Exhibit 10.4
DATED 1st September 2002
HALL EFFECT TECHNOLOGIES LIMITED
and
UNIPATH LIMITED
____________________________________________
PATENT LICENCE AGREEMENT
____________________________________________
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2
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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
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1
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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
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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2
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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.
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
t
