AMENDED AND RESTATED DEVELOPMENT AND RESEARCH AGREEMENT
Exhibit 10.2
AMENDED AND RESTATED DEVELOPMENT AND RESEARCH AGREEMENT
This Amended and Restated Development and Research Agreement (the “Agreement”) is
entered into as of August 19, 2011 (the “Restatement Date”), by and between Universal
Biosensors Pty Ltd, ACN 098 234 309, a company incorporated in Victoria, Australia, of 0
Xxxxxxxxx Xxxxxx, Xxxxxxxx, Xxxxxxxx 0000, Xxxxxxxxx (“UBS”), and Cilag GmbH
International, a Swiss corporation having its principal place of business at 1 Xxxxxx & Xxx
Xxxxxxx, 0000 Xxx, Xxxxxxxxxxx (“Cilag”).
Whereas, UBS, Universal Biosensors, Inc., a Delaware corporation and UBS’s parent
company (“UBI” and, collectively with UBS, “Universal Biosensors”), and Cilag’s Affiliate,
LifeScan, Inc. (“LifeScan”), are parties to that certain Development and Research Agreement dated
April 1, 2002, as amended on March 31, 2004, December 21, 2004, December 7, 2005, June 1, 2007,
October 25, 2007, and May 14, 2009 (collectively, the “Original Agreement”), pursuant to which
Universal Biosensors has performed research programs relating to a variety of fields, and LifeScan
has provided funding for a portion of such research;
Whereas, LifeScan assigned the Original Agreement to Cilag on January 1, 2008;
Whereas, UBS is the operating entity of the Universal Biosensors organization and the
holder of all intellectual property rights of the Universal Biosensors organization, and UBI’s
primary assets are the outstanding shares of UBS;
Whereas, UBI desires that UBS be the counter-party to Cilag under this Agreement; and
Whereas, UBS and Cilag now desire to amend and restate the Original Agreement in its
entirety on the terms and conditions set forth herein.
Now, Therefore, in consideration of the premises and mutual covenants herein
contained, the parties agree to the following:
| 1. | Definitions. |
1.1 “Affiliate” means any entity that directly or indirectly controls, is controlled by, or is
under common control with a party to the Agreement. “Control” shall mean the possession, direct or
indirect, of the power to direct or cause the direction of the management and policies of the
entity, whether through the ownership of voting securities, by contract or otherwise.
1.2 “Assignment Date” means January 1, 2008.
1.3 “Cilag Intellectual Property” means any and all intellectual property and the rights
therein including, without limitation, inventions, ideas, discoveries, trade secrets, know-how,
technology, software, designs, circuit layout rights, concept, data or formulae owned or controlled
by Cilag that is necessary or useful for UBS to carry out the Program.
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1.4 “Development” means a modification of a component, device, material, or process.
1.5 “Effective Date” means April 1, 2002.
1.6 “Field” means a field-of-use.
1.7 “Joint Know-How” means all information, technology, and Developments developed jointly by,
or at the joint instruction of, employees or agents of both, on the one hand, LifeScan or Cilag
and, on the other hand, UBS or UBI, in the course of carrying out the Program, including, without
limitation, ideas, techniques, processes, practices, trade secrets, methods, knowledge, know-how,
skill, expertise, test data and results, analytical and quality control data, results or
descriptions, device, delivery systems, compounds, compositions of matter and material and all
improvements thereto.
1.8 “LifeScan Acquired Know-How” means all know-how, data, and information acquired from USF
Filtration and Separations Group Inc. (“FSG”) by LifeScan and related to the LifeScan Acquired
Patents.
1.9 “LifeScan Acquired Patents” means those applications and patents acquired by LifeScan from
FSG and identified on Exhibit A attached hereto and made a part hereof.
1.10 “LifeScan’s Field” means diabetes, including, without limitation:
(a) the measurement of analytes for purposes of diagnosing, managing, monitoring,
prognosticating, treating, or curing diabetes;
(b) the collection or analysis of data for the purpose of diabetes management;
(c) the delivery of one or more therapeutic agents for the purpose of treating or managing
abnormal glucose metabolism, including, without limitation, the delivery of insulin, insulin
analogs, Glucagon-like proteins/peptides (“GLPs”), analogs of GLPs or GLP like hormones; and
(d) the measurement of glucose in humans for any other purpose, including, without limitation,
tight glycemic control.
1.11 “Post-Assignment Know-How” means the Joint Know-How and Universal Biosensors Know-How
developed on or after the Assignment Date.
1.12 “Pre-Assignment Know-How” means the Joint Know-How and Universal Biosensors Know-How
developed prior to the Assignment Date.
1.13 “Program” means research conducted by UBS in LifeScan’s Field jointly with, or as
directed by, LifeScan or Cilag in the course of carrying out UBI’s responsibilities under Article 2
of the Original Agreement or UBS’s responsibilities under Article 2 of this Agreement. The term
“Program” may also be used to refer to the research and development projects to be
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carried out by UBS on Cilag’s behalf in a calendar year or to a particular research and
development project to be carried out by UBS on Cilag’s behalf.
1.14 “Supply Agreement” means the Amended and Restated Master Services and Supply Agreement
between Universal Biosensors and LifeScan, effective as of May 14, 2009.
1.15 “Term” has the meaning set forth in Section 8.1.
1.16 “UBS Fields” means all Fields outside of LifeScan’s Field.
1.17 “Universal Biosensors Know-How” means all information, technology, and Developments
developed solely by, or at the sole instruction of, an employee or agent of UBS or UBI, in the
course of carrying out the Program, including, without limitation, ideas, techniques, processes,
practices, trade secrets, methods, knowledge, know-how, skill, expertise, test data and results,
analytical and quality control data, results or descriptions, devices, delivery systems, compounds,
compositions of matter, and materials and all improvements thereto.
| 2. | Program. |
2.1 During the Term, UBS shall use its commercially reasonable efforts to perform the Program
and any other areas mutually agreed upon by the parties in writing. For purposes of this Section
2.1, “commercially reasonable efforts” means, with respect to UBS’s obligation under this Agreement
to perform the Program, the level of efforts required to carry out such obligation in a sustained
manner consistent with the efforts similarly-situated medical diagnostics companies devote to their
own internal research programs that are of similar scope and are intended to generate results or
products of similar market potential, profit potential or strategic value, based on conditions then
prevailing. “Similarly-situated medical diagnostics company” means a company in the medical
diagnostics industry of a size and stage of development (taking into account, without limitation,
market capitalization, revenues, number of employees, resources, and manufacturing capabilities)
similar to that of UBS.
(a) For each Program, whether for a calendar year or for a particular project, to be conducted
after the Restatement Date, the parties shall prepare and agree to a written plan setting forth the
research and development work to be performed by UBS during such calendar year or for such project,
and the amount of, and payment schedule for, the funding to be provided by Cilag for such work.
UBS shall furnish to Cilag written calendar quarterly reports disclosing the progress of the
Program, data and summaries of research findings, Post-Assignment Know-How conceived or reduced to
practice during the subject quarter, and goals and objectives for the subsequent quarter.
(b) Cilag and its Affiliates shall have reasonable access to any of UBS’s facilities involved
in work on the Program and, in addition, UBS shall provide to Cilag such information regarding the
results of the Program as Cilag may reasonably request to enable Cilag to enjoy the rights granted
herein pursuant to Article 3.
(c) UBS will manage the Program in consultation with Cilag and any substantial modifications
to the Program will be subject to mutual written approval of the parties.
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2.2 (a) Supervision of the Program shall be provided by the Joint Steering Committee as
defined in the Supply Agreement, and any references to the Steering Committee in this Agreement
shall be deemed to refer to the Joint Steering Committee in the Supply Agreement.
(b) For clarification the parties agree the establishment, composition and decision making
provisions for the Joint Steering Committee in Article 4 of the Supply Agreement shall also apply
to and govern the Steering Committee in this Agreement.
2.3 The parties anticipate that work on the Program will be performed at UBS’s facility in
Melbourne, Australia.
2.4 UBS shall assist Cilag and its Affiliates:
(a) as is reasonably necessary in obtaining regulatory approvals in any country in which Cilag
desires to sell a product that is developed, or any portion of which is developed, in the course of
carrying out the Program; and
(b) as is deemed necessary by Cilag’s patent attorneys in filing, prosecuting, maintaining,
and defending LifeScan Acquired Patents.
During the Term, such assistance shall be at no cost to Cilag or its Affiliates except for the
costs of travel and accommodations for travel requested by Cilag. After expiration or termination
of the Agreement, such assistance shall be at Cilag’s cost.
2.5 Promptly at the end of the Term, UBS shall transfer to Cilag all Post-Assignment Know-How
existing as at the end of the Term. Such information shall include, without limitation, copies of
all relevant data, drawings, notebooks, and samples. In addition, UBS shall offer to Cilag such
consultation with UBS employees as may be reasonably necessary to permit Cilag and its agents to
continue work on the Program. After termination of the Agreement, such consultation shall be at
Cilag’s cost.
2.6 The parties acknowledge and agree that the Pre-Assignment Know-How shall be governed
solely by the Amended and Restated License Agreement between UBS and LifeScan dated as of the
Restatement Date (the “Amended and Restated License Agreement”).
2.7 As to the Post-Assignment Know-How, the parties agree as follows:
(a) Cilag will, at Cilag’s sole discretion, accept liaison and financial responsibility for:
(i) preparation, by a patent attorney in independent practice nominated by Cilag and approved
by UBS, of a patent application or applications, on the patentable aspects of the Post-Assignment
Know-How;
(ii) filing upon execution by the inventors of such application or applications at least in
those countries listed in Exhibit B (the “Jurisdictions”), provided that
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UBS may elect, at its own expense, to file the application or applications in additional
countries; and
(iii) prosecution by the attorney of the application or applications to allowance or to the
point of necessary appeal from a final rejection by an examiner in the Jurisdictions.
(b) Except as may be later separately agreed upon by the parties in writing, Cilag does not
accept responsibility for:
(i) filing or prosecution of any appeal from a final rejection by and examiner in any of the
Jurisdictions of any patent application; or
(ii) the conduct of any interference in which an application or applications may become
involved.
(c) Cilag will furnish UBS copies of:
(i) any applications filed pursuant to Section 2.7(a)(ii);
(ii) any substantive office actions received from any of the Jurisdictions, pertaining to the
applications filed pursuant to Section 2.7(a)(ii); and
(iii) any substantive responses to office actions filed pursuant to Section 2.7(a)(iii).
(d) UBS shall assist, as is deemed necessary by Cilag, in preparing, filing, and prosecuting
the applications filed pursuant to this Section 2.7 and maintaining and defending the patents
issuing therefrom. During the Term, such assistance shall be at no cost to Cilag or its Affiliates
except for the costs of travel and accommodations for travel requested by Cilag or its Affiliates.
After expiration or termination of the Agreement, such assistance shall be at Cilag’s cost.
(e) In the event that Cilag elects not to proceed with the filing or prosecution of any
application under this Section 2.7, respectively, UBS shall have the right at any time thereafter
and by written notice to Cilag to assume and continue at its own expense filing, prosecution, or
both of the application. Upon receipt by Cilag of such notice, Cilag:
(i) shall be relieved of all further financial and other responsibility in respect to the
application;
(ii) shall have no further rights thereto in all countries for which UBS has assumed the
payments;
(iii) shall enter into such assignments or other reasonably necessary documents in respect
thereto in all countries for which UBS assumes financial responsibility so as to properly vest
ownership and the right to prosecute the application in UBS or its nominee; and
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(iv) shall provide to UBS the file histories of the application in Cilag’s or LifeScan’s
possession.
(f) Upon issuance of any patents resulting from applications filed pursuant to Section
2.7(a)(ii), Cilag will accept responsibility for payment of maintenance fees for the Jurisdictions
and all other countries elected by Cilag. However, Cilag shall have the right at any time to
discontinue the payment of any or all maintenance fees in any or all such countries. In the event
Cilag discontinues such maintenance payments, UBS may, at its option and by written notice to
Cilag, maintain the patent at its own expense and license it to third parties. Upon receipt by
Cilag of such notice, Cilag:
(i) shall be relieved of all further financial and other responsibility in respect to the
patent at issue;
(ii) shall have no further rights thereto in all countries for which UBS has assumed the
payments;
(iii) shall enter into such assignments or other reasonably necessary documents in respect
thereto in all countries for which UBS assumes financial responsibility so as to properly vest
ownership and the right to maintain the patent in UBS or its nominee; and
(iv) shall provide to UBS the file histories of the patent in Cilag’s possession.
| 3. | Rights; Licenses; Options. |
3.1 Except as set forth in Section 2.7(e), all right, title and interest in and to the
Post-Assignment Know-How shall be and is owned solely by, and ownership immediately vests upon
creation in, Cilag and UBS hereby assigns its right, title and interest in and to the Post
Assignment Know-How to Cilag.
3.2 Cilag hereby grants to UBS, and UBS accepts, a perpetual, royalty-free, paid-up,
exclusive, worldwide right and license, with the right to sublicense, in the UBS Fields to make,
have made, use, and sell under and otherwise exploit in any way the Post-Assignment Know-How and
all patent applications directed to the Post-Assignment Know-How and patents issuing therefrom.
3.3 It is acknowledged by the Parties that, during the Term and thereafter, UBS and UBI will
be conducting research and development in one or more of the UBS Fields utilizing LIFESCAN’s
Acquired Know-How, LIFESCAN’s Acquired Patents, or both. In the event that, during the Term, UBS
or UBI makes a Development in any of the UBS Fields that UBS desires to license or sublicense to
third parties in one of the UBS Fields, then during the Term UBS shall promptly disclose to Cilag
in writing full details of such Development.
(a) Within sixty (60) days after receipt of the full details, Cilag may notify UBS of its
interest in licensing the Development in the Field, in which case UBS shall enter into good faith
negotiations with Cilag regarding such a license and, during the negotiations, shall
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not offer to any third party a license or negotiate with any third party, worldwide, with
respect to the sublicense of that Development in the relevant Field.
(b) If Cilag fails to notify UBS of its interest, or if no agreement is reached by the
parties within one hundred and twenty (120) days after negotiations begin, then UBS may offer a
license of the Development in the relevant Field to a third party; provided, however, that UBS
shall not enter into a license with a third party on terms more favorable to the third party than
those last offered to Cilag. Unless UBS believes that the terms offered to the third party are
clearly less favorable to that party than were the terms last offered to Cilag, UBS shall seek the
advice of a qualified but disinterested expert to determine whether the terms offered to the third
party are more or less favorable than those last offered to Cilag.
(c) Before terms are offered to a third party, it must first be determined that no substantial
progress had been made in the Development to be licensed subsequent to the time that the
Development was described to Cilag. If substantial progress has been made, then the full details
of the progress must first be described and the Development offered to Cilag, as set forth above;
provided, however, that in granting a license to the third party when permitted under subparagraph
b.), the license may confer automatic rights to enhancements or modifications to Developments
without the need to make any further offers to Cilag.
3.4 To enable UBS to undertake the Program as provided herein, Cilag grants for the duration
of the Program, and UBS accepts, a limited, royalty-free, non-exclusive license to use the Cilag
Intellectual Property in LifeScan’s Field for the research and development activities to be carried
out in accordance with the Program.
| 4. | Payments. |
4.1 (a) In calendar year 2011 and each calendar year thereafter during the Term, Cilag shall
make payment to UBS in the aggregate amount of at least FIFTY THOUSAND US DOLLARS ($50,000), which
shall be paid in accordance with the payment terms agreed to in the Program for that year or, if
there is no annual Program for such calendar year, shall be paid in four, equal installments within
forty-five (45) days of each of January 1, April 1, July 1, and October 1 or as otherwise specified
in the payment terms agreed to in any Program for a project that is conducted in whole or in part
during that calendar year.
(b) For clarification, UBS agrees that any amounts paid to it by Cilag in this Section 4.1
shall be dedicated solely to the Program and cannot be used for any other projects of UBS without
the prior written consent of Cilag.
(c) Payments due hereunder shall be payable to UBS, unless UBS notifies Cilag at least 15 days
before the date any payment is due that such payment is to be made to an Affiliate of UBS.
4.2 Any payments due during the Term of this Agreement shall be payable to UBS (or its
designated Affiliate, as applicable), as set forth in Section 4.1(c), in United States dollars by
wire transfer.
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| 5. | Infringement. |
5.1 UBS and Cilag shall each give prompt notice to one another of any infringement of
Post-Assignment Know-How by third parties as may come to its respective knowledge.
5.2 UBS shall have the right, but not the obligation, to pursue legal action against
infringement of the Post-Assignment Know-How or any patent directed to any of the Post-Assignment
Know-How in the UBS Fields by third parties, including defending any declaratory judgment action.
Cilag shall cooperate with UBS and provide such non-monetary assistance as may reasonably be
requested in connection with such action. Cilag shall have the right to participate in and be
represented by independent counsel in such action at its own expense. Any recovery realized by UBS
as a result of any litigation, other enforcement activity or execution of a sublicense (whether by
way of damages, profits, awards, settlement or otherwise) shall first be allocated to reimbursement
of external legal fees and expenses incurred by UBS and then toward reimbursement of any
unreimbursed legal fees and expenses of Cilag. UBS shall incur no liability to Cilag as a
consequence of such litigation or any resulting unfavorable decision including any decision holding
any patent directed to any of the Post-Assignment Know-How invalid or unenforceable.
| 6. | Confidentiality. |
6.1 All confidential information provided by one party to the other shall be marked as such
and maintained confidential by the recipient during the Term of this Agreement and for a period of
three (3) years following termination or expiration of this Agreement. Confidential information
may be used by the recipient only for the purposes of the Agreement. Such purposes shall include,
without limitation, activities that are necessary for the development and marketing of products.
Confidential information disclosed orally by one party to the other shall be reduced to written
form and marked “Confidential” and sent to the other party within thirty (30) days after the oral
disclosure. The receiving party shall guard all such confidential information with at least the
same level of care as it guards its own.
6.2 Notwithstanding the foregoing, the receiving party shall be relieved of the
confidentiality obligations herein and shall not be prevented by this Agreement from using any
information received by it from the disclosing party if:
(a) the information was previously known to the receiving party;
(b) the information is or becomes generally available to the public through no fault of the
receiving party, including information disclosed as a result of either or both publication or
laying open for inspection by the public of any patent applications that the disclosing party may
file;
(c) the information is acquired in good faith in the future by the receiving party from a
third party who is not under an obligation of confidence to the disclosing party with respect to
such information; or
(d) the information independently developed by or for the receiving party without benefit of
confidential information received from the disclosing party.
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6.3 During the Term of this Agreement, and except as permitted by Section 6.2 or Section 6.4,
the parties agree not to disclose confidential information that relates to the Program to any third
party without prior written consent, which consent shall not be unreasonably withheld; provided,
however, that the parties may disclose such information to persons in their respective businesses
with a need to know.
6.4 The receiving party may disclose Confidential Information of the disclosing party as
expressly permitted by this Agreement or if and to the extent such disclosure is reasonably
necessary in the following instances:
(a) filing or prosecuting patent applications as permitted by this Agreement;
(b) prosecuting or defending litigation providing that the receiving party shall, except where
impracticable, give reasonable advance notice to the disclosing party of the disclosure and, at the
disclosing party’s request and expense, cooperate with the disclosing party’s efforts to contest
such disclosure, to obtain a protective order preventing or limiting the disclosure or requiring
the Confidential Information so disclosed be used only for the purposes for which such disclosure
is required, or to obtain other confidential treatment of the Confidential Information required to
be disclosed;
(c) establishing, enforcing or defending its rights under this Agreement providing that the
receiving party shall, except where impracticable, give reasonable advance notice to the disclosing
party of the disclosure and, at the disclosing party’s request and expense, cooperate with the
disclosing party’s efforts to contest such disclosure, to obtain a protective order preventing or
limiting the disclosure or requiring the Confidential Information so disclosed be used only for the
purposes for which such disclosure is required, or to obtain other confidential treatment of the
Confidential Information required to be disclosed;
(d) complying with applicable court orders or governmental regulations; provided that the
receiving party shall, except where impracticable, give reasonable advance notice to the disclosing
party of the required disclosure, and, at the disclosing party’s request and expense, cooperate
with the disclosing party’s efforts to contest such required disclosure, to obtain a protective
order preventing or limiting the disclosure or requiring that the Confidential Information so
disclosed be used only for the purposes for which such disclosure is required, or to obtain other
confidential treatment of the Confidential Information required to be disclosed. In any event, the
receiving party shall disclose only such Confidential Information as it is required by such court
order or governmental regulations to disclose;
(e) disclosure to Affiliates, employees, consultants and agents, who, in each case, have a
need to know such information in connection with activities contemplated by this Agreement and who
are bound by obligations of confidentiality and non-use at least as restrictive as those contained
in this Agreement; and
(f) disclosure to potential third party investors in confidential financing documents,
provided that each such third party agrees to be bound by obligations of confidentiality and
non-use at least as restrictive as those contained in this Agreement.
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6.5 During the Term of this Agreement, the parties each agree not to originate any publicity,
news release, or other public announcement, written or oral, whether to the public press, to
stockholders, or otherwise, relating to this Agreement, and not to disclose the specific terms of
this Agreement to any third party, without prior written consent of the other party, unless such
disclosure or public announcement is required by statute, law, or the requirement of any securities
exchange. The parties will consult with each other regarding the provisions of this Agreement to
be redacted in any filing made by either party with the Securities and Exchange Commission or as
otherwise required by law. Notwithstanding the foregoing, each party shall be free to disclose,
without the other party’s prior written consent, the existence of this Agreement, the identity of
the other party and those matters relating to this Agreement that have already been publicly
disclosed in accordance with Section 6.2, Section 6.4 or the preceding provisions of this Section
6.5.
| 7. | Warranty. |
7.1 UBS warrants that it has the ability to enter into the Agreement, that there are no
outstanding written or oral agreements to which UBS is a party that are inconsistent with the
Agreement, and that it will not, during the Term, enter into any written or oral agreements in
conflict with the Agreement. Nothing herein shall constitute a warranty that Cilag can practice
Joint Know-How or Universal Biosensors Know-How free from third party patent rights.
7.2 UBS warrants that it is the sole owner of all intellectual property rights of UBS and its
Affiliates and it has entered into agreements with its employees to assign to UBS their rights in
and to all Joint Know-How and Universal Biosensors Know-How, as well as patents and patent
applications directed to Joint Know-How and Universal Biosensors Know-How. UBS also warrants that
it will enforce the same to ensure that it has perfected its title to the Joint Know-How and
Universal Biosensors Know-How, as well as patents and patent applications directed to Joint
Know-How or Universal Biosensors Know-How. Furthermore, UBS warrants that: (a) it has caused or
will cause all additional personnel performing work pursuant to the Program, including any
subcontractors, to execute similar agreements with respect to rights in and to all Joint Know-How
and Universal Biosensors Know-How, as well as all patents and patent applications directed to Joint
Know-How and Universal Biosensors Know-How; and (b) warrants that it will enforce such agreements
to ensure that UBS has perfected its title thereto.
7.3 Cilag warrants that it has the ability to enter into this Agreement, that there are no
outstanding written or oral agreements to which Cilag is a party that are inconsistent with the
Agreement, and that it will not, while the Agreement is in force, enter into any written or oral
agreement in conflict with the Agreement.
| 8. | Term and Termination. |
8.1 Subject to Section 8.2, the term of this Agreement (the “Term”) shall commence on the
Effective Date and shall automatically renew year-to-year on the same terms and conditions unless a
party gives to the other parties written notice of termination not less than nine (9) months prior
to the end of the relevant one year period.
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8.2 Notwithstanding anything to the contrary in Section 8.1, if either party to this Agreement
materially defaults or materially breaches the terms of this Agreement other than by reason of
force majeure, the other party shall have the right to terminate this Agreement by giving written
notice to that effect to the defaulting party 30 days in advance of the date of termination
specified in the notice. However, if the default or breach is corrected or made good by the party
receiving notice within 30 days after the notice of termination has been received, this Agreement
shall not be terminated but shall remain in full force and effect.
8.3 The provisions of Sections 2.7(c) through 2.7(f), Sections 2.4, 2.5, 3.1, 3.2, 3.3, 6.1,
6.2, 6.3, 6.4 and 8.3, and Articles 5, 7 and 9 shall survive the expiration or termination of this
Agreement.
| 9. | General Provisions. |
9.1 Cilag Affiliates. Cilag may delegate to any of its Affiliates the right to exercise any
rights or obligations of Cilag under this Agreement, provided that Cilag shall at all times be
fully responsible for the compliance of its Affiliates with this Agreement. It is acknowledged and
agreed that, as among Cilag and its Affiliates (and except in the case of Cilag’s assignment of
this Agreement to an Affiliate), Cilag shall be the sole party looked to by UBS for all intents and
purposes under this Agreement.
9.2 Notice. All communications, reports, payments and notices shall be effective when
delivered personally, or sent by facsimile transmission, air courier, or registered or certified
mail, return receipt requested, and addressed as follows:
(a) If to UBS:
Chief Executive Officer
Universal Biosensors Pty Ltd
0 Xxxxxxxxx Xxxxxx
Xxxxxxxx, Xxxxxxxx 0000
Xxxxxxxxx
Fax: x000 0000 0000
With a copy to:
Chief Financial Officer
Universal Biosensors Pty Ltd
0 Xxxxxxxxx Xxxxxx
Xxxxxxxx, Xxxxxxxx 0000
Xxxxxxxxx
Fax: x000 0000 0000
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And a copy to:
Xxxx Xxxxxx
Xxxxxxx Attorneys at Law
0000 Xxxxxx Xxxxxxxx Xxxxx
Xxxxx 000
Xxxxxx, Xxxxxxxx 00000
XXX
Fax: x0 000-000-0000
(b) If to Cilag:
Cilag GmbH International
1 Xxxxxx & Gyr Xxxxxxx
XX 0000 Xxx
Xxxxxxxxxxx
Attn: LifeScan Europe Business Development
Fax No.: x00 000 000 0000
With copy to:
Vice President Law
LifeScan, Inc.
0000 Xxxxxxxxx Xxxxx
Xxxxxxxx, XX 00000
XXX
Fax No: x0 000-000-0000
And
Chief Patent Counsel
Xxxxxxx & Xxxxxxx
Xxx Xxxxxxx & Xxxxxxx Xxxxx
Xxx Xxxxxxxxx, XX 00000
XXX
Fax No.: x0 000-000-0000
9.3 Assignment. The rights and obligations in and to this Agreement shall be binding upon and
inure to the benefit of the parties, their legal representatives, successors and assigns. Neither
party may assign this Agreement without the prior written consent of the other party, except:
(a) Cilag may freely assign this Agreement in whole or in part to an Affiliate or a successor
in the entire business to which this Agreement pertains;
(b) UBS, at the end of the Term, may freely assign the benefit of this Agreement as part of
the sale of the whole or part of its business;
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(c) Cilag, prior to the end of the Term, shall not unreasonably withhold its consent to an
assignment as part of the sale of the whole or part of UBS’s business.
Any attempted assignment or transfer of such rights or obligations without such consent,
except as provided herein, shall be void.
9.4 Integration. It is the mutual desire and intent of Cilag and UBS to provide certainty as
to their future rights and remedies against each other by defining the extent of their mutual
undertaking as provided herein. Cilag and UBS acknowledge and agree: (a) that no representation or
promise not expressly contained in this Agreement has been made by another party hereto or by any
of its agents, employees, representatives or attorneys; (b) that such Agreement is not being
entered into on the basis of, or in reliance on, any promise or representation, expressed or
implied, covering the subject matter hereof, other than those which are set forth expressly in this
Agreement; and (c) that each party has had the opportunity to be represented by counsel of its own
choice in this matter, including the negotiations which preceded the execution of this Agreement.
9.5 Entire Understanding. This Agreement represents the entire understanding between UBS and
Cilag with respect to the subject matter in this Agreement and supersedes, except for the letter
dated June 14, 2011 in which Cilag waived its rights in Developments in certain coagulation and
hemostasis tests, any and all implied or express understandings, agreements or obligations between
the parties with respect thereto whether written or oral, including, without limitation, the
Original Agreement.
9.6 Undertakings by Cilag. Cilag makes no representation or warranty that Cilag or an
Affiliate will market any product resulting from the Program or that, if Cilag or an Affiliate does
market a product, such product will be the exclusive means by which Cilag or an Affiliate will
participate in LifeScan’s Field or any other Field.
9.7 Force Majeure. Neither party shall be liable for failure to perform as required by any
provisions of this Agreement where such failure results from a cause beyond such party’s control,
such as acts of God, regulation or other acts of civil or military authority, required approval of
government bodies, fires, strikes, floods, epidemics, quarantine restrictions, riot, delays in
transportation and inabilities due to causes beyond such party’s control to obtain necessary labor,
materials, or manufacturing facilities. In the event of any delay attributable to any of the
foregoing causes, the time for performance affected thereby shall be extended for a period equal to
the time lost by reason of such delay.
9.8 No Waiver. The waiver by either party, whether express or implied, of any provisions of
this Agreement, or of any breach or default of either party, shall not be construed to be a
continuing waiver of such provision, or of any succeeding breach or default, or a waiver of any
other provisions of this Agreement.
9.9 Inoperability and Reform. In the event that any term or provision of this Agreement shall
be inoperable either by operation of law or otherwise, the remainder of this Agreement shall remain
in full force and effect, and the parties shall negotiate in good faith to revise the provision in
question to accomplish the original intent of the parties.
13
9.10 Arbitration. Any controversy or claim arising out of or relating to this Agreement or
the validity, inducement, or breach thereof, shall be settled by arbitration before a single
arbitrator in accordance with the Commercial Arbitration Rules of the American Arbitration
Association (“AAA”) then pertaining (available at xxx.xxx.xxx), except where those rules conflict
with this provision, in which case this provision controls. Any court with jurisdiction shall
enforce this clause and enter judgment on any award. The arbitrator shall be an attorney who has
at least 15 years of experience with a law firm or corporate law department of over 25 lawyers or
who was a judge of a court of general jurisdiction. The arbitrator shall be selected within ten
days of commencement of the arbitration from the AAA’s National Roster of Arbitrators pursuant to
agreement or through selection procedures administered by the AAA. The arbitration shall be held in
San Francisco, California and in rendering the award the arbitrator must apply the substantive law
of New York (except where that law conflicts with this clause), except that the interpretation and
enforcement of this arbitration provision shall be governed by the Federal Arbitration Act. Within
45 days of initiation of arbitration, the parties shall reach agreement upon and thereafter follow
procedures assuring that the arbitration will be concluded and the award rendered within no more
than eight months from selection of the arbitrator. Failing such agreement, the AAA will design
and the parties will follow procedures that meet such a time schedule. Each party has the right
before or, if the arbitrator cannot hear the matter within an acceptable period, during the
arbitration to seek and obtain from the appropriate court provisional remedies such as attachment,
preliminary injunction, replevin, etc., to avoid irreparable harm, maintain the status quo or
preserve the subject matter of the arbitration. THE ARBITRATOR SHALL NOT AWARD ANY PARTY PUNITIVE,
EXEMPLARY, MULTIPLIED OR CONSEQUENTIAL DAMAGES, AND EACH PARTY HEREBY IRREVOCABLY WAIVES ANY RIGHT
TO SEEK SUCH DAMAGES. NO PARTY MAY SEEK OR OBTAIN PREJUDGMENT INTEREST OR ATTORNEYS’ FEES OR COSTS.
9.11 Restriction of Distribution of This Agreement. This Agreement shall not be distributed
to persons other than those personnel of Cilag, UBS, and their respective Affiliates and advisors
(including, without limitation, attorneys and accountants), who have a need to know its contents or
whose knowledge of its contents will facilitate performance of the obligations of the parties under
the Agreement, other than as may be required in medical emergency, or by statute, law, regulation
or judicial order. Notwithstanding the foregoing: (a) prior to such time as this Agreement is
filed with the Securities and Exchange Commission, UBS may disclose a redacted copy of this
Agreement mutually agreed upon with Cilag on a confidential basis to actual and potential UBS
Partners, third party investors, merger or acquisition candidates or other strategic partners,
provided, in each case, that UBS shall redact from such copy any details regarding the Program and
the funding provided or to be provided by Cilag in connection therewith; or (b) after this
Agreement is filed with the Securities and Exchange Commission in accordance with Section 6.5,
either party may disclose to any third party, without restriction, this Agreement in the form filed
with the Securities and Exchange Commission (i.e., with such redactions as may be contained
therein).
9.12 Choice of Law. The interpretation, validity, and performance of this Agreement shall be
governed by the laws of the State of New York, except for such laws directing application of the
laws of another jurisdiction.
14
9.13 Use of Name. Neither party shall use the name of the other party in any promotional
materials or advertising without the prior express written permission of such other party.
[Signature page follows]
15
In Witness Whereof, the parties hereto have duly executed this Agreement as of the
Restatement Date.
| Universal Biosensors Pty Ltd | ||||||
By:
|
/s/ Xxxx Xxxxxx |
By: | /s/ Xxxxxx Xxxxx |
|||
| Name: | Xxxx
Xxxxxx |
Name: | Xxxxxx Xxxxx |
|||
| Title: | CEO |
Title: | CFO |
|||
Date: |
8/29/11 |
Date: | 8/29/11 |
|||
| Cilag GmbH International | ||||||
By:
|
/s/ Xxxxxxx Xxxx |
By: | /s/ Xxxxxx Xxxxxxxxx |
|||
| Name: | Xxxxxxx Xxxx |
Name: | Xxxxxx Xxxxxxxxx |
|||
| Title: | Finance Director |
Title: | Finance Director |
|||
Date: |
8/18/11 |
Date: | 8/18/11 |
|||
Universal Biosensors, Inc. hereby acknowledges and agrees that this Agreement supersedes the
Original Agreement in its entirety.
Universal Biosensors, Inc.
|
||||||
By:
|
/s/ Xxxx Xxxxxx |
|||||
| Name: | Xxxx
Xxxxxx |
|||||
| Title: | CEO |
|||||
Date:
|
8/29/11 |
|||||
EXHIBIT A
LifeScan Acquired Patents
| Current Docket No. | Title | Xxx./Appln. No. | Filing/issue Date | |||
*LFS0196USA
|
Electrochemical Cells | US 5,863,400 | 01/26/1999 | |||
*LFS0197USA
|
Method of Defining an Electrode Area | US 5,980,709 | 11/09/1999 | |||
LFS0198US
|
Electrochemical Cell | US 6,284,125 | 09/04/2001 | |||
LFS0198CNT3
|
Electrochemical Cell | US 7,608,175 | 10/27/2009 | |||
LFS0198USCNT4
|
Electrochemical Cell | US 7,604,722 | 10/20/2009 | |||
LFS0198USCNT5
|
Electrochemical Cell | USSN 12/560,773 | 09/16/2009 | |||
LFS0198USCNT6
|
Electrochemical Cell | USSN 12/560,780 | 09/16/2009 | |||
LFS0198USCNT7
|
Electrochemical Cell | USSN 12/567,433 | 09/25/2009 | |||
LFS0199USA
|
Electrochemical Cell | US 6,179,979 | 01/30/2009 | |||
LFS0199USCNT1
|
Electrochemical Cell | US 7,431,814 | 10/07/2008 | |||
LFS0199USCNT2
|
Electrochemical Cell | USSN 11/487,728 | 07/17/2006 | |||
LFS0199USRE1
|
Electrochemical Cell | USSN 12/899,342 | 10/06/2010 | |||
LFS0200USA
|
Electrochemical Method | US 5,942,102 | 08/24/1999 | |||
*LFS0201US
|
Analytic Cell | US 6,193,865 | 02/27/2001 | |||
*LFS0202USA
|
Electrochemical Cell | US 6,454,921 | 09/24/2002 | |||
LFS0203USA
|
Sensor Connector Means | US 6,379,513 | 04/30/2002 | |||
LFS0203USCNT2
|
Sensor Connector Means | USSN 11/434,442 | 05/15/2006 | |||
*LFS0204US
|
Method and Apparatus for Automatic Analysis | US 6,325,917 | 12/04/2001 | |||
*LFS0205US
|
Heated Electrochemical Cell | US 6,475,360 | 11/05/2002 | |||
*LFS0206USA
|
Sensor With Improved Shelf Life | US 6,652,734 | 11/25/2003 | |||
*LFS0206USACON
|
Sensor With Improved Shelf Life | US 7,335,292 | 02/26/2008 | |||
*LFS0206USCON2
|
Sensor With Improved Shelf Life | USSN 11/926,369 | 10/29/2007 | |||
| * | Asterisk indicates cases no longer prosecuted or maintained by J&J, for which UBS declined to assume responsibility, and that will become abandoned in due course. |
EXHIBIT A
| Current Docket No. | Title | Xxx./Appln. No. | Filing/issue Date | |||
LFS0207US
|
Electrochemical Cell | US 6,174,420 | 01/16/2001 | |||
*LFS0208USNP
|
Method of Preventing Short Sampling of a Capillary or Wicking Fill Device | US 6,571,651 | 06/02/2003 | |||
*LFS0208USDIV1
|
Method of Preventing Short Sampling of a Capillary or Wicking Fill Device | US 7,043,821 | 05/16/2006 | |||
*LFS0208USDIV
|
Method of Preventing Short Sampling of a Capillary or Wicking Fill Device | US 7,131,342 | 11/07/2006 | |||
*LFS0210USA
|
Method of Filling an Amperometric Cell | US 6,592,744 | 07/15/2003 | |||
*LFS0210USACON
|
Method of Filling an Amperometric Cell | US 7,041,210 | 05/09/2006 | |||
*LFS0211US
|
Method and Device for Sampling and Analyzing Interstitial Fluid in Whole Blood Samples | US 6,612,111 | 09/02/2003 | |||
LFS0211USCNT2
|
Method and Device for Sampling and Analyzing Interstitial Fluid in Whole Blood Samples | USSN 10/830,841 | 04/22/04 | |||
*LFS0213USA
|
Antioxidant Sensor | US 6,638,415 | 10/28/2003 | |||
LFS0215USA
|
Electrochemical Method for Measuring Chemical Reaction Rates |
US 6,444,115 | 09/03/2002 | |||
LFS0216USA
|
Hemoglobin Sensor | US 6,632,349 | 10/14/2003 | |||
LFS0217USA
|
Electrochemical Cell | US 6,413,410 | 07/02/2002 | |||
LFS0218USA
|
Electrochemical Cell | US 6,521,110 | 02/18/2003 | |||
LFS0219
|
Electrochemical Cell | US 6,863,801 | 03/08/2005 | |||
LFS0220USAPCT
|
Electrochemical Cell | US 7,431,820 | 10/07/2008 | |||
| * | Asterisk indicates cases no longer prosecuted or maintained by J&J, for which UBS declined to assume responsibility, and that will become abandoned in due course. |
EXHIBIT A
| Current Docket No. |
Title | Xxx./Appln. No. | Filing/issue Date | |||
LFS0220USCNT1
|
Electrochemical Cell | USSN 12/196,704 | 08/22/2008 | |||
*LFS221USA
|
Method and Apparatus for Automatic Analysis | US 6,852,212 | 02/08/2005 | |||
LFS222USCNT1
|
Electrochemical Cell Connector | US 7,846,312 | 12/07/2010 | |||
LFS222USNP
|
Method of Forming an Electrical Connection Between an Electrochemical Cell and Meter | US 6,946,067 | 09/20/2005 | |||
LFS223USACNT
|
Electrochemical Cell | US 6,960,289 | 11/01/2005 | |||
LFS223USACNT2
|
Sensor Connector Means | USSN 11/434,442 | 05/15/2006 | |||
LFS224USCNT
|
Sensor Connector Means | US 7,045,046 | 05/16/2006 | |||
*LFS228USA
|
Heated Electrochemical Cell | US 6,878,251 | 04/12/2005 | |||
*LFS252USACNT
|
Method and Device for Sampling and Analyzing Interstitial Fluid and Whole Blood Samples | US 6,939,312 | 09/06/2005 | |||
LFS253USCNT
|
Electrochemical Method for Measuring Chemical Reaction Rates |
US 7,022,217 | 04/04/20006 |
| * | Asterisk indicates cases no longer prosecuted or maintained by J&J, for which UBS declined to assume responsibility, and that will become abandoned in due course. |
EXHIBIT B
Patent Filing Jurisdictions
Australia
Canada
Canada
EPO:
France
Germany
Italy
Netherlands
Spain
United Kingdom
France
Germany
Italy
Netherlands
Spain
United Kingdom
Japan
United States
United States
EXHIBIT C
Licensed Patents
Licensed Patents
| Patent Number | Issued Date | Title | ||
US 6,872,298
|
March 29, 2005 | Determination of Sample Volume Adequacy in Biosensor Devices | ||
US 6,797,150
|
September 28, 2004 | Determination of Sample Volume Adequacy in Biosensor Devices | ||
US 7,195,704
|
March 27, 2007 | Determination of Sample Volume Adequacy in Biosensor Devices | ||
US 6,193,873
|
February 27, 2001 | Sample Detection to Initiate Timing of an Electrochemical Assay | ||
US 6,676,995
|
January 13, 2004 | Solution Striping System | ||
US 6,689,411
|
February 10, 2004 | Solution Striping System |
