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Exhibit 10.2
LICENSE AGREEMENT
This
LICENSE AGREEMENT (the "License Agreement") is by and
between
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Implant Sciences Corporation, a Massachusetts corporation
having offices at 107 Audubon Road, Wakefield, MA 01880-1246, USA
("Implant Sciences")
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and
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International Brachytherapy, s.a., having offices at Zone
Industrielle C, 7180 Seneffe, Belgium
("IBt")
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made
and effective on the date set forth on the signature page
hereof.
RECITALS
WHEREAS, IBt is the owner of certain intellectual property
identified below; and
WHEREAS, IBt is willing to grant Implant Sciences 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 Ytterbium Business. This phrase shall mean the business
of manufacturing, marketing and selling products that include, or
services that use or relate to, radioactive ytterbium for the
treatment of cancer and other diseases.
1.02 Ytterbium Intellectual Property Rights. This phrase
shall mean the right to make, have made, use, import, export and
sell products and services in the field of the Ytterbium Business
only , in
accordance with: (i) U.S. Patent Number 6,060,036; (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 IBt's know-how
acquired from Implant Sciences for practicing the subject matter of
said patent claims in the field of the Ytterbium Business
only.
1.03 Ancillary Intellectual Property Rights. This phrase
shall mean the right to make, have made, use, import, export and
sell products and services in the field of the Ytterbium Business
only, as covered by any claims, other than claims included in the
Ytterbium Intellectual Property Rights as defined above, of any
U.S. or foreign patent for which Implant Sciences, as of the
effective date of this Agreement, has transferred
ownership to IBt by assignment or granted a nonexclusive license to
IBt, 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, but only to the extent that IBt has rights
thereto.
1.04 Licensor. The term Licensor shall mean IBt. Following
the assignment of or transfer of interest in any or all of the
Ytterbium 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 Implant
Sciences, and any successor to this License Agreement.
1.06 BMI. The term BMI shall mean Best Medical
International, Inc.
2.01 Grant of Exclusive License. Licensor hereby grants
Licensee a perpetual, worldwide, royalty-free, exclusive license to
the Ytterbium Intellectual Property Rights. Licensor is hereby
excluded from practicing the Ytterbium 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 Ytterbium 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 6,060,036, and/or any
Ytterbium 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 Ytterbium Intellectual Property Rights
and/or the Ancillary Intellectual Property Rights to a third party.
If Licensor attempts to grant rights or transfer an ownership
interest in the Ytterbium 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 Ytterbium
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 Ytterbium 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 Ytterbium Intellectual Property Rights
and/or the Ancillary Intellectual Property Rights.
4. Consideration
In
consideration for the Grant and obligations undertaken by
Licensor, Implant Sciences shall pay IBt a one-time fee of Ten
Dollars ($10.00). Said fee shall be paid by 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 Ytterbium 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)
IBt,
and Implant Sciences as to any successor in interest to Licensee,
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 Ytterbium
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 Ytterbium 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
Licensor: Attention:
Mr. François 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
Licensee:
Attention: ___________________
Implant Sciences
Corporation
107 Audubon
Road
Wakefield, MA 01880-1246,
USA
Email:
Fax:
7.05
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