delivery service (receipt requested), in
each case addressed to such party at its address set forth below (or to such
other address as such party may hereafter designate as to itself by notice to
the other party hereto):
In the case of BioSphere:
Xxxx Xxxxxxxxx
BioSphere Medical, Inc.
0000 Xxxxxxx Xxxxxx
Xxxxxxxx XX 00000 X.X.X.
In the case of Licensors or Hori:
Xx. Xxxx-ichi Hori
0-0-0 Xxxxxxxxx, Xxxxxxxx
Xxxxx-xxx, Xxxxx 000-0000
Xxxxx
13.2 Amendments. This Agreement may not be amended or modified, nor may
----------
any right or remedy of any party be waived, unless the same is in writing and
signed by such party or a duly authorized representative of such party. The
waiver by any party of the breach of any
10
term or provision hereof by any other party shall not be construed as a waiver
of any other subsequent breach.
13.3 No Waiver; Remedies. No failure or delay by any party in exercising
-------------------
any of its rights or remedies hereunder shall operate as a waiver thereof, nor
shall any single or partial exercise of any such right or remedy preclude any
other or further exercise thereof or the exercise of any other right or remedy.
The rights and remedies of the parties provided in this Agreement are cumulative
and not exclusive of any rights or remedies provided by law.
13.4 Assignment. Licensors may not assign or otherwise transfer this
----------
Agreement or any of their rights, duties or obligations hereunder without the
prior written consent of BioSphere.
13.5 Expenses. Unless otherwise provided herein, all costs and expenses
--------
incurred in connection with this Agreement and the transactions contemplated
hereby shall be paid by the party which shall have incurred the same and the
other party shall have no liability relating thereto.
13.6 Entire Agreement. This Agreement and that certain Medical Advisory
----------------
Board Agreement entered into between Hori and BioSphere in September 1999
constitute the entire agreement between the parties and supersedes all prior
proposals, communications, representations and agreements, whether oral or
written, with respect to the subject matter hereof.
13.7 Severability. Any term or provision of this Agreement which is
------------
invalid or unenforceable in any jurisdiction shall, as to such jurisdiction, be
ineffective to the extent of such invalidity or unenforceability without
rendering invalid or unenforceable the remaining terms and provisions of this
Agreement or affecting the validity or enforceability of any of the terms or
provisions hereof in any other jurisdiction.
13.8 Counterparts. This Agreement may be signed in any number of
------------
counterparts, each of which shall be deemed an original, with the same effect as
of the signatures thereto and hereto were upon the same instrument.
13.9 Headings. The headings used in this Agreement are for convenience of
--------
reference only and shall not affect the meaning or construction of this
Agreement.
13.10 Governing Law. This Agreement, including the performance and
-------------
enforceability hereof, shall be governed by and construed in accordance with the
laws of the Commonwealth of Massachusetts, U.S.A. without reference to choice of
law doctrine. Each party hereby submits itself for the sole purpose of this
Agreement and any controversy arising hereunder to the jurisdiction of the
courts located in the Commonwealth of Massachusetts, and any courts of appeal
therefrom, and waives any objection (on the grounds of lack of jurisdiction or
forum non conveniens or otherwise) to the exercise of such jurisdiction over it
by any such courts.
13.11 Official Language. The official language of this Agreement and any
-----------------
communication, notice or proceeding relating thereto shall be English.
11
IN WITNESS WHEREOF, the undersigned are duly authorized to execute this
Agreement on behalf of BIOSPHERE, HORI, and LICENSORS as applicable.
FOR BIOSPHERE MEDICAL, INC.: FOR LICENSORS:
XX XXXX-ICHI-HORI
("BioSphere") ("Hori")
By: /s/ Xxxx-Xxxxx Xxxxx /s/ Xxxxxxxx Xxxx
--------------------------------- ---------------------------------
Print Name: Xxxx-Xxxxx Xxxxx Print Name: Xxxxxxxx Xxxx
------------------------- -----------------------
Title: Chairman
------------------------------
Xxxxxx Xxxx
/s/ Xxxxxx Xxxx
----------------------------------
Print Name: Xxxxxx Xxxx
-----------------------
12
