EXHIBIT 10.10
Certain portions of this exhibit have been omitted based upon a request for
confidential treatment. The omitted portions of this exhibit have been
separately filed with the Securities and Exchange Commission.
LICENSE, MANUFACTURING AND DISTRIBUTION AGREEMENT
-------------------------------------------------
This agreement is made between:
▇▇. ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇ and ▇▇. ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇, address ▇▇▇▇▇▇▇▇▇▇
▇▇▇, ▇▇-▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇ and ▇▇. ▇▇▇▇▇ Fredskilde, address ▇▇▇▇▇▇ ▇▇, ▇▇-▇▇▇▇
▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ hereinafter jointly referred to as "Danish Inventors" and
▇▇. ▇▇▇▇▇▇ ▇▇▇▇▇▇▇, address ▇▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇ ▇, ▇▇-▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇, Mr.
Markku Tamminmaki, address ▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇, ▇▇-▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ and ▇▇▇.
▇▇▇▇▇ ▇▇▇▇▇▇▇▇, address Aaltosenkatu ▇▇-▇▇ ▇ ▇▇, ▇▇-▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇
hereinafter jointly referred to as "Finnish Inventors"
and
Biocon Oy (including its subsidiaries, daughter companies or
corresponding), whose registered office is at ▇▇▇▇▇▇▇▇▇▇▇▇▇▇ ▇ ▇, ▇▇-▇▇▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇ hereinafter referred to as "Biocon".
All the above inventors and Biocon are hereinafter jointly referred to
as "parties".
1. BACKGROUND
The Finnish Inventors, ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇ and
Biocon Oy are developing in cooperation a [CONFIDENTIAL PORTION OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION]
The invention is based on [CONFIDENTIAL PORTION OMITTED AND FILED
SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION]. Biocon Oy is the owner
of patents and know-how relating to said products.
The cooperation has proceeded on such a level that the patent
application shall be filed for the device in near future.
The Parties are developing together [CONFIDENTIAL PORTION OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION]
The parties to this agreement define in this agreement the rights and
duties of parties to INSTRUMENT.
2. DEFINITIONS
In this agreement:
a) [CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION]
b) [CONFIDNETIAL PORTION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION]
c) "Exclusive Territory'' shall mean the world.
d) "Confidential information" shall mean all scientific, commercial
or technical data and information including but not limited to information
relating to market reports and surveys, customer lists, trade secrets,
documents, correspondence, methods, skills, practices, training, procedures,
research, machinery, equipment, instruments, expertices, discoveries,
inventions, improvements, data drawings, designs, calculations, specifications,
techniques and processes regarding the INSTRUMENT.
3. OBJECT OF THE AGREEMENT
The parties hereby grant to Biocon the exclusive right to manufacture
or to have manufactured the INSTRUMENT in the Exclusive Territory. The parties
hereby also grant to Biocon the exclusive right to use and sell the INSTRUMENT
in the Exclusive Territory.
The parties undertake to conduct research and development work and to
use their best efforts in order to develop further and improve the
characteristics of the instrument.
The parties shall provide Biocon with such information, specifications
and data with respect to the INSTRUMENT as shall be necessary to improve
Biocon's potentiality to carry out the targets in this agreement.
The parties agree to keep Biocon continuously informed of all research
and development results in regard to the INSTRUMENT during the development
process.
The rights granted to Biocon include any additional modifications and
improvements of the INSTRUMENT.
-2-
Biocon shall inform the parties about any changes and improvements of
the DEVICE and INSTRUMENT.
After the agreement of Biocon the parties can participate in
international congresses and present research results [CONFIDENTIAL PORTION
OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION]
4. SUBLICENSES
Biocon will negotiate with a manufacturing company (the Company A) to
grant for it the exclusive right to manufacture INSTRUMENTS for Biocon. Biocon
is also entitled to grant sublicenses at its sole discretion to use and to sell
INSTRUMENTS within the Exclusive Territory. Such sublicensing shall not relieve
Biocon of any obligation under this Agreement. Biocon must include in possible
license agreements the paragraph that the Danish and Finnish Inventors are
entitled to the royalties of all marketed INSTRUMENTS according to this
Agreement regardless which company manufactures or markets the products. Biocon
is obliged to inform the parties of sublicenses.
5. PATENTS
Biocon is entitled at its own expense and at its sole discretion to
take any and all necessary measures in order to file for patents for the
INSTRUMENT in the Exclusive Territory. In the patent applications the Danish
and Finnish Inventors shall be reported as the inventor and Biocon as the
applicant.
Biocon is also entitled to register this agreement with the proper
patent and other authorities as such time as the registration is possible in
accordance with the legislation of the country in question. The Danish and
Finnish Inventors undertake to provide Biocon with all necessary authorization
and documents for these purposes. The Danish and Finnish Inventors are entitled
to receive a copy of all patent applications filed by Biocon.
-3-
6. COMMISSION
6.1. Commission to be paid by Biocon
In consideration of the licenses granted by the parties to Biocon in
accordance with the terms and conditions in this agreement, Biocon agrees to pay
the Danish and Finnish Inventors a royalty net of any withholding company taxes
as follows:
The amount of the royalty shall be [CONFIDENTIAL PORTION OMITTED AND
FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] of the INSTRUMENTS
sold by Biocon whilst the patent applications are still pending and not a single
patent has been granted. This royalty shall be divided within the teams as
follows:
- [CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION]
- [CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION]
Provided that the patents in accordance with the above terms shall be
granted Biocon agrees retroactively to pay the Danish and Finnish Inventors an
additional royalty of [CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH
THE SECURITIES AND EXCHANGE COMMISSION] of the INSTRUMENTS sold by Biocon for
the period from signing this agreement until the granting of the said patent.
This royalty shall be divided within the team on such a manner that the Danish
Inventors shall receive of the total royalty of [CONFIDENTIAL PORTION OMITTED
AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE COMMISSION] and the
Finnish Inventors [CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION].
The term "net selling price" means the gross amount billed for
Products less trade or quantity discounts, transportation charges or allowances,
credits or allowances, any tax, excise or other governmental charge upon the
production, sale, transportation, delivery of use of said Products.
6.2. Commission to be paid by Company A.
Biocon is obliged to include in agreement with Company A the paragraph
that the Company A shall pay to the Danish and Finnish [CONFIDENTIAL PORTION
OMITTED AND FILED SEPARATELY]
-4-
WITH THE SECURITIES AND EXCHANGE COMMISSION]. These royalties are defined in the
similar way as the royalties to be paid by Biocon defined in paragraph 6.1. The
royalties to be paid by Company A will be divided by Danish and Finnish
Inventors in the similar way as the royalties to be paid by Biocon.
6.3. Minimum royalty
Biocon and Company A are jointly obliged to pay at equal basis to the
Danish and Finnish Inventors the following minimum royalty. Irrespective of
sales actually made by Biocon and Company A, the minimum royalties payable to
the Danish and Finnish Inventors shall not be less than
- [CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION] in the first 12 month after initial
presentation by any research group of results in a congress or paper which
results show that Instrument is recommendable for surgical use.
- [CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION] US Dollars in the next 12 month
- [CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION] US Dollars in the next 12 month and
[CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION] in each succeeding 12 months that this agreement subsists.
The right to such a part of a minimum royalty which has not accrued as
aforesaid shall accrue at the end of each 12 months.
6.4. Terms of paying
The royalties shall be paid annually no later than 90 days after the
end of such period as evidenced by statements provided by Biocon and Company A
for the previous period. Delay in payment results in payment of interest of
[CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION] delay.
7. ACCOUNTS AND RECORDS
-5-
Biocon will keep at its principal place of business full and accurate
accounts and records of all relevant invoices and other documents connected with
the manufacture and sale of the INSTRUMENT including all such particulars as
will enable the royalty to be determined and will, at reasonable times permit a
chartered accountant nominated by the Danish or Finnish Inventors to inspect
such documents in the possession or control of Biocon which relate in a relevant
information relating to such documents and such other information as may be
necessary or appropriate to enable the amount of royalties to be calculated.
8. TRADEMARK
Biocon is entitled to use any trademark of its choice for the
INSTRUMENT upon informing the parties.
9. UNFAIR COMPETITION AND INFRINGEMENT OF RIGHTS
The parties shall inform one another of all acts of unfair competition
and all infringements of patents or similar rights which have come to their
notice. Biocon agrees to bear all expenses of any possible defensive action
against such acts and infringements. The Danish and Finnish Investors agree to
give Biocon all information, assistance and authority to enable Biocon to ensure
the necessary legal protection.
All damage collected or any profits from any action referred to above
shall be for the sole benefit of Biocon.
10. SECRECY AND COMPETITION CLAUSE
The parties shall undertake to treat as strictly confidential and not
to divulge to any third party any of the Confidential Information disclosed by
the other party and not to make use of any such Confidential Information than in
co-operation with the other parties.
Once this agreement has been signed the Danish and Finnish Inventors
shall refrain from any competitive action against Biocon whether direct or
indirect as regards the INSTRUMENT or competitive products within the Exclusive
Territory.
Biocon agrees during the term of this agreement to refrain from
manufacturing or selling or distributing directly or indirectly any products
competing with the INSTRUMENT.
-6-
11. CHANGES IN THE MARKET SITUATION
In case the INSTRUMENT despite of the patent granted would face
competition and provided further, that this competition would have essential
effects on the market situation the parties shall conduct negotiations to agree
on a reduced minimum royalty, which, however shall not be reduced below
[CONFIDENTIAL PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND
EXCHANGE COMMISSION] of the INSTRUMENTS sold by Company A and [CONFIDENTIAL
PORTION OMITTED AND FILED SEPARATELY WITH THE SECURITIES AND EXCHANGE
COMMISSION] of the INSTRUMENTS sold by Biocon.
On the other hand, if the sale of the INSTRUMENT becomes a great
success the parties shall conduct negotiations to agree on an increased royalty.
12. TERMS AND TERMINATION
This agreement comes into force once it has been duly signed by the
parties.
Provided that a patent protecting the exploitation of the INSTRUMENT
shall be granted this agreement shall be valid in different countries until the
corresponding patent rights have been expired.
Provided that the patent applications for the INSTRUMENT shall be
rejected, or if only such patents are granted which do not actually protect the
industrial exploitation of the INSTRUMENT, this agreement shall be valid for an
initial period of twelve (12) years from the date hereof.
This agreement may be terminated forthwith for cause by any party if
one of the parties fails to fulfill any of its obligations under this agreement
and such default is not remedied within 30 days of the date on which a written
notice hereof has been dispatched, the right to ask for damages being reserved.
Notice of termination shall be given by registered letter.
The Danish and Finnish Investors shall have the option to terminate
this agreement if Biocon is adjudged bankrupt or placed in the hand of receiver
or otherwise enters
-7-
into any scheme for composition with creditors or makes any assignment of all or
substantially all its assets for the benefit of creditors.
In case of the above termination of this agreement all patent rights
and know-how belongs to the Danish and Finnish Inventors.
13. GOVERNING LAW AND ARBITRATION
This agreement shall be governed by the laws of Sweden.
Any dispute arising out of or in connection with this agreement shall
finally be settled in Stockholm without recourse to any court, in accordance
with the rules of conciliation and arbitration of Central Chamber of Commerce of
Sweden by one or more arbitrators designated in conformity with the rules of the
above Chamber.
14. NOVELTY
The Danish and Finnish Inventors do not warrant the novelty of
INSTRUMENT.
15. QUALITY OF INSTRUMENT
The Danish and Finnish Inventors shall be entitled to inspect whether
products manufactured under the license are of the required quality.
16. MAINTENANCE IN FORCE OF ANY PATENTS UNDER THIS AGREEMENT
Biocon shall keep in force any patents granted for the INSTRUMENT.
However, if the parties find in agreement that the patents have lost their
significance, e.g. because of several competitive products with equal quality,
Biocon can if it desires expire the patents.
-8-
This agreement on 9 numbered pages (1-9), has been executed in seven
original counterparts, one for Biocon, three for the Danish Inventors and three
for the Finnish Inventors.
September 28, 1989
/s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇ /s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇-▇▇▇▇▇
------------------ ------------------------
(▇▇▇▇▇▇ ▇▇▇▇▇▇▇) (▇▇▇▇▇ ▇▇▇▇▇▇▇▇-▇▇▇▇▇)
/s/ Markku Tamminmaki /s/ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇
--------------------- -------------------
(Markku Tamminmaki) (▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇)
/s/ ▇▇▇▇▇ ▇▇▇▇▇▇▇▇ /s/ Klaus Redskilde
------------------ -------------------
(▇▇▇▇▇ ▇▇▇▇▇▇▇▇) (Klaus Redskilde)
/s/ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇
------------------
BIOCON OY
-9-