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Exhibit 10.43
LICENSE AGREEMENT
This License Agreement (this "Agreement") made this 18th day of
November, 1996, by and between STS Biopolymers, Inc. ("STS"), a New
York corporation with its principal place of business at 336 Summit
Point Drive Henrietta, New York, and Micro Therapeutics, Inc.
("MTI"), a Delaware corporation with its principal place of
business at 1062-F Calle Negocio, San Clemente, California.
RECITALS:
A.
STS owns certain PATENTS, PROPRIETARY INFORMATION
and TRADEMARKS relating to formulation, production and manufacture
of coatings for medical devices.
B.
MTI wishes to acquire a license to such PATENTS and
TECHNICAL INFORMATION as they relate to COATED PRODUCTS.
NOW, THEREFORE, in consideration of the terms, conditions and
covenants set forth herein, the parties agree as follows:
1.0
Definitions :
For purposes of this Agreement, the following definitions shall
apply:
1.1
LICENSED PATENTS means United States Patent
Application to be filed by STS during calendar year 1996 for
lubricious hydrogel coating layers incorporating polymers other
than cellulose esters and United States Patents which issue
therefrom, their foreign counterparts, and any division,
continuation, continuation-in-part, reissue, or extension
thereof.
1.2
PROPRIETARY INFORMATION means unpublished research
and development information, market and business information,
unpatented inventions, know-how, trade secrets, manufacturing
information, formulations, and technical data in the possession of
STS at the effective date of this Agreement and thereafter which is
needed to produce LICENSED PRODUCTS
1.3
LICENSED MARKS means the marks STS and coating
identifying marks created by STS as used in connection with
marketing, promotion, and labeling of LICENSED PRODUCTS and related
services, including marks which are registered in any country and
marks acquired by usage and common law rights.
1.4
COATING means STS’ lubricious hydrophilic
coatings based upon the LICENSED PATENTS.
1.5
COATED PRODUCTS means any device used in vasculature
access procedures manufactured by or for MTI incorporating the
application of COATING on any part or component of each such
device.
1.6
NET SALES means the total of gross receipts, from
the sale of COATED PRODUCTS by MTI and any RELATED COMPANY in any
arm’s-length transactions to unrelated third party
distributors, retailers, or end-users, less discounts allowed to
distributors, discounts allowed dealers, refunds, replacements or
credits allowed to purchasers for return of COATED PRODUCT or as
reimbursement for damaged COATED PRODUCT, freight, postage,
insurance and other shipping charges, sales and use taxes, customs
duties and any other governmental charges imposed on the
production, importation, use or sale of COATED PRODUCTS except
income taxes. Should MTI sell COATED PRODUCTS in combination with
other products, then the NET SALES shall be based on the average
price charged during the applicable quarter by MTI for the COATED
PRODUCTS when separately invoiced or priced. In the event that the
COATED PRODUCTS have not been sold or invoiced during the
applicable quarter, the price for that quarter shall be the same as
the price at which COATED PRODUCT was sold in the most. recent
quarter prior thereto: If the COATED PRODUCTS have not been
separately invoiced or sold for two (2) quarters prior to the
applicable quarter, the NET SALES shall be computed by the ratio
that MTI’S cost of manufacturing the COATED PRODUCTS bears to
its cost of manufacturing the combination of products which the
COATED PRODUCT is a part, multiplied by the NET SALES of such
product.
1.7
RELATED COMPANY means any parent, subsidiary or
affiliate company of MTI or any subsidiary of any parent or
subsidiary of MTI and any company controlled or owned in part or
whole by MTI and/or any of its officers, directors or
shareholders.
1.9
CONFIDENTIAL INFORMATION means unpublished research
and development information, market and business information,
unpatented inventions, know-how, trade secrets, manufacturing
information, formulations, and technical data relating to
developments and improvements to the COATINGS conceived and/or
reduced to practice after the effective date of this
Agreement.
2.1
STS hereby grants to MTI a non-exclusive license
under the LICENSED PATENTS to the COATING in order for MTI to make,
have made, import, offer for sale, sell and use COATED PRODUCTS in
the TERRITORY.
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2.2
STS hereby grants to MTI a non-exclusive license to
use the PROPRIETARY INFORMATION in connection with making, having
made, importing, offering for sale, selling and using COATED
PRODUCTS in the TERRITORY.
2.3
STS hereby grants to MTI the right to use the
LICENSED MARKS in connection with COATED PRODUCTS. MTI agrees to
display prominently the legend "Coated with ULTRA SLIPCOAT™"
on all COATED PRODUCTS packaging. MTI has not registered and agrees
not to register LICENSED MARKS in any country except with the
written permission of STS. MTI shall mark COATED PRODUCT or its
packaging with the patent numbers as required by law or as
requested by STS and shall identify ULTRA SLIP-COAT™ as a
trademark of STS.
3.0
Royalties
3.1
As consideration for this grant of rights, MTI shall
pay to STS, upon acceptance of COATING by MTI for production of
COATED PRODUCT but no later than July 1, 1997, a nonrefundable
initial payment of $15,000.
3.2
In addition to the initial payment provided in
Paragraph 3.1 above, MTI agrees to pay to STS a royalty of four
percent (4%) of NET SALES. Such royalty shall be paid in U.S.
Dollars within forty-five (45) days after the end of each calendar
quarter and shall be payable on NET SALES during said calendar
quarter. Conversion to U.S. Dollars shall be at the rate published
in the Wall Street Journal on the last day of said calendar
quarter.
3.3
The obligation to pay royalties to STS under this
Article is imposed only once with respect to any single unit of
COATED PRODUCT.
3.4
Overdue payment to STS shall accrue interest, which
MTI shall pay monthly to STS, at three percent (3%) above the prime
rate posted by Chase Manhattan Bank, New York, NY, USA. Overdue
payments shall be considered a material breach of this Agreement
without regard to interest due or paid.
3.5
The payment of royalties as set forth in this
Article is in addition to the purchase price of the COATING and of
coating services which are to be separately established between STS
and MTI.
4.0
Accounting and Audit. Within forty-five
(45) days after the close of each calendar quarter ending on the
last day of March, June, September and December of each year, MTI
shall render to STS a written accounting with respect to all
royalty payments due hereunder. Such report shall indicate for each
such quarter the amount of NET SALES, if any, of COATED PRODUCTS
sold by MTI by type and
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quantity of each product sold within each country
of sale. MTI shall keep accurate records in sufficient detail to
enable the aforesaid payments to be determined. At STS’s
request and expense, MTI shall permit an independent certified
public accountant acceptable to MTI to have access during regular
business hours and upon reasonable notice to MTI to such of the
records of MTI as may be necessary to verify the accuracy of the
reports required under this Agreement.
5.0
Improvements . During the term of this
Agreement, STS and MTI may, at their option, disclose to the other
party any development or improvement relating to the COATINGS
conceived and/or reduced to practice by the disclosing party. The
grant of rights by STS or MTI to the other party under such
developments and improvements shall be subject to a separate
agreement then to be negotiated. STS and MTI agree to treat any
such disclosure as CONFIDENTIAL INFORMATION subject to Paragraph
6.0 below.
6.0
Confidentiality
6.1
MTI agrees to treat as confidential any and all
PROPRIETARY INFORMATION obtained from STS and MTI and STS agree to
treat as confidential any and all CONFIDENTIAL INFORMATION obtained
from the other party and to that end further agree:
(a)
not to disclose, disseminate, discuss or reveal to
anyone any of the PROPRIETARY INFORMATION or CONFIDENTIAL
INFORMATION, or any portion thereof, and not to directly or
indirectly use the PROPRIETARY INFORMATION or CONFIDENTIAL
INFORMATION or any portion t
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