Schedule "C"
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BCCA Royalty Agreement
THIS AGREEMENT made as of the 8th day of May 1997.
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AMONG:
BRITISH COLUMBIA CANCER AGENCY, a society duly incorporated under the laws
of the Province of British Columbia with an office at ▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇
("BCCA")
OF THE FIRST PART
AND:
DERMA TECHNOLOGIES INC.,a company duly company under the laws of the
Province of British Columbia with an office at ▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇.
(the "company")
THE SECOND PART
AND:
▇▇. ▇▇▇▇▇ ▇▇▇, a Physician, of BCCA, ▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇
("Lui")
AND:
▇▇. ▇▇▇▇▇▇▇ ▇▇▇▇, A Scientist, of BCCA, ▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇ ▇▇▇
("Zeng")
AND:
▇▇. ▇▇▇▇▇ ▇▇▇▇▇▇▇▇, a Scientist, of BCCA, ▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇
("MacAulay")
AND:
▇▇. ▇▇▇▇▇ ▇▇▇▇▇▇, a Physician, of BCCA, ▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇
('▇▇▇▇▇▇")
AND:
▇▇. ▇▇▇▇▇▇ ▇▇▇▇▇▇, a Scientist, of BCCA, ▇▇▇ ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇,
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇
(▇▇▇▇▇▇")
OF THE THIRD PART
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WHEREAS:
A. The Researchers are employed by BCCA;
B. On the project originating from in the Skin Working Group of BCCA, a set of
conceptual devices have been developed.
C. The Researchers have developed patent applications for three of these
devices;
D. Further research is needed in order to develop these devices for commercial
use.
E. BCCA has elected not to pursue the patenting of these devices.
F. BCCA is willing to permit the Company to undertake the require research to
develop these devices, and to build study and laboratory prototypes
provided that all risks and costs associated with this research are assumed
and paid for by the Company:
G. The Company us prepared to undertake the research and development.
NOW THERFORE THIS INDENTURE WITNESSETH that in consideration of the premises and
of the mutual covenants hereinafter set forth, the parties hereto covenant and
agree as follows:
ARTICLE 1: DEFINITIONS
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1.1 In this Agreement unless the context clearly or necessarily indicates
otherwise, the following words and phrases shall mean.
(a) "The devises" is defined as encompassing the embodiments envisioned in
the patent applications
(1) Fluorescene scope system for dermatologic diagnosis,
(2) Spectrometer system for diagnosis of skin disease,
(3) Apparatus and method to monitor photodynamic therapy (DPT)
(Abstracts attached in Appendix A)
(b) "Date of Commencement" ; This Agreement will be deemed to have come
into force on the date of execution and will be read and construed
accordingly.
(c) "Gross Revenue" All Revenues, receipts and monies directly or
indirectly collected or received whether for cash or credit or by way
of benefit, advantage or concession by the Company from the use of the
Technology and/or any Products in any or all parts of the word where
the world where the Company is permitted by law and by this Agreement
to use the Technology and/or the Products. Where any gross revenue is
derived from a country other than Canada, it shall be converted into
the equivalent in Canadian dollars on the date received by the Company
at the rate of exchange set by the Bank of Montreal in the amount of
Canadian dollars actually received by the Company pursuant to such
conversion shall be included in gross revenue.
(d) "Royalty Due Date": The last working day of December in each and every
year during which this Agreement remains in full force and effect.
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ARTICLE 2: PROPERTY RIGHTS IN AND TO THE DEVICES
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2.1 The parties hereby acknowledge and agree subject to Section 3.1 that all
rights, title and interest in and to the devices now owned by BCCA shall be
and they are hereby assigned by BCCA to the Company.
2.2 The Researchers and BCCA agree to assign to the Company all of their
respective right, title and interest in and to the Patents arising out of
the devices that may hereafter be applied for.
ARTICLE 3: ROYALTIES
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3.1 In consideration of the transfer by the investors of all the rights in and
to the devices, the Company shall pay to the investors a Royalty of 1.0% of
its Gross Revenue on all Gross Revenue derived from the marketing and
manufacturing of the Technology and the marketing manufacturing and sale of
Products.
3.2 In consideration of the transfer by BCCA of all the rights in and to the
devices, the Company shall pay to BCCA a Royalty of 1.5% of its Gross
Revenue on all Gross Revenue derived from the marketing and manufacturing
of the Technology and the marketing manufacturing and sale of Products.
3.3 Royalties shall become due and payable on the Royalty Due Date and shall be
calculated with respect to Gross Revenue received by the company in the 12
month period immediately preceding the respective Royalty Due Date. The
Company shall pay such Royalty on or before the date it becomes due and
payable.
3.4 All payments of Royalties made by the Company to BCCA hereunder shall be
made in Canadian Dollars without any deduction or reductions of any nature
or kind whatsoever, except as may be prescribed by Canadian law.
ARTICLE 4: ACCOUNTING RECORDS IN RESPECT OF ROYALTIES
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4.1 The Company shall maintain at its principal place of business or such other
place as may be most convenient, separate accounts and records of business
done under this Agreement, such accounts and reports to be in sufficient
detail to enable proper returns to be made under this agreement, and the
Company shall require its licensees and sub-licensees to keep similar
accounts and records.
4.2 The Company shall deliver to BCCA on the Royalty Due Date any Royalties
together with an accounting statement (the "Accounting") setting out in
detail how the account in Gross revenue was determined.
4.3 During the term of this Agreement and thereafter, all information provided
to BCCA or its representatives pursuant to this Article shall remain
confidential and be treated as such by BCCA and will not be made available
to any other person.
4.4 Notwithstanding the termination of this Agreement, this Article 4 shall
remain in full force and effect until:
(a) all payments of Royalty required to be made by the Company to BCCA
under this Agreement have been made by the Company to BCCA: and
(b) any other claim or claims of any nature or kind whatsoever of BCCA
against the Company have been settled.
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ARTICLE 5: RESEARCHERS
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The Researchers jointly and severally warrant and represent to the Company that
the Technology to date has been developed in the course of their employment with
BCCA and that they are willing to transfer their right, title or interest in or
to any Products to the Company in accordance with the terms of this Agreement.
ARTICLE 6: TERMINATION
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6.1 This Agreement shall expire:
(a) If Patents have been issued with respect to the devices, upon the
expiry of the last such Patent issued:
(b) If no such Patents have been issued, on the date which is 20 years
from the Date of Commencement.
ARTICLE 7: GENERAL
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IN WITNESS WHEROF the parties hereto have caused this Agreement to be executed
by the parties on the date hereinbefore set forth.
The CORPORATE SEAL of BRITISH )
COLUMBIA CANCER AGENCY was )
Hereunto affixed in the presence of: )
/s/ ▇▇. ▇▇▇▇▇▇ ▇▇▇▇ )
________________________________ ) c/s
Authorized Signatory ▇▇. ▇▇▇▇▇▇ ▇▇▇▇ )
)
________________________________ )
Authorized Signatory )
The CORPORATE SEAL of DERMA )
TECHNOLOGIES INC. was hereunto )
affixed in the presence of: )
/s/ unknown "president" )
________________________________ ) c/s
Authorized Signatory )
)
________________________________ )
Authorized Signatory )
SIGNED, SEAL AND DELIVERED by )
▇▇. ▇▇▇▇▇ ▇▇▇ in the presence of: )
) /s/ ▇▇. ▇▇▇▇▇ ▇▇▇
________________________________ ) _________________________
Name ) ▇▇. ▇▇▇▇▇ ▇▇▇
)
▇▇▇▇ ▇▇▇▇▇▇ ▇▇. )
________________________________ )
Address )
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Secretary )
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Occupation
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SIGNED, SEALED AND DELIVERED by )
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)
/s/ ▇▇▇ ▇▇▇▇▇▇ ) /s/ ▇▇. ▇▇▇▇▇▇▇ ▇▇▇▇
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SIGNED, SEALED AND DELIVERED by )
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/s/ ▇. ▇▇▇▇▇▇ ) /s/ DR. ▇▇▇▇▇ ▇▇▇▇▇▇
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