DEVELOPMENT
AGREEMENT
THIS DEVELOPMENT
AGREEMENT, dated as of March 15, 2004, (hereinafter referred to as
“Agreement”), is entered into between P. Michael , a
sole proprietor (“WILLIAMS”), having a place of
business located at 5281 Belford Estate Road, Pollack Pines, CA
95726, and Remedent USA Inc., a Nevada corporation
(“REMEDENT”), having a principal place of business
located at Xavier de Cocklaan 42, Deurle, Belgium, 9831.
WITNESSETH
WHEREAS, M&A
owns or has certain rights and know-how relating to dental
products.
WHEREAS, REMEDENT
owns or has rights in certain rights and know-how relating to
dental products.
WHEREAS, REMEDENT
desires to financially support the development by WILLIAMS of
dental devices for use by REMEDENT for the purposes of whitening
teeth and mouth illumination
NOW, THEREFORE, in
consideration of the foregoing premises and the mutual covenants
herein contained, the parties hereby agree as follows:
ARTICLES
For purposes of
this Agreement, the terms defined in this article shall have the
respective meanings set forth below:
|
1.1
|
“ Field
of Use ” shall mean methods, devices and compositions of
matter for use in the whitening of teeth, curing of composite
materials in the mouth, and for mouth illumination.
|
|
1.2
|
“
Development Period ” shall mean the period commencing
on March 22, 2004 and unless terminated earlier as provided in this
Agreement or extended by the mutual written agreement of the
parties, expiring August 31, 2004.
|
|
1.3
|
“
Development Program ” shall mean the development
program described generally in the Development Proposal.
|
|
1.4
|
“
Development Proposal ” shall mean the development plan
attached hereto as Exhibit A, as revised from time-to-time by the
written agreement of the parties.
|
|
1.5
|
“
Development Program Intellectual Property ” shall mean
and include any invention, patent, patent application, work of
authorship, trade dress, trademark, trade secret, design,
drawing,
|
method, process,
specification, and formulae, which is made, conceived, authored or
reduced to practice, whether individually or jointly, by or on
behalf of either or both of REMEDENT and WILLIAMS, in connection
with the performance of the Development Program.
|
1.6
|
“
Internal Research Purposes ” shall mean the
furtherance of skills or knowledge of a person or persons employed
by WILLIAMS, for confidential use of such skills and knowledge
during the course of such persons employment with WILLIAMS.
Disclosure to third parties, or use thereby, of Intellectual
Property whose use by WILLIAMS is authorized only for Internal
Research Purposes is strictly prohibited.
|
|
1.7
|
“
Person ” shall mean an individual, corporation,
partnership, trust, business trust, association, joint stock
company, joint venture, pool, syndicate, sole proprietorship,
unincorporated organization, governmental authority or any other
form of entity not specifically listed herein.
|
|
1.8
|
“
WILLIAMS Intellectual Property ” shall mean and
include any invention, patent, patent application, work of
authorship, trade dress, trademark, trade secret, techical
know-how, design, drawing, method, process, specification, and
formulae, which is or has been made, conceived, authored or reduced
to practice, by or on behalf of WILLIAMS, except in connection with
the performance of the Development Program.
|
|
|
1.9
|
“
Territory ” shall mean worldwide.
|
|
2.
|
DEVELOPMENT
PROGRAM
|
|
|
|
|
|
|
|
2.1
|
Conduct of
Development Program . During the Development
Period, WILLIAMS shall exercise commercially reasonable efforts to
conduct the Development Program in accordance with the Development
Proposal. WILLIAMS shall conduct the Development Program in good
scientific manner, and in compliance in all material respects with
all requirements of applicable laws and regulations and all
applicable good laboratory and clinical practices. Because the
services to be performed are of an advisory or experimental nature,
WILLIAMS does not represent or warrant that the Development Program
in whole or in part will be successful or achieve the objectives
set forth in the Development Proposal.
|
|
2.2
|
Funding
. In consideration
for the services to be performed by WILLIAMS, REMEDENT shall pay
WILLIAMS total fees not to exceed eighty-five thousand U.S. Dollars
($85,000) for Phase I as described in the Development Proposal. The
fees for Phase II shall be determined during Phase I and shall be
funded subject to the
|
terms and
conditions of this Agreement by letter amendment to this Agreement.
WILLIAMS shall not incur expenses in conducting the Development
Program in excess of such total amount, and REMEDENT shall have no
obligation to reimburse WILLIAMS for expenses incurred in excess of
such total amount, unless otherwise expressly agreed to in writing
by both parties. If it appears to WILLIAMS that the Development
Program cannot be completed without incurring expenses in excess of
such total amount, WILLIAMS shall promptly determine and notify
REMEDENT within five (5) business days, and REMEDENT shall
determine whether to (a) discontinue the Development Program when
such total amount has been spent; (b) authorize WILLIAMS to spend
additional amounts; or, (c) revise the scope of the Development
Program as appropriate. Such research fees are non-refundable and
non-creditable against future royalties, and are payable as
follows:
|
|
2.2.1
|
REMEDENT
shall pay to WILLIAMS an advance payment of forty-two thousand U.S.
Dollars ($85,000) immediately upon execution of this Agreement.
Upon receipt of such advance payment, WILLIAMS shall initiate work
on the Development Program and deliver to REMEDENT a paid-memo
invoice covering the advance payment.
|
|
|
2.2.2
|
All invoices
submitted by WILLIAMS to REMEDENT are due and payable, net 30
days.
|
|
2.3
|
Records
. WILLIAMS shall
maintain records, in sufficient detail and in good scientific
manner, which shall reflect all work done and results achieved in
the performance of the Development Program (including all data in
the form required under all applicable laws and regulations). To
enable its compliance with the rules and regulations of any
governing legal authority including, without limitation, a patent
authority of any country and the Food and Drug Administration,
REMEDENT shall be entitled to review, duplicate and distribute
copies of such records, on request therefor following reasonable
notice, subject to the confidentiality provisions of this
Agreement.
|
|
2.4
|
Reports
. During the term
of the Development Program, WILLIAMS shall keep REMEDENT generally
informed of the progress under the Development Program. Within
thirty (30) days following the expiration or termination of the
Development Program for Phase I, WILLIAMS shall prepare and provide
REMEDENT with a written report which shall describe the work
performed by WILLIAMS under the Development Program during Phase I.
Towards the latter part of Phase I WILLIAMS will prepare and
provide REMEDENT with a detailed budget and plan for the Phase II
development effort.
|
|
3.
|
INTELLECTUAL
PROPERTY RIGHTS
|
|
3.1
|
Ownership of
Intellectual Property . All Phase I Development
Program Intellectual Property conceived or made in whole or in part
on behalf of WILLIAMS, REMEDENT or jointly for both in connection
with the performance of the Development Program shall be solely
owned by REMEDENT. WILLIAMS further agrees that all employees and
other Persons acting on its behalf under the Development Agreement
shall be required to assign any rights they would otherwise hold in
such Development Program Intellectual Property to REMEDENT. If any
such person is under an existing obligation to assign their rights
in Development Program Intellectual Property to WILLIAMS, then
WILLIAMS agrees to take all reasonable and necessary steps to
ensure that such rights become assigned to REMEDENT.
|
|
3.2
|
Disclosure of
Development Program Intellectual Property. WILLIAMS
shall promptly disclose to REMEDENT the conception, authorship or
making of Development Program Intellectual Property, and shall
promptly make all information concerning such Development Program
Intellectual Property available to REMEDENT. Such disclosure will
be made in a mutually agreeable, and preferably written,
format.
|
|
3.3
|
I ntellectual
Property Rights . REMEDENT shall be responsible for the costs
and shall control the preparation, filing, prosecution, maintenance
and enforcement of all applications for registration or protection
of any aspect of the Phase I Development Agreement Intellectual
Property including, without limitation, patent applications and
patents. During the term of this Agreement, if REMEDENT elects not
to file a patent application in any country or to abandon any
pending application or granted patent in any country with respect
to patentable Development Program Intellectual Property, REMEDENT
shall provide adequate notice to WILLIAMS and give WILLIAMS the
opportunity to file or maintain such application or patent at its
own expense. If WILLIAMS so elects, it shall have the right to
file, prosecute and maintain such Invention in WILLIAMS’s
name, and WILLIAMS shall be the sole owner of such Development
Program Intellectual Property and the related patent application
and patent, if any. WILLIAMS and REMEDENT shall cooperate with the
other party and shall execute all lawful papers and instruments and
make all rightful oaths and declarations as may be necessary in
connection therewith. All patent expenses related to Phase II
development efforts are to be paid by WILLIAMS unless otherwise
agreed to by both parties.
|
|
3.4
|
License Grant
to WILLIAMS for Use Outside the Field of Use
. REMEDENT hereby
grants to WILLIAMS a perpetual, exclusive,
|
royalty-free
license (including the rights to grant sublicenses) to practice,
make, have made, use, import, sell, and offer to sell the
Development Program Intellectual Property for all purposes outside
of the Field of Use, throughout the Territory.
|
3.5
|
License Grant
to WILLIAMS for Internal Research Purposes . REMEDENT hereby grants to
WILLIAMS a perpetual, non-exclusive, royalty-free license
(including the rights to grant sublicenses) to practice and use the
Development Program Intellectual Property for Internal Research
Purposes within the Field of Use, at WILLIAMS owned or controlled
facilities, subject to the confidentiality provisions of this
agreement.
|
|
3.6
|
Right of First
Negotiation . For a period of five (5)
years after expiration or termination of the Development Program,
REMEDENT shall have a first right to negotiate the terms and
conditions of a mutually acceptable agreement by which any or all
of the rights received by WILLIAMS under the preceding Article 3.4
would either revert to REMEDENT, or be sublicensed to REMEDENT. If
the parties have not executed a mutually acceptable license within
ninety (90) days after one party notifies the other party of its
intention to negotiate, despite their good faith efforts, WILLIAMS
shall be free to negotiate and enter into licensing agreements with
another party or parties with respect to the rights granted it
under Article 3.4. At such point in time, the right of first
negotiation under this Article 3.6 shall be considered completely
dispelled and no longer in effect with respect to the subject
Invention. REMEDENT’s first right to negotiate under this
Article 3.6 shall expire after the five (5) year time period
specified above.
|
|
3.7
|
License Grant
to REMEDENT. To the extent required to
permit REMEDENT to make, use, sell, test or commercialize the
Development Program Intellectual Property, WILLIAMS hereby grants
REMEDENT a perpetual, non-exclusive, royalty-free license
(including the rights to grant sublicenses) to practice, make, have
made, use, import, sell, and offer to sell WILLIAMS Intellectual
Property for all purposes within the Field of Use, throughout the
Territory.
|
|
3.8
|
Technical
Know-How. For mutually agreeable
compensation, WILLIAMS agrees to cooperate with, and provide
technical assistance to, REMEDENT after the conclusion of the
Development Program as needed to permit REMEDENT to make, use,
sell, test or commercialize the Development Program Intellectual
Property.
|
|
3.8
|
DISCLAIMER OF
WARRANTIES . NOTHING IN THIS AGREEMENT
SHALL BE CONSTRUED AS A
|
REPRESENTATION
MADE OR WARRANTY GIVEN BY WILLIAMS OR REMEDENT THAT THE USE OF ANY
INVENTION OR DELIVERABLE UNDER THE DEVELOPMENT PROGRAM WILL NOT
INFRINGE THE PATENT OR PROPRIETARY RIGHTS OF ANY OTHER PERSON.
FURTHERMORE, WILLIAMS AND REMEDENT MAKES NO REPRESENTATIONS OR
WARRANTIES, EXPRESS OR IMPLIED, WITH RESPECT TO THE INVENTIONS,
DELIVERABLES, OR WORK PERFORMED, INCLUDING WITHOUT LIMITATION, ANY
WARRANTY OF MERCHANTABILITY OR FITNESS FOR A PARTICULAR
PURPOSE.
|
4.
|
EQUITY
INCENTIVE
&
ROYALTY
|
|
