Exhibit 10.4
DATED 1st September 2002
HALL EFFECT TECHNOLOGIES LIMITED
and
UNIPATH LIMITED
PATENT LICENCE AGREEMENT
2
CONTENTS
Clause .............................
Page
1.
Interpretation..................................................
1
2.
Grant...........................................................
2
3. Provision of
Know-How...........................................
2
4.
Improvements....................................................
2
5.
Infringement....................................................
2
6.
Royalty.........................................................
3
7. Maintentance of
Patents.........................................
4
8.
Confidentiality.................................................
5
9. Term and
Termination............................................
5
10. Force
Majeure...................................................
6
11.
Notices.........................................................
6
12. Assignment and
Subcontracting...................................
7
13.
Disputes........................................................
7
14.
General.........................................................
7
Schedules
1. Licensed
Patents..................................................
9
2. Sales
Estimate....................................................
10
Signatories..........................................................
11
THIS AGREEMENT is dated 1st
September, 2002
BETWEEN:
(1) HALL EFFECT TECHNOLOGIES
LIMITED (Registered No. 3344705) whose registered
office is at 22 The Office
Village, Exchange Quays, Salford Quays, Greater
Manchester (Licensor);
and
(2) UNIPATH LIMITED
(Registered No. 417198) whose registered office is at
Priory
Business Park, Bedford, MK44
3UP (Licensee).
BACKGROUND
(A) Following an R&D
agreement the parties wish to market products emanating
from their joint work. The
Licensor has agreed to grant and Licensee has agreed
to take a licence of certain
patent rights on the terms set out in this
agreement.
IT IS AGREED:
1. Interpretation
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1.1 In this
agreement:
Affiliate means, in relation
to Licensee, any company which is for the time
being a holding company of
that party or a subsidiary of that party or of any
such holding
company;
Field of Use means medical
devices for point of care testing or home testing for
measuring plasma or blood
coagulation;
Improvement means any
improvement enhancement or modification to the Licensed
Product or its method of
manufacture;
Licensed Patents means all
patent applications in the Territory which are
equivalent to and/or claim
priority from application [ ] and granted patents
issuing from such
applications together with all re-issues and extensions
of
such granted
patents;
Licensed Products means (i)
units of consumable test strips for use in
determination of blood or
plasma coagulation, or (ii) any other articles falling
within the scope of any of
the claims of any of the Licensed Patents;
Royalty Rate shall be
2% of the Net Sales Price of each Licensed Product;
Territory means world-wide;
and
Net Sales Price means the
amount invoiced by the Licensee or an Affiliate of the
Licensee to an independent
third party for sale of Licensed Product less any
customary trade, quantity or
cash discounts, free samples, inclusions in starter
packs and non-affiliated
broker's or agent's commissions actually allowed and
taken, amounts repaid or
credited by reason of rebate, rejection, return,
short-dating or outdating,
and less any import, value added or excise taxes and
customs duties levied and any
other governmental charges made as to production,
sale, transportation,
delivery or use to the extent such charges are paid by
the
Licensee or Affiliate and are
separately identified on invoices.
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1.2 The headings in this
agreement do not affect its interpretation.
1.3 The schedules and
appendices to this agreement form part of it.
2. Grant
2.1 Licensor hereby grants to
Licensee an exclusive licence under the Licensed
Patents in the Field of Use
to manufacture, have manufactured and to market,
distribute and sell or
otherwise, Licensed Products in the Territory;
2.2 Licensee shall have the
right to grant sub-licences under this agreement to
any of its Affiliates
provided that each Affiliate agrees to be bound by the
terms and conditions of this
agreement.
2.3 No further right or
licence is granted by Licensor to Licensee by this
agreement save as expressly
set out in this clause 2.
2.4 Licensor hereby
undertakes not during the term of this agreement itself
to
exploit the Licensed Patents
in the Territory in the Field of Use or to purport
to grant others the right to
do so, provided that this shall not prevent it
dealing in such Licensed
Products as are supplied to it by Licensee.
3. Provision of
Know-How
3.1 The Licensor shall in
addition make available to the Licensee such know-how
relating to the manufacture
of the Licensed Products as the Licensor has in its
possession and is reasonably
required for such purpose.
3.2 Such technology and
know-how furnished by Licensor under clause 3.1 shall be
used by Licensee only for the
purpose as set out clause 3.1 and shall be subject
to the provisions of clause
8.
<PAGE>
4. Improvements
4.1 If either party shall at
any time devise, discover or acquire rights in any
Improvement it shall to the
extent that it is not prohibited by law or by any
undertaking given to any
other person or by considerations relating to the
securing of a patent promptly
notify the other party in writing giving details
of it and provide its
Affiliates such information or explanations as its
Affiliates may reasonably
require to be able effectively to utilise the
Improvement and in any case
where the party applies for a patent in respect of
any such Improvement it shall
grant an irrevocable,non-exclusive, royalty-free,
worldwide licence to use and
exploit such application and any patent granted
pursuant to it.
4.2 Such information as is
provided by Licensor to Licensee under clause 4.1
shall be subject to the
provisions of clause 8.
5. Infringement
5.1 In the event
that:
(a) any Licensed Patent is
attacked or being a patent application is opposed;
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(b) any application for a
patent is made by or any patent is granted to a third
party by reason of which the
third party may be granted or may have been granted
rights which conflict with
any of the rights granted to Licensee or its
Affiliates under any Licensed
Patent;
(c) any unlicensed activities
are carried on by any third party which could
constitute an infringement of
any Licensed Patent (which for the purposes of
this clause 5 shall be deemed
to include any patent (whether in application or
granted) in respect of an
Improvement of Licensor); or
(d) any application is made
for a compulsory licence under any Licensed Patent,
the party to whose attention
such activity has been drawn shall promptly inform
the other party of the nature
and extent of such known activity, following which
Licensor and Licensee shall
as soon as practicable consult together to decide
what steps shall be taken to
resolve the activity.
5.2 Licensor and Licensee
shall take all steps as may be agreed by them under
clause 5.1, including the
institution of legal proceedings where necessary in
the name of one of the
parties or in the joint names of the Licensor and
Licensee as
appropriate.
5.3 If Licensor and Licensee
fail to agree under clause 5.2 and subject to
clause 5.4, Licensor shall
have the right to take all steps to prevent the
infringement of the Licensed
Patent and Licensee shall, at Licensor's request
and expense, render all
reasonable assistance within Licensee's power. Licensor
shall bear all costs in
relation to any proceeding which are under the exclusive
control of the Licensor and
Licensor shall be entitled to retain for its own
absolute benefit any damages,
costs or other expenses awarded or recovered in
any such
proceedings.
5.4 If Licensor fails within
1 month to take those steps as are mentioned under
clause 5.3 or if Licensor
informs Licensee that Licensor does not intend to take
any steps under clause 5.3,
Licensee shall have the right and is authorised by
Licensor to take those steps
independently. In so doing Licensee shall not be
taken as acting as the agent
or in any way on behalf of Licensor but Licensor
shall give all reasonable
assistance at Licensee's expense to facilitate any
proceedings by Licensee.
Licensee shall bear all costs but shall be entitled to
retain for its own absolute
benefit any damages, costs or other expenses awarded
or recovered in any such
proceedings.
5.5 Nothing in this agreement
shall constitute any representation that any
Licensed Patent (if a patent
application) shall proceed to grant or if granted
shall be valid.
6. Royalty
6.1 In consideration of the
rights granted under clause 2, Licensee shall pay to
Licensor royalties calculated
at the Royalty Rate and payable in respect of all
Net Sales Price made by
Licensee and Affiliates on and after the date of this
agreement provided always
that in respect of any Licensed Product manufactured
and supplied as provided
above, only a single royalty in accordance with the
provisions of this agreement
shall be payable in respect of such manufacture or
supply.
6.2 Royalties payable under
this agreement are exclusive of any value added (or
like) tax which may be
payable on them and shall be paid gross without
deduction
of any withholding or other
income taxes and if subject to withholding or other
income taxes Licensee shall
ensure that such sum is paid to Licensor as shall,
after deduction of such
withholding or other income tax, be equivalent to the
royalties otherwise payable
under the agreement.
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6.3 Royalties payable under
this agreement shall be paid in sterling within 30
days of the end of each
successive quarterly period of three months commencing
on 1st January, 1st April,
1st July and 1st October in each year.
6.4 For the purpose of
converting into sterling the local currency of Licensee
in which such royalties
arise, the rate of exchange to be applied shall be the
rate of exchange applied by
the (London) bankers to Licensor for the purchase of
sterling with such foreign
currency as at the close of business on the date when
the relevant payment first
becom
