THIS LICENSE
AGREEMENT (“Agreement”) is entered into and effective
this 1 st
day of October, 2000, by and between
sutura, Inc., a Delaware corporation having a place of business at
17080 Newhope Street, Fountain Valley, California 92708
(“Sutura”) and Sucor, Inc., a California corporation
having a place of business at 3520 W. Warner Avenue, Santa Ana,
California 92704 (“Sucor”).
A. WHEREAS,
Sutura has acquired certain intellectual property rights relating
to suturing devices and suturing accessories, which are defined
below as “Sutura Rights”;
B. WHEREAS,
the Sutura Rights include certain rights owned by Sterilis, Inc., a
California corporation, which have been exclusively licensed to
Sutura for making, having made, using, selling (or otherwise
disposing of), offering for sale and importing Licensed Products
solely within Sutura’s Field of Use;
C. WHEREAS,
Sucor desires to obtain an exclusive, worldwide license under the
Sutura Rights to make, have made, use, sell, offer for sale, and
import suturing devices and suturing accessories solely for closing
varicose veins, and Sutura is willing to grant such a license to
Sucor; and
D. WHEREAS,
prior to its execution, this Agreement was reviewed by each
party’s attorneys and approved by each party’s Board of
Directors.
NOW, THEREFORE, in
consideration of the premises, mutual promises and covenants
contained herein, the parties agree as follows:
For purposes of
this Agreement, the following terms shall have the meanings set
forth below:
A. “Licensed
Products” shall mean suturing devices capable of passing one
or more sutures through tissue, and suturing accessories which aid
the suturing process, such as, but not limited to, knot pushers,
suture cutters, and suture ties or clips.
B. “Sucor’s
Field of Use” shall mean solely venous occlusion, including
varicose vein closure.
C. “Sutura’s
Field of Use” shall mean the vascular suturing field or
market, excluding the field or market of suturing in obstetrics,
gynecology and urology.
D. “Sutura/Sterilis
Agreement” shall mean that certain agreement between Sutura,
Inc. and Sterilis, Inc. dated May 25, 2000, entitled
“Cross-License Agreement.”
E. “Sutura
Patents” shall mean (1) the patent applications listed
on Schedule A, (2) all patent applications claiming
priority therefrom, including all divisionals,
continuations
and
continuations-in-part thereof, and in connection with provisional
applications, all regular patent applications claiming the benefit
thereof, (3) all patents which may be granted on the foregoing
patent applications, and (4) all reissues, re-examinations,
and extensions thereof.
F. “Sutura
Licensed Patents” shall mean (1) the patent applications
listed on Schedule B, (2) all regular patent applications
claiming the benefit of the applications listed on Schedule B
and which are licensed to Sutura under the Sutura/Sterilis
Agreement, (3) all patents which may be granted on the
foregoing patent applications and which are licensed to Sutura
under the Sutura/Sterilis Agreement, and (4) all reissues,
re-examinations, and extensions thereof which are licensed to
Sutura under the Sutura/Sterilis Agreement.
G. “Sutura
Information” shall mean all of Sutura’s trade secrets,
proprietary and/or confidential information, know-how, and other
technology and information relating to the Licensed Products which
is in existence as of the effective date of this
agreement.
H. “Sutura
Licensed Information” shall mean all of the Sterilis’
trade secrets, proprietary and/or confidential information,
know-how, and other technology and information relating to the
Licensed Products which is in existence as of the effective date of
this Agreement, and which Sterilis has licensed to Sutura under the
Sutura/Sterilis Agreement.
I. “Sutura
Rights” shall mean the combination of Sutura Patents, Sutura
Licensed Patents, Sutura Information, and Sutura Licensed
Information, or any one of them.
A. Sutura
hereby grants to Sucor, and Sucor accepts an exclusive, worldwide
license under the Sutura Patents and Sutura Information to make,
have made, use, sell (or otherwise dispose of), offer for sale and
import Licensed Products solely within Sucor’s Field of
Use.
B. Sutura
hereby grants to Sucor, and Sucor accepts an exclusive, worldwide
sublicense under the Sutura Licensed Patents and Sutura Licensed
Information to make, have made, use, sell (or otherwise dispose
of), offer for sale and import Licensed Products solely within
Sucor’s Field of Use.
C. Sucor
shall have the right sublicense any of the rights granted to Sucor
in this Agreement.
A. As
consideration for the license and sublicense granted herein, Sucor
shall provide the following to Sutura upon execution of this
Agreement:
|
|
1.
|
|
a
non-refundable license fee of One Hundred Thousand Dollars
($100,000); and
|
|
|
|
|
|
|
|
2.
|
|
117,647 shares of common stock of
Sucor.
|
Sucor and its
sublicensees, if any, shall maintain the confidentiality of the
Sutura Information and Sutura Licensed Information, and shall not
disclose such information without the prior written consent of
Sutura, which shall not be unreasonably withheld. This obligation
of confidentiality shall not apply to (1) Sutura Information
which is or becomes part of the public domain
|
