Exhibit 4.5
ART ADVANCED RESEARCH TECHNOLOGIES INC.
- and -
GENERAL ELECTRIC COMPANY
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SOFTSCAN COMMERCIAL ALLIANCE AGREEMENT
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October ______, 2002
SOFTSCAN commercial alliance AGREEMENT
THIS AGREEMENT is made as of October _______, 2002.
BETWEEN:
ART ADVANCED RESEARCH TECHNOLOGIES INC., a Canadian corporation
having a principal place of business at 0000 Xxxxxx-Xxxxx Xxxx.,
Xxxxx-Xxxxxxx, Xxxxxx, X0X 0X0, Xxxxxx ("ART")
- and -
GENERAL ELECTRIC COMPANY ("GE"), a New York corporation (acting
primarily through its GE Medical Systems ("GEMS") division) having
an office and place of business at 0000 Xxxxx Xxxxxxxxx Xxxxxxxxx,
Xxxxxxxx XX, 00000 (both collectively referred to herein as "GE")
RECITALS:
A. ART carries on the business of developing and producing optical imaging
products and optical diagnostic and screening technologies, including the
ART SoftScan Product;
B. GE carries on the business of, among other things, developing, marketing,
manufacturing and selling medical technology and products;
C. The Parties both desire to enter into this Agreement to govern their
relationship with respect to the development, marketing, manufacturing,
sales, distribution and customer service of the ART SoftScan Product;
NOW THEREFORE in consideration of the premises and of the mutual covenants and
conditions hereinafter set forth, and for other good and valuable consideration,
the receipt and sufficiency of which are hereby acknowledged, the Parties,
intending to be legally bound, hereby covenant and agree as contained in this
Agreement (the receipt and adequacy of which consideration with respect to each
of the Parties is hereby mutually admitted), as follows:
ARTICLE 1
DEFINITIONS AND PRINCIPLES OF INTERPRETATION
1.1 Recitals Correct
The parties hereby acknowledge and declare that the foregoing recitals are true
and correct in substance and in fact.
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1.2 Definitions
Wherever used in this Agreement, unless there is something in the subject matter
or context inconsistent therewith, and unless otherwise defined herein, the
following terms shall have the following meanings:
"Affiliate(s)" means any corporation or other entity or acquired business
which controls, is controlled by or is under common control with a Party
to this Agreement. A corporation or other entity, as applicable, shall be
regarded as in control of another corporation or other entity if it owns
or directly or indirectly controls at least fifty percent (50%) of the
voting stock of the other corporation or ownership of the maximum amount
permitted under local laws or regulations in those countries where fifty
percent (50%) ownership by a foreign entity is not permitted (i) in the
absence of the ownership of at least fifty percent (50%) of the voting
stock of a corporation or (ii) in the case of a non-corporate entity, if
it possesses, directly or indirectly, the power to direct or cause the
direction of the management and policies of such corporation or
non-corporate entity, as applicable;
"Agreement" means this agreement entitled "SoftScan Commercial Alliance
Agreement";
"ART" has the meaning given to such term in the Preamble of this
Agreement;
"ART Background Technology" means any and all Technology, excluding ART
SoftScan Technology, which: (i) is related to and useful for the Program
Purpose; (ii) may be provided by ART to GE for the Program Purpose; and
(iii) is owned by or licensed to ART;
"ART SoftScan Intellectual Property Rights" means Intellectual Property
Rights, owned by or licensed to ART relating exclusively to the ART
SoftScan Product, including the ART SoftScan Trade-marks. ART SoftScan
Intellectual Property Rights shall include the ART SoftScan Intellectual
Property Rights licensed to ART under any license agreements
[CONFIDENTIAL] patent rights for its inventions related to time domain
technology, and for use only with time domain based devices, all coupling
and other adjunct devices and consumables including those listed patents
listed in Schedule "A" to [CONFIDENTIAL];
"ART SoftScan Product" means ART's optical imaging device which uses time
domain based technology to detect and diagnose cancerous lesions or any
other biological abnormalities of the human body;
"ART SoftScan Technical Information" means all Technical Information owned
by or licensed to ART relating exclusively to the ART SoftScan Product.
ART SoftScan Technical Information shall include the ART SoftScan
Technical Information licensed to ART under any license agreements
including certain technology [CONFIDENTIAL];
"ART SoftScan Technology" means all ART SoftScan Intellectual Property
Rights and the ART SoftScan Technical Information, but excluding ART
Background Technology;
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"Art SoftScan Trade-marks" means the trade-marks, trade-names, brands,
trade dress, business names, uniform resource locators, domain names, tag
lines, designs, graphics, logos and other commercial symbols and indicia
of origin whether registered or not and any goodwill associated therewith
owned by ART relating exclusively to the ART SoftScan Product;
"Business Day" means any day of the year, other than a Saturday, Sunday or
any day on which the banks are required or authorised to close in
Montreal, Quebec or in the United States of America;
"Change in Control" means: (i) consolidation or merger of a Party with or
into any entity (other than a consolidation or merger with or into an
Affiliate); (ii) the sale, transfer or other disposition of all or
substantially all of a Party's assets in a single transaction or a series
of related transactions (other than to an Affiliate); and (iii) the
acquisition by any entity, or group of entities acting in concert (other
than an entity or group of entities that is an Affiliate or Affiliates),
of beneficial ownership of fifty percent (50%) or more (or such lesser
amount that constitutes control) of the outstanding voting securities or
other voting equity interests of such Party in a single transaction or a
series of related transactions;
"Claims" has the meaning given to such term in Section 14.1 of this
Agreement;
"Clinical Phase" has the meaning given to such term in Section 4.1 of this
Agreement;
"Commercial Viability" and "Commercially Viable" mean that the net revenue
generated for each Party from the sale of the ART SoftScan Product, as
calculated on an annual basis, is sufficient to provide each Party with a
profit margin (after taking into consideration all appropriate associated
costs) favorably comparable to the average profit margin (after taking
into consideration all appropriate associated costs) of the other products
of such Party's product portfolio.
"Confidential Information" means confidential information which may be
modified, amended or improved from time to time, whether in oral, written,
graphic, machine readable or physical form, provided that tangible
confidential information is labelled as "Confidential" or "Proprietary"
and that confidential information disclosed orally is summarized in
monthly Progress Reports. Confidential Information shall not include the
following:
(a) information which is in the public domain at the time of the
Receiving Party's receipt from the Disclosing Party;
(b) information which, after the Receiving Party's (as defined
below) receipt from the Disclosing Party (as defined below)
becomes part of the public domain through no act or fault of
the Receiving Party;
(c) information which the Receiving Party can show was lawfully in
its possession prior to the receipt from the Disclosing Party
evidenced by appropriate documentation;
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(d) information which at the time it was received in good faith by
the Receiving Party from an independent Person was lawfully in
possession of such Person and under no obligation of secrecy;
(e) information which is released from the provisions of this
Agreement by the written authorisation of the Parties;
(f) information that was independently developed by employees or
agents of the Receiving Party without the benefit of
Confidential Information provided by the Disclosing Party;
(g) information that is published incident to patent application
prosecution; and
(h) information which is disclosed by National Broadcasting
Company or any of its Affiliates in the ordinary course of
their business as a broadcaster, provided that such disclosure
does not result from a breach by the Receiving Party of its
obligations under this Agreement.
Notwithstanding the aforementioned definition of Confidential Information,
any and all information received by the ART Program Manager pursuant to
this Agreement is deemed to be Confidential Information, unless otherwise
marked by GE as "Non-Confidential";
"Confidentiality Agreement" means the confidentiality agreement between
the Parties dated [CONFIDENTIAL];
"Disclosing Party" has the meaning given to such term in Section 11.2 of
this Agreement;
"Dispute" has the meaning given to such term in Section 5.3 of this
Agreement;
"Effective Date" has the meaning given to such term in Section 3.3 of this
Agreement;
"Escalation Notice" has the meaning given to such term in Section 5.3 of
this Agreement;
"Full Production Phase" has the meaning given to such term in Section 4.1
of this Agreement;
"GE" has the meaning given to such term in the Preamble of this Agreement;
"GE Facility" means GE's production and manufacturing plants wherever
situated;
"GEMS" has the meaning given to such term in the Preamble of this
Agreement;
"GE Trade-marks" means the trade-marks, trade-names, brands, trade dress,
business names, uniform resource locators, domain names, tag lines,
designs, graphics, logos and
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other commercial symbols and indicia of origin whether registered or not
and any goodwill associated therewith owned by GE and its Affiliates;
"GST" means all goods and services taxes, sales taxes levied by the
Federal government of Canada, value added taxes or multi-stage taxes and
all provincial sales taxes integrated with such federal taxes, assessed,
rated or charged upon or payable by either Party or its Affiliates in
respect of this Agreement;
"Insolvency Act" means the Bankruptcy and Insolvency Act (Canada), the
Companies' Creditors Arrangement Act (Canada), the Winding-up and
Restructuring Act (Canada) or any other statute of any relevant
jurisdiction including the United States of America relating to
bankruptcy, insolvency, stay of creditor remedies, moratorium, compromise,
arrangement, extension, adjustment or reorganization of debts or other
liabilities, liquidation, winding-up or dissolution;
"Intellectual Property Rights" means all proprietary legal rights,
including all trade secrets, know-how, copyrights, trade-marks, mask
works, industrial designs, trade-names and patents (including inventor's
certificates) and applications therefor throughout the world, and any
other form of right by which a Party may effectively exclude another Party
from performing any of the acts specified in this definition; provided,
however, in the case of an Intellectual Property Rights under which a
Party is a licensee or is otherwise a permitted user, such rights qualify
hereunder if and only if the Party has the right to grant sublicenses or
rights equivalent thereto to the other Party encompassed by the Program
under this Agreement;
"Master Research and Development Alliance Agreement" has the meaning given
to such term in Section 3.3;
"[CONFIDENTIAL];
"Notice" has the meaning given to such term in Section 16.10 of this
Agreement;
"Party" means either or both of GE or ART whichever is applicable, and
"Parties" means both GE and ART;
"Permanent Member" has the meaning given to such term in Section 5.2 of
this Agreement;
"Phase" means each of the Clinical, Pre-Production and Full Production
Phases as each is set out in further detail in this Agreement, and
"Phases" shall mean all of them;
"Person" means any individual, legal personal representative, corporation,
company, body corporate, partnership, limited partnership, joint venture,
syndicate, trust, unincorporated organisation, the Crown or any agency or
instrumentality thereof, Regulatory Authority or any other entity
recognised by law, howsoever designated or constituted;
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"Pre-Production Phase" has the meaning given to such term in Section 4.1
of this Agreement;
"Program" means all of the Phases;
"Program Manager" means a person appointed by either of the Parties under
Section 5.1;
"Program Purpose" has the meaning given to such term in Article 2;
"Progress Reports" has the meaning given to such term in Section 5.5 of
this Agreement;
"Receiving Party" has the meaning given to such term in Section 11.2 of
this Agreement;
"Regulatory Approval(s)" means the approvals necessary for the clinical
testing, manufacturing or commercial sale of products to be obtained from
any Regulatory Authority;
"Regulatory Authority" means any applicable governmental, administrative
or regulatory entity, department, authority, commission, tribunal,
official or agency;
"SoftScan Steering Committee" has the meaning given to such term in
Section 5.2 of this Agreement;
"SoftScan System" means each individual ART SoftScan Product produced
under this Agreement;
"Subscription Agreement" has the meaning given to such term in Section
3.3;
"Technology" means Technical Information and Intellectual Property Rights;
"Technical Information" means and includes information, data, conceptions,
know-how and related technical knowledge including: all Confidential
Information; all trade secrets and other proprietary information, public
information, non-proprietary know-how and invention disclosures; any data
and information of a scientific, technical or business nature regardless
of its form; all documented research, developmental, demonstration or
engineering work; all other blueprints, patterns, flow charts, equipment,
parts lists, procedures, formulas, descriptions, related instructions,
manuals, records and procedures; ideas, innovations, discoveries,
inventions, processes, improvements, enhancements, modifications,
technological developments, methods, techniques, systems, designs,
artwork, drawings, plans, specifications, software, documentation, works
of authorship, whether or not susceptible to protection under any
Intellectual Property Rights;
"Term" has the meaning given to such term in Section 3.1;
"Third Party(ies)" means any Person, party or entity other than ART, GE,
and their respective Affiliates, officers and employees. By way of example
and not by limitation,
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Third Parties shall include any and all consultants, professional
advisors, agents, contractors or other third parties engaged by GE or ART
or their respective Affiliates under this Agreement; and
"Transfer" means any event pursuant to which the property, rights or
obligations of the affected Party under this Agreement are or are
attempted to be sold, disposed of, assigned, pledged, hypothecated,
charged, mortgaged, encumbered, sublicensed or transferred and includes
any transfer by operation of law.
1.3 Principles of Interpretation
(i) "Business Day" - If under this Agreement any payment or calculation
is to be made or any other action is to be taken on a day which is
not a Business Day, that payment or calculation is to be made, and
that other action is to be taken, as applicable, on or as of the
next day that is a Business Day.
(ii) "Currency" - In this Agreement, unless otherwise stated herein, all
references to currency shall be references to the lawful currency of
the United States of America.
(iii) "Capitalized Terms" - All capitalized terms defined herein are
equally applicable to both the singular and plural forms of such
terms.
(iv) "Gender and Number; Extending Meanings" - Any reference in this
Agreement to gender shall include all genders, and words importing
the singular number only shall include the plural and vice versa.
(v) "Headings" - The provision of a table of contents, the division of
this Agreement into articles, sections, subsections and other
subdivisions and the insertion of headings are for convenience of
reference only and shall not affect or be utilised in the
construction of interpretation of this Agreement.
(vi) "References" - In this Agreement, references to "hereof", "hereto",
and "hereunder" and similar expressions mean and refer to this
Agreement taken as a whole, and not to any particular article,
section, subsection or other subdivision; "Article", "Section",
"Subsection" or other subdivision of this Agreement followed by a
number means and refers to the specified article, section,
subsection or other subdivision of this Agreement, and "including"
means "including without limitation" and is not to be construed to
limit any general statement which it follows to the specific or
similar items or matters immediately following it.
(vii) "Statutory References" - Unless expressly stated to the contrary,
any references in this Agreement to any law, by-law, rule,
regulation, order or act of any government, governmental body or
other Regulatory Authority shall be construed as a reference thereto
as enacted as of the Effective Date as such law, by-law, rule,
regulation, order or act may be amended, re-enacted or superseded
from time to time.
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1.4 Jurisdiction
This Agreement shall be construed in accordance with the laws of the State of
New York, and shall be treated in all respects as a contract entered into under
New York law. The Parties intend and agree that the law of the State of New York
shall apply despite any choice-of-law statute, rule, or precedent that would
apply the law of any other jurisdiction.
1.5 Language
The Parties confirm that it is their wish that this Agreement, as well as any
other documents relating to this Agreement, including notices, schedules and
authorisations, have been and shall be drawn up in the English language only.
Les signataires confirment leur volonte que la presente convention, de meme que
tous les documents s'y rattachant, y compris tout avis, annexe et autorisation,
soient rediges en anglais seulement.
ARTICLE 2
PURPOSE
Subject to applicable regulatory approvals and the provisions and conditions set
forth in this Agreement, the Parties acknowledge and agree that it is their
decision to develop and commercialise the ART SoftScan Product (the "Program
Purpose"). The Parties shall pursue this Program Purpose in Phases by entering
into this agreement that outlines the overall responsibilities of the Parties
for each Phase of the Program. A successful achievement of the Program Purpose
requires the successful completion of the following steps: developing product
prototypes and clinical procedures; clinically testing such prototypes and
procedures; obtaining the Regulatory Approvals required to test, manufacture and
commercialize the ART SoftScan Product; manufacturing, marketing, distributing
and offering for sale commercial embodiments of the ART SoftScan Product; and
identifying commercial applications for the ART SoftScan Product. Accordingly,
the Parties have decided to enter into this Agreement which generally prescribes
the Parties' respective responsibilities during each Phase of the Program. In
support of the SoftScan Product, GE Medical Systems shall make available to
ART's program manager reasonable access to GE's internal experts in the areas of
manufacturing, marketing, sales, promotion and distribution with the objective
of developing a successful product launch. The Parties also agree that the
success of the Program is dependent upon both Parties working to maximize the
benefit that can be achieved from each SoftScan Product by optimizing the
combination of engineering, design, distribution and manufacturing.
ARTICLE 3
TERM
3.1 Term
The term of this Agreement will be for an initial term of [CONFIDENTIAL] years
from the Effective Date and for renewal terms as hereinafter provided (the
"Term").
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3.2 Renewal
This Agreement will automatically renew for additional terms of [CONFIDENTIAL]
years each unless either Party shall have given the other Party at least sixty
(60) days prior Notice of its election not to renew this Agreement prior to the
expiration of the Term.
3.3 Conditions Precedent
This Agreement shall not be effective until the Parties have executed
concurrently this Agreement, the subscription agreement between GE and ART,
dated the even date hereof (the "Subscription Agreement") and the master
research and development alliance agreement between GE and ART, dated the even
date hereof (the "Master Research and Development Alliance Agreement"), which
date shall be the effective date of this Agreement (the "Effective Date"). These
three agreements are to be signed concurrently as they relate to one and the
same business commitment.
ARTICLE 4
GENERAL PROGRAM CONDITIONS
4.1 SoftScan Program
To achieve the Program Purpose, the Parties shall engage in the following Phases
and any other such phases that may be subsequently identified and agreed to by
the Parties as beneficial to implementing and achieving the Program Purpose:
(i) Clinical Phase - A clinical phase, the terms and conditions of this
clinical phase shall be as prescribed in Article 6 (the "Clinical
Phase");
(ii) Pre-Production Phase - A pre-production phase, the terms and
conditions of which are as prescribed in Article 7 (the
"Pre-Production Phase"); and
(iii) Full Production Phase - A full production phase, the terms and
conditions of which are as prescribed in Article 8 (the "Full
Production Phase").
The Parties acknowledge and agree that the commencement of each of the
Pre-Production Phase and the Full Production Phase is dependent upon a
successful completion of the immediately preceding Phase and that such
immediately preceding Phase shall be deemed to be successfully completed upon
agreement between the Parties, in respect of the Clinical Phase, as provided for
in Section 6.5 and, in respect of the Pre-Production Phase, as provided for in
Section 7.6.
The Parties acknowledge and agree that this Agreement provides the basis for the
relationship between the Parties and that more detailed responsibilities will
need to be further outlined and agreed to as additional information in support
of the Program Purpose becomes available to the Parties.
4.2 Costs
Except as otherwise or expressly provided in this Agreement and any other
agreement between the Parties, each Party shall pay all costs and expenses that
it incurs in authorising, preparing,
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executing and performing this Agreement, including all fees and expenses of its
respective legal counsel, investment bankers, brokers, accountants or other
representatives or consultants.
4.3 Taxes
Each Party shall bear all taxes, duties, levies, and other similar charges (and
any related interest and penalties), however designated, imposed against it or
its Affiliates as a result of the existence or operation of this Agreement
including, but not limited to, any such amounts which either Party is required
to withhold or deduct from any payments to the other Party. For greater
certainty, each Party is responsible for and shall pay directly to the
appropriate taxing authorities all sales, use, consumption and transfer taxes,
registration charges, transfer fees and GST applicable to it in respect of this
Agreement and, upon the reasonable request of the other Party, the paying Party
shall furnish proof of such payment.
4.4 Public Announcements
The Parties shall adhere to the following restrictions relating to public
announcements concerning this Agreement and its implementation:
(i) General Announcements - Subject to other terms of this Agreement, no
Party nor any Affiliate of a Party shall issue or cause the
publication of any press release or other announcement with respect
to this Agreement or its implementation without the prior
consultation and approval of the other Party, except as may be
required by any applicable law or as may otherwise be permitted
hereunder, provided, however, that any such approval shall not be
unreasonably withheld or delayed and that each Party may provide
such information to its legal or financial advisors after obtaining
appropriate confidentiality agreements with such advisors. ART
hereby agrees that any reference that is made to GE in any press
release or other announcement initiated or caused by ART shall be
limited to the use of the GE name in a factual statement, and that
the GE logo shall not be used without the prior written consent of
GE, to be granted by GE in its sole discretion;
(ii) Disclosure Under Applicable Law - Either Party may make any public
statement or issue any press release with respect to this Agreement
where necessary to comply with requirements of any applicable law or
as required by the order or judgement of a court or tribunal of
competent jurisdiction. If any such statement or release is so
required, or the Parties mutually agree to such statement or
release, the Party making such disclosure shall consult with the
other Party prior to making such statement or release and the
Parties shall use all reasonable efforts, acting in good faith, to
agree upon a text for such statement or release which is
satisfactory to both;
(iii) Other References - Notwithstanding the foregoing, the Parties may
otherwise agree to make additional announcements concerning this
Agreement and the transactions contemplated therein in other
materials; and
(iv) Copies of the Agreement - No Party shall deliver a copy of this
Agreement or any part to any Third Party without the prior written
consent of the other Party unless
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and only to the extent that such disclosure is, in the opinion of
such Party's counsel, required by applicable law.
4.5 Debarred or Disqualified Third Parties
Each Party hereby represents and warrants that it shall be responsible for
ensuring that no Third Party that has been: (i) debarred under the
provisions of the Generic Drug Enforcement Act of 1992, 21 U.S.C. ss.
335a(a) and (b); (ii) disqualified as a testing facility under the
provisions of 21 C.F.R. Part 58, Subpart K; or (iii) disqualified as a
clinical investigator under the provisions of 21 C.F.R. ss. 312.70, will
be hired on such Party's behalf in connection with the Program.
ARTICLE 5
SOFTSCAN STEERING COMMITTEE
5.1 Program Management.
The Parties shall each appoint a Program Manager. The Program Managers shall be
responsible for managing the Program, including: (i) approval of all
transmittals and receipt of Confidential Information; (ii) authorisation of all
requests, proposals, responses or change orders that affect the Program; and
(iii) submission and acceptance, respectively, of evaluation units and
documentation during the Program. The Program Managers will manage all
interactions within their respective Party and shall be copied on all
communications. The name, e-mail address, phone number, fax number, and mailing
address for each of the Program Managers shall be exchanged between Parties. The
Program Managers will meet on a monthly basis or as required. The monthly
meetings may be held by teleconference or in a location mutually agreeable to
the Parties.
5.2 SoftScan Steering Committee
The Parties acknowledge that the establishment of a joint steering committee is
advisable in order to most effectively enable the Parties to fulfill their
obligations in relation to the Program (the "SoftScan Steering Committee"). The
SoftScan Steering Committee will be made up of four (4) individuals (each a
"Permanent Member"), two chosen by ART and two chosen by GE. The SoftScan
Steering Committee may also include two other individuals, one chosen by ART and
one chosen by GE, which may be appointed on a case by case basis dependent on
the nature of the discussion matter. The SoftScan Steering Committee members
shall be appointed by the Parties. Either Party shall give Notice to the other
Party of the appointments of its two (2) Permanent Members within two (2) weeks
of the Effective Date.
If, at any time, any of the members of the SoftScan Steering Committee are
unable or unwilling to continue to serve as a SoftScan Steering Committee
member, then their affiliated Party may appoint a member as their replacement.
The Parties shall appoint an individual to serve as the committee representative
and secretary. Such individual shall be responsible for the general
administrative matters of the SoftScan Steering Committee and shall provide all
required notices and information to the other SoftScan Steering Committee
members. If, at any time, the committee representative and secretary is unable
or unwilling to continue to act in this role, then the SoftScan Steering
Committee shall vote to elect a replacement. SoftScan Steering Committee
meetings shall be held in person or by teleconference to discuss and review the
status
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of the Program. At a minimum, SoftScan Steering Committee meetings shall be held
in person on a quarterly basis at a location to be mutually agreed upon by the
Parties.
5.3 Dispute Resolution
The Parties will attempt in good faith to resolve expeditiously any dispute,
claim or controversy arising out of or relating to this Agreement (a "Dispute")
through negotiations between executives of each Party who have authority to
settle the controversy and who are at a higher level of management than the
Persons with direct responsibility for the administration and execution of this
Agreement. Either Party may give the other Party Notice of any Dispute not
resolved in the normal course of business (an "Escalation Notice"). Within
fifteen (15) days after delivery of the Escalation Notice, the Party given such
Escalation Notice shall submit a written response to the Party providing such
Escalation Notice. The Escalation Notice and the response thereto shall include:
(i) a statement of each Party's position and a summary of arguments supporting
that position and (ii) the name and title of the executive who will represent
that Party and of any other Person who will accompany such executive to the
negotiations. Within thirty (30) days after delivery of the Escalation Notice,
the Persons identified by the Escalation Notice and the response shall meet at a
mutually acceptable time and place, and shall continue to meet thereafter as
often as such Persons reasonably deem necessary to resolve the Dispute. All
reasonable requests for information relating to the Dispute made by one Party to
the other will be honored. All negotiations pursuant to this clause are
confidential and shall be treated as compromise and settlement negotiations for
purposes of any applicable rules of evidence. The Parties shall attempt to
resolve any Dispute pursuant to the procedure set forth in this Section for a
period of up to sixty (60) days from the date of delivery of the Escalation
Notice before resorting to other available remedies as provided for in Section
16.9.
5.4 Mandate of the SoftScan Steering Committee
The role of the SoftScan Steering Committee shall be one of providing guidance
to the Parties and the Program in respect of (i) those matters set out below and
(ii) the proper execution of the obligations undertaken by the Parties pursuant
to this Agreement. The SoftScan Steering Committee shall have the authority to
decide important matters with respect to the execution of this Agreement and
guide the Parties in respect of the following matters including, but not limited
to:
(i) overseeing and monitoring the Program;
(ii) providing guidance with respect to the obligations of each Party, as
set forth in this Agreement, in order to promote adequate progress
of the Program;
(iii) facilitating the successful completion of each Phase of the Program;
(iv) responding to requests made by the Program Managers with respect to
the Program Purpose;
(v) identifying and attempting to resolve any additional decisions that
are required by the Parties in support of the Program Purpose;
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(vi) attempting to resolve issues arising between the Parties with
respect to the interaction of the Parties and the Program; and
(vii) promoting and directing that any development, marketing,
manufacture, sales, distribution and customer service of the ART
SoftScan Product is conducted in good faith and in a manner
consistent with the collaborative spirit and intent of this
Agreement.
5.5 Progress Reports
Progress reports detailing the progress results and recommendations concerning
the Program will be provided by the Program Managers to the SoftScan Steering
Committee at least once per month and at a level of details as mutually agreed
upon by the Parties (the "Progress Reports").
5.6 Research Obligations
Each Party's obligations under Articles 6, 7 and 8 will be deemed discharged
with respect to this Agreement if: (i) the required personnel and data are
provided; (ii) the work is performed in accordance with high standards of
scientific and professional skills; (iii) all of the objectives have either been
accomplished or have been deemed by the Parties to be impractical to achieve or
not Commercially Viable; and (iv) any required written reports have been
provided by the responsible Party on a timely basis.
ARTICLE 6
CLINICAL PHASE
6.1 Clinical Phase
The Clinical Phase of production has commenced as of the Effective Date. The
Parties agree to assume their respective responsibilities during the Clinical
Phase as set out in further details in this Article 6. Additional
responsibilities may be identified as the Clinical Phase progresses and as the
Program Managers may recommend to the Parties the allocation of additional
duties and responsibilities.
6.2 Location of Manufacturing
During the Clinical Phase, manufacturing will be located at ART's facility
wherever situated.
6.3 Responsibilities of ART
During the Clinical Phase, ART shall be responsible for the following:
(i) [CONFIDENTIAL]
6.4 Responsibilities of GE
During the Clinical Phase, GE shall be responsible for the following:
(i) [CONFIDENTIAL]
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[CONFIDENTIAL].
ARTICLE 7
PRE-PRODUCTION PHASE
7.1 Pre-Production Phase
Upon the successful completion of the Clinical Phase and the agreement of the
Parties of the revenue model for the Pre-Production Phase pursuant to Section
6.5, the Pre-Production Phase shall commence as soon as the following two
milestones have been achieved:
(i) [CONFIDENTIAL]
7.2 Location of Manufacturing
During the Pre-Production Phase, it is anticipated that manufacturing will be
located at ART's facility wherever situated. [CONFIDENTIAL]
7.3 Responsibilities of ART
During the Pre-Production Phase, ART shall be responsible for the following:
(i) [CONFIDENTIAL].
7.4 Responsibilities of GE
During the Pre-Production Phase, GE shall be responsible for the following:
(i) [CONFIDENTIAL]
7.5 Additional Responsibilities of SoftScan Steering Committee during
Pre-Production Phase
In addition to its other responsibilities set out in this Agreement, the
SoftScan Steering Committee shall also be responsible for recommending the
development of transitional plans and timelines for the SoftScan System
manufacturing and production process in order to ensure a smooth transition to
the Full Production Phase.
[CONFIDENTIAL].
ARTICLE 8
FULL PRODUCTION PHASE
8.1 Full Production Phase
Upon successful completion of the Pre-Production Phase, the Full Production
Phase shall commence as soon as the Parties have reached agreement with respect
to any additional details regarding the Parties respective obligations pursuant
to Sections 8.3 and 8.4.
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8.2 Product and Location of Manufacturing
Each SoftScan System shall be manufactured to the specifications approved by
ART. During the Full Production Phase, it is the intention of the Parties that
manufacturing be located at a GE Facility. However, during the Full-Production
Phase, the Parties acknowledge that it is in the interest of both Parties to
continuously investigate methods for cost reducing the manufacturing, design and
service costs associated with the SoftScan System. It is also recognized that
both Parties shall work together to implement a cost reduction program that will
benefit both Parties.
8.3 Responsibilities of ART
If the manufacturing of the SoftScan Product takes place at a GE Facility,
during the Full Production Phase, ART shall be responsible for the following:
(i) [CONFIDENTIAL]
8.4 Responsibilities of GE
If the manufacturing of the SoftScan Product takes place at a GE Facility,
during the Full Production Phase, GE shall be responsible for the following:
(i) [CONFIDENTIAL]
[CONFIDENTIAL]
ARTICLE 9
TECHNOLOGY OWNERSHIP AND LICENSING
9.1 License of Technology
Each Party has no right, title, or interest, whether by way of license or
otherwise in or to use the other's Technology except as provided for in this
Agreement. Subject to the other provisions of this Agreement and in
consideration of the mutual covenants and other obligations expressed in this
Agreement, the following licenses shall be granted hereunder:
(i) ART Technology License - ART grants to GE and GE accepts a worldwide
license to make, have made, use, sell, offer for sale and otherwise
commercially exploit the ART SoftScan Technology and the ART
Background Technology in conjunction with ART solely for the Program
Purpose and to further the Program Purpose in accordance with this
Agreement. The license to the ART Background Technology shall be
non-exclusive and the license to the ART SoftScan Technology shall
be exclusive;
(ii) GE Technology License - GE grants to ART and ART accepts a worldwide
license to make, have made, use, sell, offer for sale and otherwise
commercially exploit the GE Technical Information in conjunction
with GE solely for the Program Purpose and to further the Program
Purpose in accordance with this Agreement. The license to the GE
Technical Information shall be non-exclusive.
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Notwithstanding the foregoing, the Parties agree that the rights to use the ART
SoftScan Trade-marks and the GE Trade-marks in association with the Program and
the SoftScan Systems shall be prescribed by Article 10. The rights granted in
this Section 9.1 are strictly licensed rights and no Transfer of ownership or
other legal, equitable or proprietary right, title or interest is intended or
implied by this Agreement or by any other aspect of the relationship of the
Parties. Except as set forth in this Section 9.1, neither Party shall have any
obligation to contribute any Technology to the Program or to make or allow any
use of such Technology in the Program.
9.2 Acknowledgements Relating to ART Technology License
GE agrees as follows:
(i) Specifications - All design, component and manufacturing
specifications shall be the sole responsibility of ART. GE shall not
make any alterations or amendments to such specifications without
ART's prior written consent.
(ii) License of Improvements to ART - GE hereby assigns to ART any
improvement, development or derivative work, and any Intellectual
Property Rights residing therein, to the ART SoftScan Technology,
ART Background Technology, ART SoftScan Product, or the SoftScan
Systems created by GE pursuant to this Agreement which results,
directly or indirectly, from GE's participation in the Program and
GE acknowledges that ART shall be the owner of such improvements,
developments or derivative works. Such improvements, developments
and derivative works shall be licensed to GE as ART Background
Technology under Section 9.1(i) hereof. Notwithstanding anything in
this Section 9.2 or any other section of this Agreement to the
contrary, any manufacturing, production or operational processes,
equipment, tooling, dyes and the like developed by GE in connection
with its manufacture of the SoftScan product, and any Intellectual
Property Rights residing therein shall remain the sole property of
GE.
9.3 Acknowledgements Relating to GE Technology License
ART hereby assigns to GE any improvement, development or derivative work, and
any Intellectual Property Rights residing therein, to the GE Technical
Information created by ART pursuant to this Agreement which results, directly or
indirectly, from ART's participation in the Program and ART acknowledges that GE
shall be the owner of such improvements, developments or derivative works. Such
improvements, developments and derivative works shall be licensed to ART as GE
Technical Information under Section 9.1(ii) hereof.
9.4 Certain Restrictions on Use of Technology
The following shall be express restrictions and conditions of the Technology
licenses granted in Section 9.1 as applicable:
(i) Third Party Licensed Technology - With respect to licensed
Technology which is licensed to the Party licensor from a Third
Party (excluding Technology licensed under the [CONFIDENTIAL]), such
Technology shall only be sub-licensed by the
16
recipient hereunder to the extent that the recipient may have the
right under such license agreements to sub-license such Technology.
Without limiting the generality of the foregoing, to the extent that
such license agreements place restrictions on the recipient's
ability to sub-license such Technology to a Third Party, such
restrictions shall also be adhered to by the recipient hereunder in
respect of such sub-licensed Technology; and
(ii) [CONFIDENTIAL].
9.5 Sublicensing to Others
GE shall not license or otherwise permit any other Person to use, directly or
indirectly, in whole or in part, the ART SoftScan Technology or the ART
Background Technology other than as may be permitted in accordance with this
Agreement; provided, however, that GE may sublicense the ART SoftScan Technology
and the ART Background Technology, subject to ART's prior written approval, such
approval not to be unreasonably withheld, to contractors for the Program Purpose
to further the Program, provided that such contractor agrees in writing to be
bound by the applicable terms of this Agreement, including the confidentiality
provisions but excluding the right to sublicense. ART shall not license or
otherwise permit any other Person to use, directly or indirectly, in whole or in
part, the GE Technical Information other than as may be permitted in accordance
with this Agreement. Notwithstanding the foregoing the Party licensee may grant
personal, non-exclusive and non-transferable sublicenses to its Affiliates
approved by the Party licensor in writing, such sublicensees to be on the same
terms, mutatis mutandis, as the terms of this Agreement insofar as they are
applicable, but excluding the right to further sublicense. The Party licensee
shall cause such sublicensees to acknowledge and agree to be bound by the terms
and conditions of this Agreement. The Party licensee shall also ensure
compliance by its Affiliates with this Agreement as if they were Parties.
9.6 Development of Technology for other Purposes
ART shall have the unrestricted right to improve, develop, modify, and enhance
the ART SoftScan Technology and ART Background Technology during and after the
Term. Except as may otherwise be expressly provided for in this Agreement,
nothing shall preclude ART from (i) developing or commercialising ART Background
Technology during or after the Term in any manner that ART sees fit and (ii)
developing or commercialising ART SoftScan Technology after the Term in any
manner that ART sees fit. GE shall have the unrestricted right to improve,
develop, modify, and enhance the GE Technical Information during and after the
Term. Except as may otherwise be expressly provided for in this Agreement,
nothing shall preclude GE from developing or commercialising GE Technical
Information during or after the Term in any manner that GE sees fit.
17
ARTICLE 10
TRADE-MARKS
10.1 Use of Trade-marks during Program
The Parties agree that it shall be beneficial for each of them to use certain
trade-marks on and in association with the Program and the SoftScan Systems. In
connection therewith, and notwithstanding Section 9.1, the Parties agree as
follows:
(i) Clinical and Pre-Production Phases (ART manufacturing and ART
distributing) - During the Clinical Phase and the Pre-Production
Phase of the Program where ART is manufacturing and distributing the
SoftScan Systems, the trade-marks that shall be used in association
with the Program and with the SoftScan Systems shall be the ART
SoftScan Trade-marks identified by ART. ART shall solely be
responsible for selecting the ART SoftScan Trade-marks and
determining their manner of use. Subject to the prior written
consent of GE, the GE Trademarks may be used in promotional
materials in conjunction with language identifying GE as the future
manufacturer and distributor of the SoftScan Systems, if GE is
expected to act as the manufacturer and distributor of the SoftScan
Systems.
(ii) Pre-Production Phase (ART manufacturing and GE distributing) -
During the Pre-Production Phase of the Program where ART is
manufacturing and GE is distributing the SoftScan Systems, the
trade-marks that shall be used in association with the Program and
with the SoftScan Systems shall be the GE Trade-marks identified by
GE and the ART SoftScan Trade-xxxx SOFTSCAN (with ART being
identified as the manufacturer on the rating plate). GE shall solely
be responsible for selecting the GE Trade-marks and determining
their manner of use and determining the manner of use of the ART
SoftScan Trade-xxxx SOFTSCAN. ART agrees that GE's licence to use
the ART SoftScan Trade-xxxx SOFTSCAN in such circumstances shall be
exclusive to GE and GE agrees that such trade-xxxx shall only be
used on or in association with the Program and SoftScan Systems
where ART has been the manufacturer. GE shall permit ART to inspect
the Program and SoftScan Systems distributed by GE from time to time
(but no less than every six (6) months during the Term) to ensure
that ART SoftScan Trade-xxxx SOFTSCAN is only being used in
association with the Program and SoftScan Systems where ART was the
manufacturer. However, during this phase ART may also use the ART
SoftScan Trade-marks in association with the Program and SoftScan
Systems notwithstanding the exclusive license granted to GE to use
the ART Trade-xxxx SOFTSCAN; and
(iii) Pre-Production Phase and Full Production Phase (GE manufacturing and
GE distributing) - During the Full Production Phase of the Program
and in the event that manufacturing is transferred to GE during the
Pre-Production Phase (i.e., GE is manufacturing and distributing the
SoftScan Systems), the trade-marks that shall be used in association
with the Program and with SoftScan Systems shall be the GE
Trade-marks identified by GE and the ART SoftScan Trade-xxxx
SOFTSCAN (with GE being identified as the manufacturer on the rating
plate). GE shall solely be responsible for selecting the GE
Trade-marks and determining
18
their manner of use and determining the manner of use of the ART
SoftScan Trade-xxxx SOFTSCAN. ART agrees that GE's licence to use
the ART SoftScan Trade-xxxx SOFTSCAN in such circumstances shall be
exclusive to GE and GE agrees that such trade-xxxx shall only be
used on or in association with the Program and SoftScan Systems
where GE was the manufacturer and where the Program and SoftScan
Systems comply with the design, component and manufacturing
specifications set by ART under Section 9.2(i) hereof. GE shall
permit ART to inspect the Program and SoftScan Systems distributed
by GE from time to time (but no less than every six (6) months
during the Term) to ensure that ART SoftScan Trade-xxxx SOFTSCAN is
only being used in association with the Program and SoftScan Systems
where GE was the manufacturer and in compliance with such design,
component and manufacturing specifications.
Notwithstanding the foregoing, the GE Trademarks and ART SoftScan Trademarks
shall not be used together, except in the limited uses as described above,
without the Parties prior written agreement, which agreement either Party may
withhold in the exercise of its sole discretion. Either Party shall not, without
the prior written consent of the other Party, directly or indirectly attempt to
dilute or depreciate the value of the goodwill attached to the other Party's
trade-marks, use such trade-marks in any manner which may adversely affect the
reputation of the owner of such trade-marks, or use or permit the use of such
trade-marks as part of the business, trade, corporate, partnership or other name
of the Party not owning such trade-marks. For the sake of clarity, the Parties
agree that notwithstanding the foregoing, ART shall not have the right to use
the GE Trade-marks without the prior written consent of GE.
ARTICLE 11
CONFIDENTIALITY
11.1 General
The terms and provisions of this Article 11 with respect to confidentiality and
non-use of Confidential Information of the Parties shall supersede any and all
prior confidentiality agreements between GE and ART, with respect to the subject
matter of this Agreement. Nothing in this Article 11 shall be construed or
interpreted as restricting or prohibiting any Party from making or permitting
any disclosure of Confidential Information of either Party or both Parties which
is otherwise expressly permitted by this Agreement.
11.2 Confidentiality
Confidential Information exchanged between the Parties shall be considered to be
Confidential Information for the purposes of this Agreement. Each Party
acknowledges and agrees that Confidential Information that it as a recipient
(the "Receiving Party") receives from the other Party (the "Disclosing Party")
shall be treated as confidential and a trade secret of the Disclosing Party. All
Confidential Information exchanged between the Parties shall be exchanged in the
following format: (i) in writing and marked to indicate it is confidential at
the time of disclosure; (ii) in any other manner indicated to be confidential at
the time of disclosure or, in the case of oral disclosures, in monthly Progress
Reports; or (iii) in the form of tangible products or materials transmitted to
the Receiving Party with an accompanying written memorandum identifying the
confidentiality of such products or materials.
19
11.3 Non-disclosure of Confidential Information by Receiving Party
The Receiving Party shall hold all Confidential Information of the Disclosing
Party in confidence for a period of five (5) years from the expiration or
termination of this Agreement. Except as set forth below, the Receiving Party
shall not for any reason without the prior written consent of the Disclosing
Party, directly or indirectly, provide any other Person with access to the
Confidential Information that it receives from the Disclosing Party. Providing
access includes disclosure, sale, copying, dissemination, publishing or
reproduction by any means whatsoever. Confidential Information received from a
Disclosing Party under this Agreement may only be disclosed by a Receiving
Party:
(i) to persons employed by the Receiving Party in order to carry out the
Program; and
(ii) to subcontractors of the Receiving Party, upon written approval of
the Disclosing Party, such approval not to be unreasonably withheld,
for use only within the framework of their contracts with the
Receiving Party in work relating to the Program, such subcontractors
being subject to the similar confidentiality provisions as provided
for in this Agreement;
provided that any such Confidential Information shall only be disseminated to
such persons or contractors on a need-to-know basis pursuant to an agreement of
confidentiality. Neither Party shall include Confidential Information of the
other Party in any patent application without the prior written consent of the
other Party.
11.4 Control of Confidential Information by Recipient
The Receiving Party may not make use of Confidential Information disclosed to it
by the Disclosing Party for the benefit of any Person or assist others in doing
so other than as provided herein. The Receiving Party agrees to use the same
efforts it uses to protect its own confidential information to maintain the
confidentiality of all Confidential Information received by it from a Disclosing
Party during the Term and shall ensure that such Confidential Information shall
be controlled as provided herein. If the Receiving Party becomes aware that it
will be or may reasonably be expected to become unable to meet the
non-disclosure or restricted use provisions of this Agreement with respect to
Confidential Information received from a Disclosing Party, it shall immediately
provide Notice to the Disclosing Party. The Parties shall thereafter consult to
define an appropriate course of action. If a Receiving Party is required by
judicial or administrative process to disclose Confidential Information received
from a Disclosing Party, the Receiving Party shall promptly provide Notice to
the Disclosing Party and allow the Disclosing Party a reasonable time to oppose
such process.
ARTICLE 12
REPRESENTATIONS AND WARRANTIES
12.1 Representations of the Parties
Each Party represents and warrants to the other that as of the Effective Date:
20
(i) Incorporation - Such Party is a corporation duly incorporated and
validly existing under its jurisdiction of incorporation;
(ii) Due Authorisation, etc. - Such Party has all necessary corporate
power, authority and capacity to enter into and to carry out its
obligations under this Agreement and that the signatory on its
behalf is authorized to execute this Agreement and bind its
principal to the terms and conditions stated herein. The execution
and delivery of this Agreement and the consummation of the
transactions contemplated by this Agreement have been duly
authorised by all necessary corporate action on the part of such
Party; and
(iii) Absence of Conflicting Agreements - Such Party is not a party to,
bound or affected by or subject to any license, indenture, mortgage,
agreement, obligation, instrument, charter or by-law provision,
statute, regulation, order, judgement, decree, license, permit or
law which would be violated, contravened, breached by, or under
which default would occur or a lien, claim, restriction or
encumbrance would be created as a result of the execution and
delivery of this Agreement or the conduct of any of the matters
provided for under this Agreement. There are no agreements between
it and a Third Party that would conflict with the provisions of this
Agreement.
12.2 Representations of ART
ART represents the following:
(i) Schedule A attached hereto sets forth all intellectual property
contracts relating to the SoftScan Technology and the ART Background
Technology (each an "IP Contract" and collectively the "IP
Contracts"). A true and complete copy of each IP Contract has been
delivered to GE. Each IP Contract is in good standing and in full
force and effect and ART is not, and is not alleged to be, in
default in any material respect thereunder. To the knowledge of ART,
there is not any condition or event that, after notice or lapse of
time, or both, would constitute a default in any material respect by
any party to any IP Contract. To the knowledge of ART, there is no
fact or circumstance which entitles, or with the giving of notice or
passage or time would entitle, any Person to terminate or to cause
the termination of any IP Contract which has not been disclosed in
writing to, and accepted by, GE. ART has not agreed to assign all or
any part of its interest in any IP Contract to any Person other than
GE.
(ii) None of the written information and material delivered to GE by or
on behalf of ART contains any untrue statement of a material fact or
has omitted a material fact necessary to make the statements
contained therein not misleading, and all such statements, taken as
a whole, do not contain any untrue statement of a material fact or
omit a material fact necessary to make the statements contained
therein not misleading. There is no fact known to ART which ART has
not disclosed to GE in writing which, to the knowledge of ART, would
materially adversely affect the ART SoftScan Technology or the ART
Background Technology or the ability of ART to perform its
obligations under this Agreement.
21
12.3 Warranty Exclusion
The foregoing representations and warranties in this Article 12 (except as
otherwise expressly set out in this Agreement) are exclusive and are given and
accepted in lieu of any and all other warranties and conditions, express or
implied, including any implied warranties and conditions of merchantability or
of fitness for a particular purpose and any implied warranties and conditions
arising from a course of dealing, usage of trade, or course of performance.
Without limiting the generality of the foregoing, except as expressly provided
in this Agreement, ART denies and disclaims any warranty or condition, express
or implied, concerning the performance, operation or functionality of the ART
SoftScan Technology or ART Background Technology whatsoever, its fitness for use
for the Program Purpose, or that the operation of such technology will be error
free or uninterrupted or that it will produce a desired result.
ARTICLE 13
INFRINGEMENTS
13.1 Infringement of ART Technology by Unauthorised Persons
GE shall promptly notify ART of any conflicting use or any act of infringement
or appropriation of the ART SoftScan Technology (provided by ART pursuant to
this Agreement) or the ART Background Technology (provided by ART pursuant to
this Agreement) by unauthorised Persons which comes to its attention. ART shall,
at its own expense, have the sole right but not the obligation to engage in
proceedings involving such Technology or to take such steps as may be necessary
in order to terminate such infringement or appropriation. ART may in its sole
discretion settle any dispute with any Third Party at any time regarding such
infringement and appropriation, without compensation to GE. GE shall co-operate
and assist ART in a reasonably commercial manner at ART's expense in any such
negotiations and proceedings instituted by ART provided that the infringement or
appropriation relates to the Program Purpose. The foregoing notwithstanding, ART
shall not under any circumstances enter into any agreement, settle or otherwise
resolve any dispute with any Third Party that in any way implicates or
negatively affects GE's rights pursuant to this Agreement without GE's prior
written approval, which approval shall not be unreasonably withheld.
13.2 Infringement of GE Technical Information by Unauthorised Persons
ART shall promptly notify GE of any conflicting use or any act of infringement
or appropriation of GE Technical Information (provided by GE pursuant to this
Agreement) by unauthorised Persons which comes to its attention. GE shall, at
its own expense, have the sole right but not the obligation to engage in
proceedings involving such Technical Information or to take such steps as may be
necessary in order to terminate such infringement or appropriation. GE may in
its sole discretion settle any dispute with any Third Party at any time
regarding such infringement and appropriation, without compensation to ART. ART
shall co-operate and assist GE in a reasonably commercial manner at GE's expense
in any such negotiations and proceedings instituted by GE provided that the
infringement or appropriation relates to the Program Purpose. The foregoing
notwithstanding, GE shall not under any circumstances enter into any agreement,
settle or otherwise resolve any dispute with any Third Party that in any way
implicates or negatively affects ART's rights pursuant to this Agreement without
ART's prior written approval, which approval shall not be unreasonably withheld.
22
13.3 Infringement Claims Against ART
ART shall give GE Notice in the event that ART becomes aware of any action or
claim that the ART SoftScan Technology (provided by ART pursuant to this
Agreement) or ART Background Technology (provided by ART pursuant to this
Agreement) infringes any rights of or is appropriated from any other Person. In
the event that an injunction is obtained against ART restricting the use of such
Technology or if, in ART's reasonable opinion ART is likely to become the
subject of a claim or action alleging infringement, ART shall, at its option and
sole expense, either:
(i) obtain for itself and GE the right to continue use of the Technology
as contemplated by this Agreement; or
(ii) replace or modify any affected Technology to make its use hereunder
non-infringing while being capable of performing the same function,
without, to the extent possible, degrading performance, utility or
economic viability.
The foregoing notwithstanding, ART shall not under any circumstances enter into
any agreement, settle or otherwise resolve any dispute with any Third Party that
in any way implicates or negatively affects GE's rights pursuant to this
Agreement without GE's prior written approval, which approval shall not be
unreasonably withheld.
13.4 Infringement Claims Against GE
GE shall give ART Notice in the event that it becomes aware of any action or
claim that the GE Technical Information (provided by GE pursuant to this
Agreement) infringes any rights of or is appropriated from any other Person. In
the event that an injunction is obtained against GE restricting the use of such
Technical Information or if, in GE's reasonable opinion GE is likely to become
the subject of a claim or action alleging infringement, GE shall, at its option
and sole expense, either:
(i) obtain for itself and ART the right to continue use of the Technical
Information as contemplated by this Agreement; or
(ii) replace or modify any affected Technical Information to make its use
hereunder non-infringing while being capable of performing the same
function, without, to the extent possible, degrading performance,
utility or economic viability.
The foregoing notwithstanding, GE shall not under any circumstances enter into
any agreement, settle or otherwise resolve any dispute with any Third Party that
in any way implicates or negatively affects ART's rights pursuant to this
Agreement without ART's prior written approval, which approval shall not be
unreasonably withheld.
ARTICLE 14
LIABILITY AND INSURANCE
14.1 Assumption and Risk
ART and GE recognise and individually assume the following risks:
23
(i) that all Regulatory Approvals relating to the ART SoftScan Product
may not be obtained;
(ii) that Commercially Viable versions of products, processes or
equipment or methods or procedures relating to the ART SoftScan
Product may not be able to be developed;
For greater certainty, but without limiting the foregoing, neither Party shall
be liable to the other Party in tort or in contract for any suits, proceedings,
claims, demands or actions of any nature or kind whatsoever (including those for
personal injury or death) ("Claims") arising out of or resulting from such risks
or for punitive, indirect, incidental, special exemplary or aggravated damages.
14.2 Indemnity
Each Party hereby indemnifies and undertakes to defend the other Party and its
respective shareholders, directors, officers, employees, representatives, agents
and Affiliates and holds them harmless from all Claims directly or indirectly,
arising out or resulting from:
(i) the operation or performance of a product or service developed under
the Program including, without limitation, any liabilities
attributable to a design defect, malfunction or other failure of
such products to perform, but only to the extent that any such
liability is attributable to the gross negligence or wilful
misconduct of the indemnifying Party;
(ii) the gross negligence, wilful misconduct or violation of any
applicable law of or by the indemnifying Party;
(iii) any material breach of this Agreement by the indemnifying Party; and
(iv) any Claim or threatened Claim against the other Party that a product
or service developed by the indemnifying Party under the Program
infringes, violates or misappropriates any Intellectual Property
Rights of a Third Party, and against any and all fines, damages,
losses, costs, expenses and fees (including without limitation
reasonable attorney's and other professional fees and costs of
litigation) incurred by or on behalf of any of the foregoing in the
investigation or defence of any and all such Claims, but only to the
extent that any such liability is attributable to the conduct of the
indemnifying Party.
14.3 Procedure
In the event that any Party intends to claim indemnification pursuant to Section
14.2 it shall promptly give Notice to the indemnifying Party in writing of such
alleged liability, provided that the failure to promptly Notify the indemnifying
Party shall not relieve the indemnifying Party of any obligation under this
Agreement except to the extent such failure to provide prompt Notice adversely
impairs the indemnifying Party's ability to defend against the Claim. The
indemnifying Party shall have the sole right to control the defence and
settlement thereof, provided, that:
24
(i) the indemnifying Party may not consent to the imposition of any
obligation or restriction on the Party seeking indemnification in
any settlement unless mutually agreed by the Parties;
(ii) the indemnifying Party shall keep the Party seeking indemnification
fully informed and permit the Party seeking indemnification to
participate (at the Party seeking indemnification's expense) as the
Party seeking indemnification may reasonably request; and
(iii) the Party seeking indemnification may, without affecting its right
to indemnity hereunder, defend and settle any such Claim, if the
indemnifying Party declines to defend against such Claim or files
for bankruptcy. The Party seeking indemnification shall reasonably
cooperate with the indemnifying Party and its legal representatives
in the investigation of any Claim covered by this Article 14. The
Party seeking indemnification shall not, except at its own cost,
voluntarily make any payment or incur any expense with respect to
any Claim without the prior written consent of indemnifying Party,
which the indemnifying Party shall not be required to give, provided
that the Party seeking indemnification may, without affecting its
right to indemnity hereunder, defend and settle any such Claim if
the indemnifying Party declines to take responsibility or files for
bankruptcy.
14.4 Monetary Limitation
The total liability of one Party to the other Party under this Agreement shall
not exceed [CONFIDENTIAL].
14.5 Time Limitation
No Claim, regardless of form, arising, directly or indirectly, under or out of
this Agreement may be brought by a Party after the applicable statute of
limitations for such Claim has expired.
14.6 Insurance
During the Term and for [CONFIDENTIAL] year(s) after the expiration or
termination of this Agreement, ART shall maintain, at its own expense, in full
force and effect at all such times, with responsible insurance carrier(s)
acceptable to the other Party at least [CONFIDENTIAL] Canadian dollars
[CONFIDENTIAL] in commercial general business liability insurance and at least
[CONFIDENTIAL] Canadian dollars [CONFIDENTIAL] umbrella coverage insurance
policies.
ARTICLE 15
TERMINATION
15.1 Termination For Cause
Either Party may terminate this Agreement For Cause. Grounds for termination
"For Cause" shall exist:
25
(i) if the other Party makes a general assignment for the benefit of
creditors or a proposal or arrangement under any Insolvency Act or
similar legislation, if a petition is filed against the other Party
under any Insolvency Act or similar legislation, if the other Party
shall be declared or adjudicated bankrupt, if a liquidator, trustee
in bankruptcy or any other officer with similar powers shall be
appointed of or for the other Party or if the other Party shall
commit an act of bankruptcy or shall propose a compromise or
arrangement or institute proceedings to be adjudged bankrupt or
become insolvent or consent to the institution of such appointment
or proceedings;
(ii) upon the written agreement of the Parties;
(iii) [CONFIDENTIAL].
The defaulting Party agrees to provide Notice forthwith to the non-defaulting
Party upon becoming aware of any of the foregoing events.
15.2 Other Grounds for Termination
This Agreement may be terminated:
(i) at any time by GE upon sixty (60) days prior Notice to ART if ART
is in default of its obligations under this Agreement and has not
remedied such default within such sixty (60) day period. ART agrees
to provide Notice to GE forthwith upon ART becoming aware of such
default;
(ii) at any time by ART upon sixty (60) days prior Notice to GE if GE is
in default of its obligations under this Agreement and has not
remedied such default within such sixty (60) day period. GE agrees
to provide Notice to ART forthwith upon GE becoming aware of such
default;
(iii) at any time by either Party in the event a claim of infringement
against the other Party results in the Program Purpose becoming not
Commercially Viable;
(iv) at any time by either Party if a force majeure event (as described
in Section 16.7) has a material effect on a Party's ability to
perform all of its obligations under this Agreement for more than
six (6) months;
(v) at any time by ART upon a Change in Control of GEMS, provided that
a Notice of such Change in Control shall be provided to ART as soon
as is permitted, but in no event more than thirty (30) days after
such Change in Control. For the purposes of this subsection
15.2(v), and notwithstanding Section 1.2 of this Agreement, the
term "Change in Control" shall mean: (i) consolidation or merger of
GEMS with or into any entity (other than a consolidation or merger
with or into an Affiliate of GE); (ii) the sale, transfer or other
disposition of all or substantially all of GEMS' assets in a single
transaction or a series of related transactions (other than to an
Affiliate of GE); and (iii) the acquisition by any entity, or group
of entities acting in concert (other than an entity or group of
entities that is an
26
Affiliate or Affiliates of GE), of beneficial ownership of fifty
percent (50%) or more (or such lesser amount that constitutes
control) of the outstanding voting securities or other voting
equity interests of GEMS (in the event that GEMS is or becomes a
separate legal corporate entity) in a single transaction or a
series of related transactions; or
(vi) at any time by GE upon a Change in Control of ART, provided that a
Notice of such Change in Control shall be provided to GE as soon as
is permitted, but in no event more than thirty (30) days after such
Change in Control.
15.3 Effect of Termination
Upon the termination of this Agreement the Parties agree that the following
shall occur:
(i) each Party shall immediately pay to the other Party all fees,
amounts and other charges as have become due and earned under this
Agreement as of the date of termination;
(ii) any termination of this Agreement shall result in the termination
of all ongoing work pursuant to this Agreement and the termination
of such work shall be effective as of the date of termination of
this Agreement;
(iii) the Parties shall fulfill any commercial orders for SoftScan
Systems that have been placed and accepted prior to the date of
termination of this Agreement;
(iv) the licenses granted under this Agreement shall be terminated;
(v) ART shall retain ownership of and may use and license the use of
ART SoftScan Technology and ART Background Technology
notwithstanding such termination and regardless of which Party
terminates;
(vi) GE shall retain ownership of and may use and license the use of GE
Technical Information notwithstanding such termination and
regardless of which Party terminates;
(vii) GE shall immediately return to ART all ART SoftScan Technology and
ART Background Technology (including Confidential Information of
ART) that GE received pursuant to this Agreement and the
Confidentiality Agreement;
(viii) ART shall immediately return to GE all GE Technical Information and
Confidential Information of GE that ART received pursuant to this
Agreement and the Confidentiality Agreement;
(ix) GE shall remove the ART SoftScan Trade-marks from and deliver up to
ART or its duly authorised representatives after GE's sale of all
inventory of SoftScan Systems in GE's possession as of the date of
termination, all materials including signs and advertising
materials in its possession, custody or control upon which the ART
SoftScan Trade-marks appear (except for documents not for public
display or reasonably required for archival purposes); and
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(x) ART shall remove the GE Trade-marks from and deliver up to GE or
its duly authorised representatives all materials including signs
and advertising materials in its possession, custody or control
upon which the GE Trade-marks appear (except for documents not for
public display or reasonably required for archival purposes).
15.4 Survival
All obligations of each Party under this Agreement which expressly or by their
nature survive termination or Transfer of this Agreement shall continue in full
force and effect subsequent to and notwithstanding such termination or Transfer
and until they are satisfied or by their nature expire. The following Sections
of this Agreement shall also survive the termination or Transfer of this
Agreement: Article 11 (Confidential Information) and Article 12 (Representations
and Warranties).
15.5 Other Relief
Any termination under Article 15 shall be without prejudice to any other rights
(including any right of indemnity), remedy or relief vested in or to which one
Party may otherwise be entitled against the other Party. The foregoing remedy
shall not exclude any other remedies which either Party may have at law or in
equity by reason of the default, breach or non-observance by the other Party of
any provision of this Agreement. Any refusal to renew or termination of this
Agreement shall not unto itself give rise to any liability for indemnity or
other compensation to the Party refusing to renew or terminating this Agreement,
and the Party which is not terminating or refusing to renew this Agreement
expressly waives any right to indemnity or compensation if the other Party
terminates this Agreement or exercises its right not to renew this Agreement as
provided for herein.
ARTICLE 16
GENERAL
16.1 Entire Agreement
This Agreement together with any and all Schedules constitutes the entire
agreement between the Parties to this Agreement with respect to the subject
matter of this Agreement and cancels and supersedes any prior understandings and
agreements between the Parties with respect to such subject matter (including,
without limitation, the Confidentiality Agreement). However, the Parties agree
that Confidential Information of ART provided to GE pursuant to the
Confidentiality Agreement shall be governed by Article 11 of this Agreement.
Neither Party shall be bound by any oral or other agreement or understanding
which is not expressly contained herein. There are no representations,
warranties, terms, conditions, undertakings or collateral agreements, express,
implied or statutory, between the Parties other than those expressly set forth
in this Agreement. This Agreement may only be amended or modified by express
written consent of the Parties.
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16.2 Compliance with Applicable Laws
Each Party and its Affiliates shall, in the performance of all of their rights
and obligations under this Agreement, and as may be assigned to them by the
SoftScan Steering Committee hereunder (including in the use, storage, handling
and disposal of any and all materials received from the other Party) comply with
all applicable laws of the territory in which it carries on any activities under
or in furtherance of this Agreement and with all orders, decrees, policies and
directives issued by any applicable Regulatory Authorities. Nothing in this
Agreement shall be construed as requiring either Party to perform its
obligations hereunder, where such performance shall constitute an infringement,
contravention, breach or interference with any Third Parties' rights (including
intellectual property, statutory and common law rights), any order of a court or
tribunal of competent jurisdiction or final judgement or decree or any order of
a Regulatory Authority in any jurisdiction where such Party affected by such
order, judgement or decree has taken all reasonable action to contest and appeal
such order, judgement or decree, and such order, judgement or decree shall not
have been vacated, discharged or stayed within the applicable appeal period.
Should either Party be or become aware of any applicable laws which are
inconsistent with the provisions of this Agreement, such Party shall promptly
provide Notice to the other Party of such inconsistency. In such event, the
other Party may, at its option, either waive the performance of such
inconsistent provisions or negotiate with the Party giving Notice to make
changes in such provisions to comply with applicable laws and regulations.
16.3 Assignment
This Agreement shall enure to the benefit of and be binding upon the respective
successors and permitted assigns of the Parties and the name of a Party
appearing herein shall be deemed to include the names of its successors and
assigns, provided always that nothing herein shall permit any assignment by
either Party except as expressly provided herein. Neither Party shall Transfer
this Agreement, any rights or obligations hereunder or any technology owned by
the other Party either in whole or in part without the prior written consent of
the other Party; provided that GE may make any such Transfer to its Affiliates
without ART's consent.
16.4 Amendment and Waiver
No amendment to this Agreement shall be valid or binding unless set forth in
writing and duly executed by all of the Parties to this Agreement. Failure on
either Party's part to exercise any rights or privileges granted to it or to
insist upon full performance of all obligations or duties assumed by the other
Party shall not be construed as waiving any such rights, privileges, obligations
or duties or creating any custom contrary thereto. No waiver of any breach of
any provision of this Agreement shall be effective or binding unless made in
writing and signed by the Party purporting to give the same and, unless
otherwise provided in the written waiver, shall be limited to the specific
breach waived. Without limiting the foregoing, a course of conduct or of
performance does not effect a waiver or modification of this Agreement unless
ratified in writing.
16.5 No Partnership, Independent Contractors
Both Parties shall, at all times during the performance of this Agreement,
remain as independent contractors, and nothing in this Agreement shall be
construed or interpreted to make the Parties
29
partners, joint venturers or agents of one another for any purpose whatsoever.
Without limiting the foregoing, the Parties are and will at all times remain
independent contractors and are not and shall not represent themselves to be the
agent, joint venturer, partner or franchisee of the other Party or to be related
to the other Party other than as independent contractors. Nothing in this
Agreement will be deemed to constitute any Party the partner of the other Party,
and it is not the intention of the Parties to create, nor will this Agreement be
construed to create, a partnership. No representations will be made or acts
taken by any Party which could establish any apparent relationship of agency,
joint venture or partnership and the Parties shall not be bound in any manner
whatsoever by any agreements, warranties or representations made by any of the
other Parties to any other Person or with respect to any other action of any of
the other Parties except as may be expressly provided for herein. No acts of
assistance given by one Party to another Party shall be construed to alter this
relationship. Without limiting the foregoing, neither Party shall represent
itself to be the agent, joint venturer or partner of the other Party or to be
related to the other Party other than as its independent contractor. Neither
Party shall establish any bank account, make any purchase, apply for any loan or
credit or incur or permit any obligation to be incurred in the name of or on the
credit of the other Party without the other Party's prior consent. Neither Party
is authorized, in the name of or on behalf of the other, to transact any
business, incur any obligation, undertake any activities, or otherwise to bind
the other in any manner whatsoever. No acts of assistance given by one Party to
the other shall be construed to alter this relationship.
16.6 Invalidity
If any of the provisions contained in this Agreement are found by a court of
competent jurisdiction to be invalid, illegal or unenforceable in any respect,
the validity, legality or enforceability of the remaining provisions contained
herein shall not be in any way affected or impaired thereby.
16.7 Force Majeure
No Party shall be responsible to any other Party for non-performance or delay in
performance (other than any payment of money) occasioned by any causes beyond
its reasonable control including, without limitation, fire, flood, accident,
riot, acts or omissions of any other Party, acts of civil or military authority,
strikes, lockouts, embargoes, insurrections, civil commotion, terrorism or Acts
of God. If any such delay occurs, any applicable time period shall be
automatically extended for a period equal to the time lost. Each Party must use
its best efforts to avoid any such failure or delay and must resume performance
under this Agreement as promptly as possible after any such failure or delay. If
either Party becomes aware of any such factor that would cause a delay or
failure in performance, it shall give Notice to the other Party of the existence
of such factor and probable length of continuation thereof.
16.8 Severability
If in any jurisdiction, any provision of this agreement or its application to
any Party or circumstance is restricted, prohibited or unenforceable, such
provision shall, as to such jurisdiction, be ineffective only to the extent of
such restriction, prohibition or unenforceability without invalidating the
remaining provisions of this Agreement and without affecting the validity or
enforceability of such provision in any other jurisdiction or its application to
other
30
Parties or circumstances. Any provision of this Agreement that provides for a
limitation of liability, disclaimer of warranties or exclusion of damages, is
intended by the Parties to be severable and independent of any other such
provision and to be enforced as such. If any limited remedy provided herein is
determined to have failed of its essential purpose, all limitations of liability
and exclusions of damages set forth herein shall nonetheless remain in effect.
16.9 Dispute Resolution
If any Dispute cannot be resolved pursuant to Section 5.3, either Party within
thirty (30) days after the end of such sixty (60) day period prescribed in
Section 5.3, may demand that the Dispute be submitted to binding arbitration by
notifying the other Party, in writing (the "Arbitration"). The Arbitration shall
be conducted in the City of Xxxxxxx, Xxxxxxx, Xxxxxx, before a single
arbitrator. The arbitrator shall be appointed, and the Arbitration shall be
conducted, under the terms and conditions of the Arbitrations Act (Ontario) in
effect as of the Effective Date, provided that the arbitrator shall have no
power to award punitive, exemplary or consequential damages to any Party to the
Arbitration. The arbitrator's decision shall be final, conclusive and binding on
the Parties to the Arbitration, and shall be the exclusive forum for any claims
arising out of this Agreement or the subject matter hereof.
16.10 Notices
Any notice or other writing required or permitted to be given under this
Agreement or for the purposes of this Agreement ("Notice") to any Party shall be
in writing sufficiently given if: (i) delivered personally, (ii) transmitted by
fax or other form of recorded communication tested prior to transmission, (iii)
sent by registered or certified mail return receipt requested, postage prepaid,
or (iv) sent by commercial overnight courier with written verification of
receipt to such Party:
To GE:
Name: General Counsel
Address: GE Medical Systems
0000 X. Xxxxxxxxx Xxxx X-000
Xxxxxxxx, XX 00000
[CONFIDENTIAL]
With a copy to:
[CONFIDENTIAL]
To ART:
Name: General Counsel
Address: ART Advanced Research Technologies Inc.
0000 Xxxxxx- Xxxxx Xxxxxxxxx,
Xxxxx-Xxxxxxx, Xxxxxx,
Xxxxxx, X0X 0X0
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Telephone: 000-000-0000
Fax: 000-000-0000
With copies to:
[CONFIDENTIAL]
All communications will be sent to the addresses set forth above or to such
other address as may be designated by a Party by giving Notice to the other
Party pursuant to this Section. Any Notice personally delivered to the Party to
whom it is addressed as provided in this Section shall be deemed to have been
given and received on the day it is so delivered at such address, provided that
if such day is not a Business Day then the Notice shall be deemed to have been
given and received on the Business Day next following such day. Any Notice
transmitted by fax or other form of recorded communication shall be deemed given
and received on the first Business Day after its transmission. Any Notice given
by mail shall be deemed to be given and received three (3) calendar days after
having been sent. Any Notice given by overnight courier shall be deemed to be
given three (3) calendar days after deposit with carrier.
16.11 Counterparts
This Agreement may be executed in any number of counterparts and each such
signed counterpart shall for all purposes be deemed to be an original.
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IN WITNESS WHEREOF the Parties have executed this Agreement as of the date first
written above.
ART ADVANCED RESEARCH TECHNOLGIES INC.
By:
--------------------------------------------
Name: Xxxxxxxxx Xxxxxxxx
Title: President and Chief Executive Officer
GENERAL ELECTRIC COMPANY
By:
--------------------------------------------
Name: [CONFIDENTIAL]
Title: [CONFIDENTIAL]
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SCHEDULE A
ART SoftScan Intellectual Property Rights and Contracts
[CONFIDENTIAL]
34
