FORM OF LICENSE AGREEMENT
THIS AGREEMENT by and between SurModics, Inc., a corporation of the State of
Minnesota, which has an office at 0000 Xxxx 00xx Xxxxxx, Xxxx Xxxxxxx, XX 00000,
(hereinafter referred to as SURMODICS), and ZZ, a corporation of XX, which has
offices located at XX (hereinafter referred to as ZZ).
WHEREAS, SurModics is engaged in biological, chemical and technical research and
has developed a body of technology and know-how, including reagents, processes
and devices which the parties believe will improve the performance of various
products and processes of ZZ.
WHEREAS, the technology of SurModics includes confidential information
(including trade secrets and other know-how) which is proprietary to SurModics
and SurModics is in the process of securing patent coverage for certain items of
its technology, and continues to maintain the confidentiality of other portions
of its technology.
WHEREAS, ZZ and SurModics are parties to a Mutual Confidential Disclosure
Agreement dated XX ("Prior Disclosure Agreement");
WHEREAS, ZZ may desire to acquire additional licenses under SurModics's know-how
and patent rights such licenses to be added to this Master Agreement;
NOW, THEREFORE, in consideration of the mutual covenants and agreements set
forth below and for other good and valuable consideration of which receipt is
acknowledged, the parties agree as follows:
1. DEFINITIONS
The following definitions apply to this Agreement and to all addenda
thereto:
a. "Effective Date" means the date upon which this Agreement is fully
executed.
b. "Licensed Product Effective Date" shall mean the date specified in
Xxxxxxxxxx X0, X0, and so forth, for that Licensed Product and all payments
due upon execution for that Licensed Product are received by SurModics.
c. "Patent Rights" means the patent application(s) and patent(s)
identified in Attachment A hereof, together with all foreign counterparts,
divisions, and continuation applications based thereon, any patent issuing
on any of said applications, and any reissues or extensions based on any of
such patents. The term "Patent Rights" shall include Improvement Patents
as defined in Paragraph 1(d).
d. "Improvement Patents" means any U.S. patents or patent applications,
and all foreign counterparts, divisions, continuations, continuations in
part, reissues and extensions thereof specifically pertaining to a Licensed
Product:
i. which are filed on an invention conceived or reduced to
practice by SurModics during the exclusive term (if any) of the
license granted herein for that Licensed Product, and
ii. with respect to which SurModics has the right to grant a
license, and
iii. which but for the license granted herein would be infringed by
the manufacture, use or sale (or by a surface treatment process
employed to produce that product or a reagent used in such process) by
ZZ of Medical Products having a surface treated through the use of
SurModics's Know-how.
e. "Medical Products" means products that are specifically described in
Xxxxxxxxxx X0, X0, and so forth.
f. "Licensed Products" means each of the separately sold Medical Products
specifically described in Xxxxxxxxxx X0, X0, and so forth, which bear a
SurModics coating and which:
i. but for the license granted herein the manufacture, use or sale
would infringe (or a surface treatment process employed to produce a
product or a reagent used in such process would infringe) any claim of
Patent Rights, or
ii. are produced through the use of SurModics's Know-how.
g. "Know-how" means SurModics's trade secrets and other technical
information relating to the surface-treatment of medical devices and which
SurModics has the right to transmit to others. Know-how includes but is
not limited to information contained in pending patent applications of
Patent Rights and information that is Confidential Information as defined
in Paragraph 13.
h. "Future Know-how" with respect to any Licensed Product means Know-how
that is acquired by SurModics during the exclusive term (if any) of the
license granted herein for that Licensed Product.
i. "Net Sales" means the total actual billing for sales of Licensed
Products, less the following deductions where they are applicable with
respect to such xxxxxxxx and when separately shown on invoices:
i. discounts actually allowed and taken;
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ii. any customs, duties, taxes or other governmental excise or
charge upon or measured by the production, sale, transportation,
delivery or use of Licensed Product and actually paid by ZZ;
iii. amounts allowed or credited on rejections or returns;
iv. transportation charges prepaid or allowed.
Notwithstanding the above, if any Licensed Product is sold both separately
and as an integral part of a combination product containing one or more
integral components in addition to that Licensed Product, then Net Sales of
that Licensed Product resulting from sales of that combination product will
be calculated by multiplying the Net Sales for the combination product as
calculated above by the fraction A/B where A is the invoice price of the
Licensed Product as sold separately and B is the invoice price of the
combination product.
A Licensed Product shall be considered sold when it is shipped or when it
is invoiced, whichever is earlier. To assure SurModics the full royalty
payment contemplated in this Agreement, ZZ agrees that in the event any
Licensed Product is sold to an Affiliate for purposes of resale, Earned
Royalties for that Licensed Product shall be computed upon the selling price
at which such Licensed Product would ordinarily be sold to a non-Affiliate,
rather than on the selling price of ZZ to the Affiliate.
j. "Affiliate" means any entity which owns at least 50% of, is at least
50% owned by, or is under common (at least 50%) ownership with ZZ.
k. "Valid Claim" means a claim of Patent Rights that has not been held
invalid by a court of competent jurisdiction beyond possibility of appeal.
2. LICENSE
a. With respect to the Licensed Product defined in each of Xxxxxxxxxxx
X0, X0, and so forth, SurModics grants to ZZ, a separate worldwide license
under SurModics's Patent Rights and Know-how to make, have made for it, use
and sell that Licensed Product. The license granted herein does not
include the right to sublicense and is expressly limited to the specific
Licensed Products defined herein. Additional terms of each license are set
out in the respective Xxxxxxxxxxx X0, X0, and so forth. To the extent of
any inconsistency between the terms set forth in the text of this Agreement
and the terms set forth in Xxxxxxxxxxx X0, X0, and so forth, the terms set
forth in the text of this Agreement shall be controlling.
b. Subject to the limited license granted herein, SurModics shall retain
all rights to the Patent Rights and the Know-how, including SurModics's
right to use Patent Rights and Know-how for its own research purposes.
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3. LICENSE FEES
License Fees paid to SurModics by ZZ for each license granted herein are
set out in the respective Xxxxxxxxxx X0, X0, and so forth.
4. ROYALTIES
For each license granted herein, ZZ shall pay to SurModics a royalty for
each quarter calendar year during the term of this License Agreement which
will be the greater of the royalties of Paragraphs 4(a) or 4(b).
a. Earned Royalties shall be calculated as provided for in the respective
Xxxxxxxxxx X0, X0, and so forth. No more than one Earned Royalty shall be
paid by ZZ for any Licensed Product. However, if any Licensed Product is
covered by more than one Xxxxxxxxxx X0, X0, and so forth, then the Earned
Royalty rate shall be the highest rate specified for such Licensed Product.
b. Minimum Royalties shall be paid for each Licensed Product as provided
for in the respective Xxxxxxxxxx X0, X0, and so forth.
5. ROYALTY PAYMENTS, REPORTS, RECORDS
a. During the term of this Agreement, and for each license granted
hereunder, ZZ will make written reports and payments to SurModics within
thirty (30) days after the last day of each calendar quarter ending March
31, June 30, September 30, and December 31. Each such report shall state
the Net Sales, unit volumes, Earned Royalty, corrections of error in prior
royalty payments, and data and calculations used by ZZ to determine such
payments for each of the licenses corresponding to the respective
Xxxxxxxxxxx X0, X0, and so forth. Each report shall be accompanied by
payment in full of the royalty due SurModics for that quarter. The
December 31 quarterly report shall also consist of a summary progress
report regarding ZZ's relevant developmental, manufacturing scale-up,
regulatory affairs, and marketing activities with respect to all Licensed
Products along with a summary forecast of projected sales of Licensed
Products and forecasted reagent usage for the next calendar year.
b. ZZ will maintain, for a period of five (5) years following the sale of
Licensed Product, true and accurate records supporting the reports and
payments made under this Agreement. SurModics shall have the right to
carry out an audit of such records no more frequently than once per
calendar year by a certified public accountant of its choice. Such
accountant shall have reasonable access to ZZ's offices and the relevant
records, files and books of account, and such accountant shall have the
right to examine any other records reasonably necessary to determine the
accuracy of the calculations provided by ZZ under Paragraph 5(a). Such
audit shall be at SurModics's expense except that if cumulative
underpayment errors for any period are found that exceed 5% of the payment
made to SurModics during that period being audited, then ZZ will bear the
cost of such audit.
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c. All royalties on sales of each Licensed Product to be paid to
SurModics by ZZ under this Agreement shall be paid in U.S. Dollars to
SurModics in the United States. For the purpose of calculating Earned
Royalties on sales outside the United States, ZZ shall utilize the average
rate of exchange on the last business day of that calendar quarter as
quoted in the Wall Street Journal.
d. Any sum required under U.S. tax laws (or the tax laws of any other
government) to be withheld by ZZ from payment for the account of SurModics
shall be promptly paid by ZZ for and on behalf of SurModics to the
appropriate tax authorities, and ZZ shall furnish SurModics with official
tax receipts or other appropriate evidence issued by the appropriate tax
authorities sufficient to enable SurModics to support a claim for income
tax credit in respect to any sum so withheld.
6. DEVELOPMENT FEES
ZZ agrees to pay SurModics for development efforts ("Development Fees")
while working on ZZ's products at SurModics's then standard hourly rate for
development efforts provided, however, that such development effort is
pursuant to a mutually agreed upon project plan. SurModics's standard
hourly rate includes direct labor costs plus direct labor overhead.
SurModics shall additionally charge direct materials plus direct materials
overhead of fifteen percent (15%). Direct materials may include expenses
such as travel and special equipment, but only as mutually agreed upon in
writing. SurModics shall invoice ZZ monthly for such Development Fees and
payment is due within thirty (30) days thereafter.
7. TERM
a. Unless earlier terminated, each license herein granted shall begin
upon the Licensed Product Effective Date set out in the respective
Xxxxxxxxxx X0, X0, and so forth, and shall extend for each Licensed Product
so licensed until expiration of the last to expire patent of Patent Rights
that covers that product or for a period of fifteen (15) years following
the first bona fide commercial sale of such Licensed Product, whichever is
longer; provided, however, that for a Licensed Product that embodies or is
manufactured through the use of Future Knowhow, the license herein granted
shall extend until expiration of the last to expire patent of Patent Rights
that covers that Licensed Product or for a period of fifteen (15) years
from the date of the first bona fide commercial sale by ZZ of that Licensed
Product, whichever is longer.
b. Upon expiration of the full term of the license granted herein for any
Licensed Product, and upon full payment by ZZ to SurModics of any monies
due under this Agreement, the license with respect to Know-how licensed
herein for that Licensed Product shall be deemed paid up and non-exclusive
(if any such license was exclusive), and SurModics may negotiate additional
license agreements with any other party for that Licensed Product.
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8. PATENTS
a. ZZ shall see to it that all Licensed Products sold by ZZ shall be
appropriately marked with the applicable patent numbers, in conformity with
applicable law.
b. SurModics recognizes that it is an objective of ZZ to obtain patents
on technology that it develops concerning chemicals having latent reactive
groups and their uses. ZZ recognizes that a vital part of SurModics's
business involves the licensing of others under SurModics's patents and
know-how to make, use and sell products, and that it is an objective of
SurModics to enable its present and future licensees to exploit patent
licenses from SurModics to produce and sell products without interference
from any patent that ZZ might obtain. A purpose of this Paragraph 8(b) is
to establish a system under which each party may accomplish their
respective objectives.
i. "ZZ Patents" means patents which (a) claim inventions conceived
or first reduced to practice during the term of this Agreement solely
by one or more ZZ employees or others who are required to assign
inventions to ZZ, and (b) claim inventions relating to chemical
species having photo-reactive or other latent reactive groups for the
purpose of bonding chemicals such as synthetic polymers and
biologically active materials onto surfaces or into matrices or to
other molecules, the use of such chemicals species, or the products
resulting from such use, and (c) which could be infringed by the
manufacture, use or sale of any product or process covered by any
claim of any patent that SurModics has the right to license to others.
ii. During the term of this Agreement, ZZ will provide SurModics
with a copy of each proposed patent application for a ZZ Patent, and
SurModics will provide comments concerning such application, including
comments regarding inclusion of SurModics's Confidential Information,
prior work done by SurModics in connection with the claimed invention,
and the state of the art. No application for a ZZ Patent shall be
made without SurModics's prior written permission. If SurModics can
fairly show that it had substantial knowledge of the invention of any
ZZ Patent application before receiving from ZZ that patent
application, SurModics shall promptly notify ZZ and the parties shall
cooperate in comparing records of conception of that invention to
determine in good faith which party was the earliest to conceive the
invention.
iii. SurModics shall have and is hereby granted a noncancelable,
nonexclusive, worldwide license, with the right to sublicense, to
make, have made for it, use and sell products and processes covered by
each ZZ Patent to the extent that such manufacture, use or sale also
is covered by any claim of any patent that SurModics has the right to
license to others. If ZZ was the earliest to conceive the invention
of that patent, then the license granted to SurModics, and SurModics's
right to sublicense, shall exclude the right to manufacture, use or
sell Medical Products.
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iv. In return for such license, SurModics will pay ZZ a total of
five percent (5%) of the royalties (regardless of the number of ZZ
Patents that are licensed to SurModics or the number of licenses
involved) that SurModics receives from its sublicensees based on sales
by its sublicensees of products that but for such sublicenses would
infringe any Valid Claim of ZZ Patents. Notwithstanding the above, if
SurModics was the earliest to conceive the invention of any ZZ Patent,
then the license granted to SurModics shall be considered paid-up.
c. Each party shall own an undivided one-half interest in inventions made
jointly by one or more employees (or others who are required to assign
inventions to a party) of each party ("Joint Inventions"). With respect to
Joint Inventions, the parties agree that mutually acceptable patent counsel
shall be retained to render an opinion as to the patentability thereof and
to prepare, file, and prosecute such patent applications as may reasonably
be required to provide protection for such inventions. Jointly owned
patents resulting therefrom ("Jointly Owned Patents") shall be considered
Patent Rights in determining payment of royalties to SurModics under
Paragraphs 4. With respect to Jointly Owned Patents:
i. SurModics agrees it will not grant licenses for the
manufacture, use or sale of Medical Products as specified in
Xxxxxxxxxx X0, X0, and so forth, as of the filing date of such Jointly
Owned Patents, without the advance written consent of ZZ.
ii. ZZ agrees it will not grant any licenses other than for the
manufacture, use or sale of Medical Products as specified in
Xxxxxxxxxxx X0, X0, and so forth, as of the filing date of such
Jointly Owned Patents, without the advance written consent of
SurModics.
iii. The limitations of Paragraphs 8(c)(i) and 8(c)(ii) apply only
to Jointly Owned Patents and not to any other patents owned by either
party.
iv. Should either party choose to bring suit for infringement by a
third party of any Jointly Owned Patent, the party bringing suit shall
have the right to join the other party as a party to the suit to the
extent required by law.
d. The parties agree to execute and exchange upon request such documents
as may be necessary or desirable to carry out the provisions of Paragraphs
8(b) and 8(c).
9. ALLOCATION OF ROYALTIES
After five (5) years from the Licensed Product Effective Date, the Earned
Royalty rate with respect to any Licensed Product shall be prospectively
reduced to seventy percent (70%) of the Earned Royalty rate set out in
Paragraph 4(a) and the respective Xxxxxxxxxxx X0, X0, and so forth, to the
extent that and during the term that the
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manufacture, use or sale of that specific Licensed Product (or a surface
treatment process or a reagent used in such process) is not covered by any
Valid Claim of Patent Rights. The provisions of this Paragraph 9 shall not
apply to payment of Minimum Royalties as provided in Paragraph 4(b) and the
respective Xxxxxxxxxxx X0, X0, and so forth.
10. TERMINATION
a. For each license granted herein:
i. ZZ shall have the right to terminate the respective Xxxxxxxxxx
X0, X0, and so forth, under which such license was granted, but only
in its entirety, at any time upon ninety (90) days advance written
notice. Upon termination of such license, ZZ shall have no further
rights under Patent Rights or Know-how. However, ZZ shall be allowed
to sell any inventory of Licensed Products existing at the time of
termination for a period of six (6) months thereafter (thereafter
destroying any remaining inventory), provided ZZ accounts for such
sales of inventory and pays SurModics the appropriate Earned Royalty
for such sales as set out in Paragraph 4(a) of this Agreement.
ii. SurModics may terminate this Agreement in whole or with respect
to any license granted herein upon thirty (30) days written notice for
any material breach or default by ZZ, including without limitation,
failure to comply with the confidentiality provisions of Paragraph 13,
failure to make reports and payments when due, failure to pay Minimum
Royalties, and withholding or notice of intent to withhold any
royalties provided for in this Agreement. Said termination under this
Paragraph 10(a)(ii) shall become effective at the end of the thirty
(30) day period unless during that period ZZ shall first cure such
breach or default.
iii. Upon termination of any license under any of the provisions of
this Paragraph 10, but subject to the provisions of Paragraph
10(a)(i), referring to the sale of inventory, ZZ shall cease making,
having made for it, using and selling the Licensed Products of such
license that are produced through the use of SurModics's Know-how.
SurModics shall have the right to seek equitable relief to enforce the
provisions of this Paragraph 10(a)(iii).
b. Either party may terminate this Agreement if the other party hereto is
involved in insolvency, dissolution, bankruptcy or receivership proceedings
affecting the operation of its business.
c. Notwithstanding the provisions of Paragraph 20, failure of ZZ to bring
to market any Licensed Product by the date set out for that Licensed
Product in the respective Xxxxxxxxxx X0, X0, and so forth, to this
Agreement shall permit SurModics to terminate the license for that Licensed
Product upon thirty (30) days written notice at any time prior to the date
ZZ begins bona-fide commercial sales of that Licensed Product.
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d. In the event that all licenses granted herein are terminated,
SurModics shall have the right to terminate this Agreement in its entirety
upon written notice.
11. CONTINUING OBLIGATIONS SUBSEQUENT TO TERMINATION
a. Upon any termination of this Agreement or any of the licenses granted
herein, the following rights and obligations shall continue to the degree
necessary to permit their complete fulfillment or discharge:
i. SurModics's right to receive and ZZ's obligation to pay
royalties to the extent owed; and
ii. ZZ's obligation to maintain records and SurModics's right to
audit under Paragraph 5, with respect to sales made and to be made
under Paragraph 10(a)(i); and
iii. Any cause of action or claim of either party, accrued or to
accrue, because of any breach or default by the other party; and
iv. ZZ's obligation to maintain confidentiality under Paragraph 13;
and
v. ZZ's obligation to forebear from use of SurModics's Know-how as
provided in Paragraph 10(a)(iii); and
vi. The parties' obligations under Paragraphs 8(b) and 8(c) with
respect to filing patent applications and payment of royalties on
issued patents.
b. Within thirty (30) days of the date of termination of this Agreement,
ZZ shall return to SurModics all copies of documents and other materials
containing or disclosing any of SurModics's Confidential Information.
12. REPRESENTATIONS AND WARRANTIES
a. Each party warrants to the other that it has not accepted and will not
accept commitments or restrictions with respect to its rights or
obligations under this Agreement which will materially affect the value of
the rights granted by SurModics nor the obligations undertaken by ZZ.
b. Each party has the full and unrestricted right to enter into this
Agreement.
c. Nothing in this Agreement shall be construed as:
i. A warranty or representation by SurModics as to the validity or
scope of any Patent Rights; or
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ii. A warranty or representation that anything made, used, sold, or
otherwise disposed of, or any process practiced, under any License
granted in this Agreement is or will be free from infringement of
patents of third persons; or
iii. A requirement that SurModics file any patent application,
secure any patent, or maintain any patent in force; or
iv. An obligation to bring or prosecute actions or suits against
third parties for infringement of any patent; or
v. An obligation to furnish any manufacturing or technical
information not encompassed within Know-how; or
vi. Conferring any right on either party to use in advertising,
publicity, or otherwise any trademark or trade name of the other; or
vii. Granting by implication, estoppel, or otherwise any licenses or
rights under patents or other proprietary information of SurModics
other than those included within Patent Rights and Know-how.
d. With respect to photo-reactive reagents supplied at any time by
SurModics, SurModics disclaims all warranties, express or implied,
including but not limited to warranties of merchantability, noninfringement
and fitness for a particular purpose. Notwithstanding anything to the
contrary, SurModics shall not be liable for incidental, consequential,
special, extraordinary or punitive damages of any description, whether for
damage to reputation or goodwill, lost profits, claims of third parties or
otherwise, whether such asserted damage purports to be based on warranty or
guarantee, indemnity or other contract, contribution, negligence or other
tort, or otherwise.
e. SurModics does not make any representations, extend any warranties of
any kind, either express or implied, or assume any responsibilities
whatever with respect to use, sale, or other disposition by ZZ or its
vendees or transferees of Licensed Products incorporating or made by use of
the Patent Rights and Know-how licensed under this Agreement.
f. ZZ represents that it will take action to reasonably bring to market
and to sell Licensed Product throughout ZZ's world-wide marketing territory
during the term of this Agreement. Failure to adequately promote and
market Licensed Product may, at SurModics's option, be interpreted as a
material breach or default of this Agreement. SurModics expects ZZ to
demonstrate appropriate product development activities, participate in
clinical trials, submit appropriate regulatory or governmental filings for
appropriate marketing clearances, integrate the Licensed Product into ZZ's
manufacturing operations, educate appropriate sales and marketing staff,
and introduce and actively market the Licensed Product upon completion of
product development and obtaining appropriate regulatory approvals.
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13. CONFIDENTIALITY
a. Each party agrees to retain in confidence all Know-how and other
information received from the other, including without limitation,
information required to be maintained in confidence under prototype
development or manufacturing scale-up or postscale-up relationships between
the parties, for a period of fifteen (15) years from the date of disclosure
or five (5) years from the date of termination of this Agreement, whichever
is longer. Each party agrees not to disclose any of such Know-how or other
information to third parties nor to use the same except in accordance with
this Agreement. Each party's obligation of nondisclosure and non-use shall
not apply to information which:
i. at the time of its disclosure to the receiving party is
available to the public;
ii. after disclosure becomes available to the public through no
fault of the receiving party;
iii. the receiving party can show was in its possession at the time
of disclosure to it by the other;
iv. the receiving party can show was received by it from a third
party without breach of a confidential obligation; or
v. is required to be disclosed by any governmental agency.
Even after any of such information becomes available to the public, each
party shall not disclose without the other's prior written approval the
fact that such information was furnished by or originated with the other.
b. For the purpose of this entire Paragraph 13, Know-how or other
information which is specific shall not be deemed to be within any of the
specified exceptions merely because it is embraced by more general
information in such exception. In addition, any combination of features
shall not be deemed to be within any of the specified exceptions merely
because individual features are in such exception, but only if the
combination itself and its principle of operation are in such exception.
c. Notwithstanding the above, ZZ specifically agrees that it will not
disclose to any Affiliates or other third party any of SurModics's Know-how
relating to the manufacture of SurModics's chemical reagents, the precise
chemical composition of such reagents, how such reagents are tested, how
they are quality controlled, and any other specific information concerning
the production of such reagents.
d. The provisions of this entire Paragraph 13 shall survive termination
of this Agreement for any reason.
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e. Nothing herein shall in any way affect the obligations of the parties
under any prior secrecy or confidential disclosure agreements, including
the Prior Disclosure Agreement, which obligations shall continue in
accordance with the terms of each such agreement to the extent not
inconsistent with the present Agreement.
14. ASSIGNMENT
This Agreement shall be binding upon and inure to the benefit of the
parties hereto and their successors to the entire assets and business of
the respective parties hereto. Either party may assign its rights and
obligations under this Agreement to a financially responsible third party,
but only in connection with a complete transfer to the third party of the
business to which this Agreement pertains. The assigning party will so
inform the other party to this Agreement without delay of any assignment
made in accordance with the conditions of this Agreement. This Agreement
shall not otherwise be assignable by either party without the prior written
consent of the other party. Any and all assignments of this Agreement or
any interest therein not made in accordance with this paragraph shall be
void.
15. GOVERNMENT APPROVAL
ZZ shall have the sole responsibility, at ZZ's sole expense, for obtaining
any government approvals that may be required for the investigation or
marketing of Licensed Products.
16. PRODUCT LIABILITY
ZZ will defend and indemnify SurModics against all losses, liabilities,
lawsuits, claims, expenses (including attorney's fees), costs, and
judgments incurred through personal injury, property damage, or other
claims of third parties, arising from the design, manufacture, use, or sale
of Licensed Products.
17. NO WAIVER
Any waiver of any term or condition of this Agreement by either party shall
not operate as a waiver of any other or continued breach of such term or
condition, or any other term or condition, nor shall any failure to enforce
a provision hereof operate as a waiver of such provision or of any other
provision hereof.
18. NOTICES
All communications or other notices required or permitted under this
Agreement shall be in writing and shall be deemed to be given when
personally delivered, or when mailed by registered or certified mail,
postage prepaid, and addressed as follows:
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If to SurModics:
License Administration
SurModics, Inc.
0000 Xxxx 00xx Xxxxxx
Xxxx Xxxxxxx, XX 00000
If to ZZ:
X
X
X
Either party shall have the right to change the person and/or address to
which notices hereunder shall be given, by notice to the other party in the
manner set out above.
19. CAPTIONS
The captions and headings of this Agreement are for convenience only and
shall in no way limit or otherwise affect any of the terms or provisions
contained herein. This Agreement shall be construed without regard to any
presumption or other rule requiring construction hereof against the party
drafting this Agreement.
20. 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 reasonable control such as acts of God, regulation or other
acts of civil or military authority, required approval(s) of government
bodies, fires, strikes, floods, epidemics, quarantine restrictions, riot,
delays in transportation and inabilities 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. The cumulative effect of all such delays under this
Paragraph 20 shall not exceed one (1) year.
21. NO AGENCY
Nothing in this Agreement authorizes either SurModics or ZZ to act as agent
for the other as to any matter, or to make any representations to any third
party indicating or implying the existence of any such agency relationship.
SurModics and ZZ shall each refrain from any such representations. The
relationship between SurModics and ZZ is that of independent contractors.
22. SEVERABILITY
Should any provision of this Agreement, or the application thereof, to any
extent be held invalid or unenforceable, the remainder of this Agreement
and the application thereof
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other than such invalid or unenforceable provisions shall not be affected
thereby and shall continue valid and enforceable to the fullest extent
permitted by law or equity.
23. GOVERNING LAW
For all purposes under this Agreement, the parties agree and admit that
jurisdiction and venue are proper in the Xxxxxxx Xxxxxxxx Xxxxx, Xxxxxxxx
of Minnesota. This Agreement shall for all purposes be governed and
interpreted in accordance with the laws of the State of Minnesota, except
for its conflict of laws provisions.
24. ARBITRATION
a. In the event of any dispute concerning this Agreement, including its
interpretation, performance, breach or termination, the procedures of this
Paragraph 24 shall apply; provided, however, that either party shall have
the unrestricted right at any time to seek a court injunction prohibiting
the other party from making unauthorized disclosure or use of Confidential
Information as provided for in Paragraph 13 or unauthorized use of
SurModics's Knowhow as provided for in Paragraph 10(a)(iii).
b. Both parties will use good faith and reasonable efforts to resolve any
dispute informally and as soon as practical. If any such dispute is not
resolved informally within a reasonable period, then the Chief Executive
Officers of the parties will meet at a mutually agreeable time and place to
attempt to resolve the dispute.
c. If the parties are unable to resolve a dispute as provided immediately
above, either party may submit the dispute for resolution by mandatory,
binding arbitration in the city of Minneapolis, MN (or such other place as
the parties may mutually agree) under the auspices of the American
Arbitration Association under it's Commercial Arbitration Rules. Each
party shall select one independent, qualified arbitrator and the two
arbitrators so selected shall then select a third arbitrator in accordance
with the Commercial Rules. Each party reserves the right to object to any
individual arbitrator (no matter by whom chosen) who has been employed by
or affiliated with a competing organization.
d. The arbitrators, who shall act by majority vote, shall be empowered to
decree any and all relief of an equitable nature, including but not limited
to temporary restraining orders, temporary injunctions, and/or permanent
injunctions, and shall also be able to award damages, with or without an
accounting of costs. Judgement on the award rendered by the arbitrator(s)
may be entered into any court having jurisdiction thereof. Each party
shall bear its own costs and divide other reasonable arbitrator costs
equally.
25. ENTIRE AGREEMENT
This Agreement, together with the Prior Disclosure Agreement and all
addenda, attachments, and writings required or contemplated hereby,
constitutes the entire agreement between the parties with respect to the
Licenses granted herein, and no party
14
shall be liable or bound to the other in any manner by any warranties,
representations or guarantees except as specifically set forth herein.
This Agreement shall not be altered or otherwise amended except by an
instrument in writing signed by both parties.
IN WITNESS WHEREOF, the parties have executed this Agreement on the date last
written below.
SurModics, Inc. ZZ
By: By:
----------------------------- ----------------------------------
Its: Its:
----------------------------- ----------------------------------
Date: Date:
----------------------------- ----------------------------------
Secondary approval: Secondary approval:
---------------- ---------------------
15
ATTACHMENT A
SURMODICS, INC. U.S. PATENTS
1. METHOD OF IMPROVING THE BIOCOMPATIBILITY OF SOLID SURFACES
U.S. Patent No. 4,973,493 issued 11/27/90
2. BIOCOMPATIBLE COATINGS FOR SOLID SURFACES
U.S. Patent No. 4,979,959 issued 12/25/90
3. BIOCOMPATIBLE DEVICE WITH COVALENTLY BONDED BIOCOMPATIBLE AGENT
U.S. Patent No. 5,263,992 issued 11/23/93
4. BIOMOLECULE ATTACHMENT TO HYDROPHOBIC SURFACES
U.S. Patent No. 5,217,492 issued 6/8/93
5. METHOD OF BIOMOLECULE ATTACHMENT TO HYDROPHOBIC SURFACES
U.S. Patent No. 5,258,041 issued 11/2/93
6. PREPARATION OF POLYMERIC SURFACES VIA COVALENTLY ATTACHING POLYMERS
U.S. Patent No. 5,002,582 issued 3/26/91
7. RESTRAINED MULTIFUNCTIONAL REAGENT FOR SURFACE MODIFICATION
U.S. Patent No. 5,414,075 issued 5/9/95
8. PREPARATION OF POLYMERIC SURFACES (Divisional)
Filed 5/29/92, allowed 11/1/95
SURMODICS, INC. U.S. PATENT APPLICATIONS
1. IMMOBILIZATION OF CHEMICAL SPECIES IN CROSSLINKED MATRICES
Filed 2/13/92
2. VIRUS INACTIVATING COATINGS
Filed 6/7/95
3. METHOD AND IMPLANTABLE ARTICLE FOR PROMOTING ENDOTHELIALIZATION
Filed 5/26/95
4. WATER SOLUBLE CROSSLINKING AGENTS
Filed 11/3/95
16
SURMODICS, INC. FOREIGN PATENTS
1. IMPROVEMENT OF THE BIOCOMPATIBILITY OF SOLID SURFACES
Canadian Patent No. 1305068, issued 7/14/92
Australian Patent No. 615637, issued 10/16/87
EPO Patent No. 0326579, issued 1/11/95
2. BIOMOLECULE ATTACHED TO A SOLID SURFACE BY MEANS OF A SPACER AND METHODS OF
ATTACHING BIOMOLECULES TO SURFACES
Canadian Patent No. 1335721, issued 5/30/95
SURMODICS, INC. FOREIGN PATENT APPLICATIONS
1. BIOCOMPATIBLE COATINGS
Filed in Canada, Europe, Japan, Denmark, and Norway
2. PREPARATION OF POLYMERIC SURFACES
Filed in Canada, Europe, Japan, Denmark, and Norway
3. IMMOBILIZATION OF CHEMICAL SPECIES IN CROSSLFNKED MATRICES
Filed in Canada, Europe, Australia, Japan
4. IMPROVEMENT OF THE BIOCOMPATIBILITY OF SOLID SURFACES
Filed in Japan
5. RESTRAINED MULTIFUNCTIONAL REAGENTS FOR SURFACE MODIFICATION
Filed in Canada, Europe, Australia and Japan
17
ATTACHMENT B1
Title of Attachment
1. MEDICAL PRODUCTS
"Medical Products" means X.
2. LICENSED PRODUCT
"Licensed Products" means Medical Products which are surface-treated with
_______.
3. GRANT OF LICENSE The license granted under this Attachment is
non-exclusive.
4. LICENSE FEES
ZZ will pay to SurModics a one-time, nonrefundable License Fee of $________
upon execution of this Agreement.
5. ROYALTY PAYMENTS
ZZ shall pay to SurModics a royalty, for the Patent Rights and Know-how
license granted herein, which will be the greater of Paragraphs a) or b) as
follows:
a. Earned Royalties on Net Sales ($U.S.) of Licensed Products sold in
each calendar year of:
----------------------------------------------------------------
Net Sales In Each
Calendar Year Earned Royalty Rate
----------------------------------------------------------------
On the first $10,000,000 ? %
----------------------------------------------------------------
On the next $10,000,000 ? %
----------------------------------------------------------------
On Net Sales over $20,000,000 ? %
----------------------------------------------------------------
b. Quarterly Minimum Royalties for all Attachment B1 Products as follows:
----------------------------------------------------------------
For Each Quarter Calendar
Year Beginning Quarterly Minimum Royalty
----------------------------------------------------------------
January 1, 1998 $ ?
----------------------------------------------------------------
January 1, 1999 $ ?
----------------------------------------------------------------
January 1, 2000 $ ?
----------------------------------------------------------------
For the quarter calendar year commencing with January 1, XXXX, and each
year thereafter, the quarter calendar year Minimum Royalty shall be the
prior year's quarterly Minimum Royalty adjusted by a percentage equal to
the percentage change in the "Consumer Price Index For All Urban Consumers"
for the prior calendar year as reported by the U.S. Department of Labor.
6. PERFORMANCE
18
Notwithstanding the provisions of Paragraph 20 of the Master License
Agreement:
a. Failure of ZZ to begin bona fide commercial sales by January 1, XXXX
of a Licensed Product as defined in this Attachment, shall permit SurModics
to terminate the license for that Licensed Product upon thirty (30) days
written notice at any time prior to the date ZZ begins bona-fide commercial
sales of that Licensed Product.
b. If, after January 1, XXXX, there are four (4) consecutive quarters in
which ZZ fails to generate Earned Royalties under Paragraph 5(a) of this
Attachment then upon thirty (30) days written notice given to ZZ, the
license granted herein shall, at SurModics's option, be terminated.
The Licensed Product Effective Date of this Attachment shall be the date last
written below.
SurModics, Inc. ZZ
By: By:
----------------------------- ----------------------------------
Its: Its:
----------------------------- ----------------------------------
Date: Date:
----------------------------- ----------------------------------
Secondary approval: Secondary approval:
---------------- ---------------------
19
