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Exhibit 10.1
LICENSE AGREEMENT
This
LICENSE AGREEMENT (the "License Agreement") is by and
between
Implant Sciences Corporation
, a Massachusetts corporation having offices at 107 Audubon Road,
Wakefield, MA 01880-1246, USA ("Implant
Sciences")
and
International Brachytherapy, s.a., having offices at Zone
Industrielle C, 7180 Seneffe, Belgium
("IBt")
made
and effective on the date set forth on the signature page
hereof.
RECITALS
WHEREAS, Implant Sciences is the owner of certain
intellectual property identified below; and
WHEREAS, IBt wishes to acquire the Xenation Business of
Implant Sciences, as defined below, and to utilize such
intellectual property in its business; and
WHEREAS, Implant Sciences is willing to grant IBt licenses
to utilize the intellectual property on the terms and conditions
hereinafter set forth;
AGREEMENT
NOW, THEREFORE, the parties, intending to be legally bound,
agree as follows:
1. Definitions
As
used in this License Agreement, the following phrases shall
have the meanings set forth below:
1.01 Xenation Business. This phrase shall mean using
Xenation machines to implant Xenon-124 atoms and other ions into
cores used to produce low dose rate brachytherapy seeds and other
radioactive sources for the treatment of diseases.
1.02. Xenation Intellectual Property Rights. This phrase
shall mean the right to make, have made, use, import, export and
sell products and services within the scope of any and all claims
reciting xenon in: (i) U.S.
Patent Number 6,183,409, for which the pertinent claims are 9
through 13; (ii) any foreign counterparts of the aforementioned
patent; and (iii) any reissue, continuation, divisional or
continuation-in-part applications claiming priority directly or
indirectly from any such patent, and such patents as may issue from
any such application, and also including the right to claim
priority under any applicable statute, treaty or convention based
on any of said patent applications. Also within the meaning of this
phrase is the right to Licensor's know-how for practicing the
subject matter of said patent claims and for operating Xenation
equipment to implant Xenon-124 atoms and other ions into various
materials.
1.03. Ancillary Intellectual Property Rights. This phrase
shall mean the right to make, have made, use, import, export and
sell products and services produced by implanting xenon atoms or
ions into materials as covered by any claims, other than claims
included in the Xenation Intellectual Property Rights as defined
above, of any U.S. or foreign patent for which Implant Sciences, at
the time of the later of the effective date of this Agreement or
the Assignment Effective Date, as defined below, has the power to
grant a nonexclusive license, including claims 1 through 8 of U.S.
Patent 6,183,409, and any reissue, continuation, divisional or
continuation-in-part applications claiming priority directly or
indirectly from any such patent, and such patents as may issue from
any such application.
1.04 Licensor. The term Licensor shall mean Implant
Sciences. Following the assignment of or transfer of interest in
any or all of the Xenation Intellectual Property Rights and the
Ancillary Intellectual Property Rights, the Term Licensor shall
mean the successor in interest.
1.05 Licensee. The term Licensee shall mean IBt, and any
successor to this License Agreement.
1.06 BMI. The term BMI shall mean Best Medical
International, Inc.
2.
Grant
2.01 Grant of Exclusive License. Licensor hereby grants
Licensee a perpetual, worldwide, royalty-free, exclusive license to
the Xenation Intellectual Property Rights. Licensor is hereby
excluded from practicing the Xenation Intellectual Property
Rights.
2.02 Grant of Non-Exclusive License. Licensor hereby grants
Licensee a perpetual, worldwide, royalty-free, non-exclusive
license to the Ancillary Intellectual Property Rights.
3.
Assignment and
Sublicensing
3.01 Assignability by Licensee. Licensee shall have the
right to assign the rights and licenses granted in this License
Agreement to a purchaser of its Xenation Business.
3.02 Sublicensing Right. Licensee shall have the power to
grant sublicenses based on the aforesaid licenses.
3.03 Attachment of Licenses.
Any assignment by Licensor of U.S. Patent 6,183,409, and/or any
Xenation Intellectual Property Rights, and/or any Ancillary
Intellectual Property Rights, shall be expressly subject to the
licenses granted under this License Agreement. Licensor shall give
Licensee two weeks notice of its intention to grant rights or
transfer an ownership in the Xenation Intellectual Property Rights
and/or the Ancillary Intellectual Property Rights to a third party.
IBt hereby acknowledges receipt of Implant Sciences’
intention to grant rights or transfer an ownership in the Xenation
Intellectual Property Rights and/or the Ancillary Intellectual
Property Rights to BMI. If Licensor attempts to grant rights or
transfer an ownership interest in the Xenation Intellectual
Property Rights and/or the Ancillary Intellectual Property Rights
to a third party without reciting and obligating the grantee or
transferee to respect the interest of Licensee in any grant or
transfer document relating thereto, such attempted grant or
transfer shall be null and void.
3.04 Security Interest and Recordation. Licensor hereby
grants to Licensee a Security Interest in the Xenation Intellectual
Property Rights and Ancillary Intellectual Property Rights in the
form of the Security Agreement attached as Exhibit SA. Licensor
hereby grants to Licensee the power to record with and limited to
the U.S. Patent and Trademark Office and the patent office of any
other jurisdiction for which there is a patent or patent
application of the Xenation Intellectual Property Rights, and/or
Ancillary Intellectual Property Rights.
3.05 Third-Party Beneficiary. Licensee shall be a
third-party beneficiary in any permitted grant or transfer by
Licensor of any of the Xenation Intellectual Property Rights and/or
the Ancillary Intellectual Property Rights.
4. Consideration
In
consideration for the Grant and obligations undertaken by
Licensor, IBt shall pay Implant Sciences a one-time fee of Ten
Dollars ($10.00). Said fee shall be paid to Implant Sciences
upon closing of the sale of its Xenation Business to
IBt.
5. Enforcement of Intellectual Property Rights. In the event
that either party hereto becomes aware that anyone is infringing
any part of the Xenation Intellectual Property Rights, then it
shall promptly notify the other and provide any supporting evidence
of which that party has knowledge. Licensee shall have the right
but not the obligation to initiate litigation to terminate the
infringement, at Licensee's expense, and, if so required, to sue in
Licensor's name or join Licensor as a plaintiff. In connection with
the foregoing:
(a)
Licensee
shall keep Licensor informed as to developments.
(b)
Implant
Sciences and any successor in interest shall provide such
reasonable cooperation to Licensee as Licensee shall reasonably
request, at Licensee's expense, including by using commercially
reasonable efforts to provide documents, witnesses, and any other
reasonably obtainable evidence.
(c)
In
the event that the termination of the litigation results in the
payment of any damages, royalties, or other cash consideration to
either Licensee or Licensor, Licensee shall receive such
consideration.
6. Maintenance of
Patents
Licensor
shall maintain in force all patents of the Xenation
Intellectual Property Rights by paying all government fees at
least one month before they become due. Licensor shall
immediately report such payments to Licensee. If Licensor
should fail to report any such payment one month before a due
date, Licensee shall be entitled to make such payment and to
be reimbursed for the cost thereof plus a handling charge of
100% of the total cost incurred.
7. General
7.01. Term. This License Agreement shall become effective as
of the date first written above and shall continue in force until
six years following the expiration of the last-to-expire patents
included in the Xenation Intellectual Property Rights and the
Ancillary Intellectual Property Rights.
7.02. Termination. This License Agreement may be terminated
for breach by either party of any material provision of this
License Agreement if written notice of breach has been given and
the breach has not been cured within sixty days of the receipt of
such notice.
7.03. Post-Termination. Termination of this License
Agreement shall not relieve either party of any obligations which
accrued prior to termination of this License Agreement and which
have not been fulfilled at the time of termination. Such
obligations include the duty to pay the other party for litigation
expenses or awards, as set forth in Section 5.(c) of this License
Agreement.
7.04. Correspondence. All notices, reports, or requests
shall be given by one party in writing to the other by certified
mail, electronic mail, or fax to the addresses set forth below or
to such other address as may be designated by a party by
notice:
If
to
Licensee: Attention:
Mr. Francois Blondel
Chief
Executive Officer
International
Brachytherapy, s.a.
Zone Industrielle C, 7180
Seneffe, Belgium
Email:fblondel@ibt.be
Fax: +32 64 52 08
01
If
to Licensor: &
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