EXHIBIT 4.3
EXECUTION COPY
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INTELLECTUAL PROPERTY ASSIGNMENT AND SALE AGREEMENT
BETWEEN : EFOS INC., a corporation duly incorporated under the
laws of Ontario, having its head office at 0000
Xxxxxxxx Xxxx, Xxxxxxxxxxx, Xxxxxxx, X0X 0X0;
(hereinafter referred to as "Opco")
AND : EXFO ELECTRO-OPTICAL ENGINEERING INC., a corporation
duly incorporated under the laws of Canada, having
its head office at 000 Xxxxx Xxxxxx, Xxxxxx, Xxxxxx,
X0X 0X0;
(hereinafter referred to as "EXFO")
AND: XXXX XXXXXXX, resident and domiciled at
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AND XXXXX XXXXXX, resident and domiciled at
-----------------------------;
AND: EFOS CORPORATION, a corporation duly incorporated
under the laws of Ontario, having its head office at
0000 Xxxxxxxx Xxxx, Xxxxxxxxxxx, Xxxxxxx, X0X 0X0;
(hereinafter referred to as the "Shareholder")
(Opco, EXFO, the Shareholder, Xxxx Xxxxxxx and Xxxxx
Xxxxxx being hereinafter sometimes collectively
referred to as the "Parties" and individually as a
"Party")
(the Shareholder, Xxxx Xxxxxxx and Xxxxx Xxxxxx being
sometimes hereinafter collectively referred to
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as the "Guarantors" and individually as a
"Guarantor")
PREAMBLE
WHEREAS Opco owns all rights in a patent registered on May 28, 1996 with the
United States Patent Office as registration number 5521392, serial number
08-235621, entitled "Light Cure System With Closed Loop Control and Workpiece
Recording" (the "Patent");
WHEREAS Opco wishes to assign all rights and title in and to the Patent to EXFO;
WHEREAS the Parties wish to enter into this Agreement on the terms and
conditions more particularly provided herein.
NOW, THEREFORE, in consideration of the above premises and agreements herein
contained, the preamble forming an integral part hereof, the Parties agree as
follows:
1. DEFINITIONS
In this Agreement, except where the context or subject matter is
inconsistent therewith, the following terms shall have the following
meanings:
1.1 "Affiliates" means, with respect to a Party to this Agreement,
any person which, directly or indirectly, through one or more
intermediaries, controls, is controlled by, or is under common
control with such Party. The term "control" means possession,
direct or indirect, of the powers to direct or cause the
direction of the management or policies of a person, whether
through ownership of equity participation, voting securities,
or beneficial interests, by contract, by agreement or
otherwise.
1.2 "Agreement" shall mean this document, the annexed schedules,
which are incorporated herein, together with any future
written and executed amendments agreed to by the Parties.
1.3 "Assigned Rights" shall mean all rights and title in the
Patent and all Intellectual Property Rights in the technology
described in the Patent, in all countries.
1.4 "Improvements" means innovations, inventions, ideas, designs,
concepts, discoveries, techniques, works, processes, formulas,
new derived material and modifications related to the Patent,
whether or not patentable, copyrightable, or otherwise
protectable as trade secrets or under any other intellectual
property, conceived, brought to practice or developed by
either Party after the date of this Agreement.
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1.5 "Intellectual Property Rights" includes all patents, trade
marks, service marks, registered designs, integrated circuits
topographies, including applications for any of the foregoing,
and includes all copyrights, design rights, know-how,
confidential information, trade secrets and any other similar
rights in Canada and in any other countries.
1.6 "Patent" shall mean the patent described in recitals hereof
and its counterpart applications in any country, now or
thereafter owned by Opco or to which Opco otherwise acquires
rights, including any patent application, divisional,
continuation, provisional, reissue, re-examination, extension
certificate, registration, renewal, confirmation and national
phase entry application related to such Patent.
2. ASSIGNMENT OF PATENT
2.1 Subject to the terms and conditions contained in this
Agreement, Opco hereby irrevocably assigns to EXFO all rights
and title to the Patent as well as all Intellectual Property
Rights in the technology described in the Patent, in all
countries.
2.2 The Parties hereby recognise and agree that any and all
Intellectual Property Rights in any Improvements shall be held
by EXFO.
2.3 The Parties hereby recognise and agree that no Intellectual
Property Rights are assigned, licensed or otherwise granted
under this Agreement, save and except as explicitly stated in
this Section 2.
3. COMPENSATION
3.1 In consideration of the Assigned Rights, EXFO agrees to pay
Opco the sum of twenty five million dollars in United States
Currency (US$25,000,000) (the "Purchase Price") payable upon
the execution of this Agreement by all of the Parties hereto,
plus all applicable taxes.
4. REPRESENTATIONS AND WARRANTIES
4.1 The Guarantors represent and warrant on a joint and several
basis to EXFO that:
4.1.1 the Patent does not, to the best knowledge of the
Guarantors, infringe upon any patent, or any
trademark, copyright, trade secret or other
Intellectual Property Rights or proprietary right of
any third party, and that there is currently no
actual or threatened suit against Opco by any third
party
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based on an alleged violation of such right, and the
Guarantors do not know of any basis for any such
action;
4.1.2 there are no outstanding assignments, grants,
licenses, liens, encumbrances, obligations or
agreements (whether written, oral or implied)
regarding the Patent other than the license agreement
entered into between Opco and Dentsply International
Inc. as of July 3, 1997;
4.1.3 Opco has all rights, power and authority required in
order to grant the Assigned Rights free and clear of
all encumbrances or legal restrictions, in accordance
with this Agreement;
4.1.4 Opco has good and marketable title to the Patent and
is the sole owner of the Patent;
4.1.5 all registrations in respect of the Intellectual
Property Rights in the technology described in the
Patent (the "Registrations") are in good standing and
Opco has paid all required fees to date in respect of
any such Registrations in accordance with the
applicable time frames;
4.1.6 to the Guarantor's knowledge, there are no facts or
circumstances that could affect or result in the
cancellation of any of the Registrations;
4.1.7 notwithstanding any investigation conducted prior to
the execution of this Agreement and notwithstanding
implied knowledge or notice of any fact or
circumstance which any Party may have as a result of
such investigation or otherwise, the parties hereto
shall be entitled to rely upon the representations
and warranties set forth herein and shall survive the
execution of this Agreement in accordance with and
subject to Section 4.2 hereof; and
4.1.8 there is no requirement for Opco to obtain any other
authorisation, consent or approval from any third
party as a condition to the enforceability of any
provision of this Agreement or the lawful conclusion
of the transactions contemplated by this Agreement.
4.2 The representations and warranties of the Guarantors shall
terminate on the date which is 180 days after the date EXFO
has publicly released its audited financial statements for the
year ended August 31, 2003, except to the extent that, during
such period EXFO shall have given notice to the Guarantors, to
the extent feasible, of any claim, demand, action or other
proceedings ("Claim") made or notified by any third party
against EXFO and arising out of the breach of any obligation
or any representation and warranty under this Agreement, in
which
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case such representation and warranty with respect to such
Claim shall continue in full force and effect until the final
determination of such Claim.
4.3 The Guarantors, on a joint and several basis, shall defend,
indemnify and hold EXFO harmless against all Claims incurred
or suffered by EXFO arising directly or indirectly out of (a)
the breach of any representation or warranty contained or
contemplated by this Agreement; and (b) the breach or
non-fulfilment of any agreement, covenant or obligation of
Opco or the Guarantors contained in this Agreement or in any
other agreement or document required to be entered into by any
of the Guarantors or Opco pursuant hereto, to the extent not
waived in writing by EXFO.
4.4 No claims with respect to breaches or failure of
representations and warranties may be made against the
Guarantors hereunder unless and until the aggregate amount of
all claims which may be made pursuant to this Agreement exceed
$100,000, in which event the Guarantors shall become liable
for the full amount of all claims on a dollar for dollar
basis, up to a maximum amount equal to the Purchase Price.
4.5 The provisions of Sections 4.2 through 4.4 shall constitute
the sole remedy of EXFO (in contract, torts of otherwise) for
or in respect of the transactions contemplated by this
Agreement.
5. TERM
5.1 This Agreement shall take effect upon the execution hereof by
the Parties hereto.
6. NOTICE
6.1 Any notice provided for or permitted in this Agreement shall
be in writing and will be deemed to have been given seven (7)
days after having been mailed, postage pre-paid, by certified
or registered mail or by recognised overnight delivery
services, except in the case of a postal or other strike
affecting the service used whereupon notice will be deemed to
have been given seven (7) days after normal service resumes.
6.2 Where personal service is made, any notice provided for or
permitted in this Agreement will be deemed to have been given
when received by the intended recipient. The intended
recipient must be an individual whose personal name appears on
the address set out in the notice.
6.3 Addressing and delivery is to be made as follows:
6.3.1 If to Opco and/or the Guarantors:
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0000 Xxxxxxxx Xxxx
Xxxxxxxxxxx, Xxxxxxx
X0X 0X0
Facsimile: (000) 000-0000
ATTENTION: XX. XXXXX X. XXXXXX
6.3.2 If to EXFO:
EXFO ELECTRO-OPTICAL ENGINEERING INC.
000 Xxxxx Xxxxxx
Xxxxxx, Xxxxxx
X0X 0X0
Facsimile: (000) 000-0000
ATTENTION: XX. XXXXXXX XXXXXXX, PRESIDENT
as the case may be. The Parties may communicate other
addresses where notice must be sent from time to time. Such
communication shall be in writing and shall have the effect of
replacing the address under this Section.
7. LIMITATION OF LIABILITY
7.1 Except for liability under the indemnity set forth in Section
4.3, in no event shall any Party be responsible for any
indirect damages including, but not limited to, damages
resulting from lost profits, lost business revenue, lost
opportunity or third party damages. These limitations on any
Party's liability shall survive the termination of this
Agreement irrespective of the manner or method in which it is
terminated.
8. LEGAL RELATIONSHIP
8.1 In giving effect to this Agreement, no Party shall be or be
deemed to be an agent or employee of any other for any
purpose. Nothing in this Agreement shall constitute a
partnership or a joint venture between or among any of the
Parties. No Party shall have the right to enter into contracts
or pledge the credit of or incur expenses or liabilities on
behalf of any Party.
9. CONFIDENTIALITY
9.1 Each Party shall use reasonable efforts, no less than the
protection given its own confidential information, to maintain
in confidence all information of the any other Party disclosed
by any other Party (each an "Owner") and identified as, or
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acknowledged to be, confidential at the time of the disclosure
as well as the terms and conditions hereof (collectively, the
"Confidential Information"), and shall not use, disclose or
grant the use of the Confidential Information except on a
need-to-know basis to those directors, officers, Affiliates,
employees, licensees, sublicensees, permitted assignees and
agents, consultants, or representatives, to the extent such
disclosure is reasonably necessary in connection with such
Party's activities as expressly authorized by the Agreement.
Each Party shall notify the other Parties promptly upon
discovery of any unauthorized use or disclosure of any Party's
Confidential Information.
9.2 The confidentiality obligations contained in Section 9.1 above
shall not apply to the extent that (a) any receiving Party
(the "Recipient") is required (i) to disclose information by
law, order or regulation of a governmental agency or a court
of competent jurisdiction, or (ii) to disclose information to
any governmental agency for purposes of obtaining approval to
test or market a product or service, provided in either case
that the Recipient shall provide written notice thereof to the
Owner and reasonable opportunity to object to any such
disclosure or to request confidential treatment thereof; or
(b) the Recipient can demonstrate that (i) the disclosed
information was public knowledge at the time of such
disclosure to the Recipient, or thereafter became public
knowledge, other than as a result of actions of the Recipient
in violation hereof; (ii) the disclosed information was
rightfully known by or in the possession of the Recipient (as
shown by its written records) prior to the date of disclosure
to the Recipient by the Owner hereunder; or (iii) the
disclosed information was disclosed to the Recipient on an
unrestricted basis from a source unrelated to any Party to the
Agreement and not under a duty of confidentiality to the
Owner.
10. SALE OF SHARES
10.1 This Agreement and the assignment of the Patent hereunder are
executed and delivered in contemplation that, EXFO and Xxxx
Xxxxxxx, Xxxxx Xxxxxx, the Shareholder, 1466716 Ontario
Limited, 1466717 Ontario Limited and 1466718 Ontario Limited
will complete the transactions contemplated by the Share
Purchase Agreement dated as of March 5, 2001, with respect to
the purchase all of the issued and outstanding shares of Opco
under specific conditions. Completion of the transactions
contemplated by the Share Purchase Agreement and any
amendments thereto is a condition subsequent to the completion
of the transaction contemplated in this present Agreement.
11. FURTHER ASSURANCES
11.1 Each Party agrees that upon the written request of any other
Party, it will do all such acts and execute all such further
documents, conveyances, deeds,
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assignments, registrations, transfers and the like, including
the execution of any licence agreements between Opco and EXFO
and will cause the doing of all such acts and will cause the
execution of all such further documents as are within its
power to cause the doing or execution of, as any other Party
hereto may from time to time reasonably request be done and/or
executed as may be necessary or desirable to give effect to
this Agreement and the obligations hereunder.
12. REMEDIES
12.1 Opco acknowledges that any violation of the terms of this
Agreement would result in irreparable harm to EXFO which could
not be adequately compensated by monetary award alone. In the
event of any violation by Opco of the terms of this Agreement,
including, without limitation, of any confidentiality
provisions, and in addition to all other remedies available at
law and at equity, EXFO shall be entitled as a matter of right
to apply to a court of competent equitable jurisdiction for
relief, waiver, restraining order, injunction, decree or other
remedy as may be appropriate to ensure compliance of Opco with
the terms of this Agreement.
13. MISCELLANEOUS PROVISIONS
13.1 This Agreement shall be governed by the laws of the Province
of Ontario (without regard to the principles of conflict of
law thereof) and the laws of Canada applicable therein. The
Parties agree to be governed by the jurisdiction of the courts
of the Province of Ontario in the event that any proceeding is
brought under the terms of this Agreement.
13.2 In case of ambiguity, inconsistency or incompatibility between
any provisions contained in this Agreement, the provision
which is more specific shall prevail over the provision which
is more general to the extent of any such ambiguity,
inconsistency, incompatibility, as the case may be.
13.3 Time is of the essence with respect to each provision of this
Agreement.
13.4 The titles of the articles and paragraphs of this Agreement
are inserted solely for convenience, are not a part of this
Agreement, and do not in any way limit or amplify the terms of
this Agreement.
13.5 This Agreement constitutes the entire agreement between the
Parties and supersedes all prior agreements, understandings,
negotiations and discussions between and/or among the Parties,
whether oral or written pertaining to the subject matter
hereof. No supplement, modification or termination of this
Agreement shall be binding, unless executed in writing by the
Parties.
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13.6 No provisions of this Agreement shall be deemed waived and no
breach excused, unless such waiver or consent excusing the
breach is in writing and signed by the Party to be charged
with such waiver or consent. A waiver by a Party of any
provision of this Agreement shall not be construed as a waiver
of a further breach of the same covenant or condition.
13.7 This Agreement shall enure to the benefit of and be binding
upon the Parties and their respective successors (including
any successor by reason of amalgamation or statutory
arrangement of any Party) and permitted assigns.
13.8 Except as expressly provided otherwise in this Agreement,
dates and times by which any Party is required to perform any
obligation under this Agreement shall be postponed
automatically to the extent, and for the period of time, that
that Party is prevented from doing so by circumstances beyond
its reasonable control. Such circumstances shall include acts
of nature, strikes, lockouts, riots, acts of war, epidemics,
government regulations imposed after the fact, fire,
communications line failures, power failures, earthquakes or
other disasters. The Party prevented from rendering
performance must notify all other Parties immediately and in
detail of the commencement and nature of such circumstance and
the probable consequences of it. Each Party whose performance
is delayed must use reasonable efforts to perform its
obligations in a timely manner, must employ all resources
reasonably required in the circumstances and must obtain
supplies or services from other sources if reasonably
available.
13.9 Unless otherwise stipulated herein, all references to money
under this Agreement shall be in Canadian currency.
13.10 Should any Section or term contained in this Agreement be
declared invalid by a court of law, it shall be severed from
this Agreement without affecting any other terms which will
continue to remain in full force.
13.11 This Agreement has been drawn up in the English language at
specific request of the Parties hereto. Cette convention a ete
redigee en langue anglaise a la demande expresse des Parties
aux presentes.
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IN WITNESS THEREOF, the Parties have executed this Agreement as of the date last
written below.
EFOS INC.
Per: /s/ Xxxx Xxxxxxx
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Title: President
Date: March 14, 2001
EXFO ELECTO-OPTICAL ENGINEERING INC.
Per: /s/ Xxxxxxx Xxxxxxx
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Title: President and Chief Executive Officer
Date: March 14, 2001
EFOS CORPORATION
Per: /s/ Xxxx Xxxxxxx
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Title: President
Date: March 14, 2001
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/s/ Xxxxxxx Xxxxxxx /s/ Xxxx Xxxxxxx
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Witness: Xxxxxxx Xxxxxxx Xxxx Xxxxxxx
/s/ Xxxxxxx Xxxxxxx /s/ Xxxxx Xxxxxx
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Witness: Xxxxxxx Xxxxxxx Xxxxx Xxxxxx