Exhibit 10.58
MATERIAL NOTED WITH [* *] IS CONFIDENTIAL
AND HAS BEEN DELETED PURSUANT TO A
REQUEST FOR CONFIDENTIAL TREATMENT,
AND FILED SEPARATELY WITH THE
SECURITIES AND EXCHANGE COMMISSION
[Execution Copy]
AMENDED AND RESTATED
TECHNOLOGY EXCHANGE AND
CROSS LICENSE AGREEMENT
THIS AMENDED AND RESTATED TECHNOLOGY EXCHANGE
AND CROSS LICENSE AGREEMENT (the “ Agreement ”),
made and entered into this day
of January, 2007 by and between DAIKYO SEIKO , LTD., a
corporation organized and existing under the laws of Japan, having
a place of business at 38-2 Sumida 3-Chome, Sumida-Ku, Tokyo
131-0031, Japan (hereinafter, together with its Subsidiaries,
referred to as “ Daikyo ”) and WEST
PHARMACEUTICAL SERVICES, INC. (formerly known as THE WEST COMPANY,
INCORPORATED), a corporation organized and existing under the laws
of the Commonwealth of Pennsylvania, United States of America,
having a place of business at 101 Gordon Drive, Lionville,
Pennsylvania 19341, United States of America (hereinafter, together
with its Subsidiaries, referred to as “ West
”). West and Daikyo are sometimes referred to in this
Agreement collectively as the “ Parties ” and
each individually as a “ Party .”
WITNESSETH:
WHEREAS, West and Daikyo have entered into an
Amended and Restated Technology Exchange and Cross License
Agreement, dated January 30, 1997 (the “1997
Agreement”), which provides for the exchange of technology
relating to the manufacture of closures, vials, medical device
components, and similar products (defined herein as
“Products”) and the licensing of know-how and patents
relating to such Products; and
WHEREAS, the Parties desire to amend and
restate the 1997 Agreement to reflect certain changes to the
provisions thereof;
NOW
THEREFORE, in consideration of the mutual covenants herein set
forth, the Parties hereto agree to amend and restate the 1997
Agreement as follows:
ARTICLE 1 CERTAIN DEFINITIONS
Terms defined in this Article 1 and
parenthetically elsewhere in this Agreement will throughout this
Agreement have the meanings here or there provided. Defined
terms may be used in the singular or in the plural, as sense shall
require.
A
“ Change in Control ” shall be deemed to have
occurred when, in connection with or as the direct or indirect
result of any acquisition or sale of any assets or capital stock of
West or Daikyo, as the case may be, whether or not approved by that
company’s board of directors or its shareholders, any entity
or Person either alone or acting in concert with others acquires
shares of the company’s stock and such acquisition results in
that entity or Person
either alone or acting in concert with others
directly or indirectly owning beneficially 51% or more of the
company’s outstanding shares.
“ Developments ” means
developments and improvements, whether or not patentable, relating
to a Party’s Licensed Patents, Know-How or Products produced
thereby.
“ First Commercial Sale of a
Product ” means the shipment of a Licensed Product to a
customer in quantities of at least [**] units.
“ Know-How ” means all
useful technical information that is not generally known or
accessible but is not protected by a patent, which a Party uses or
may use in connection with its manufacture of Products.
Know-How of a Party may include, without limitation, documents,
models, the design and configuration of molds, formulae, prototypes
containing design and technical information, data, drawings, plans,
specifications, formulations and reports, in written or non-written
form. Know-How shall also include Developments.
“ Licensed Patents ” means
patents owned by a Party and licensed to the other Party under the
terms of this Agreement, or any interest in such patents, and all
continuations, divisions, reissues or extensions of any of such
patents, as well as any reexamination certificate relating
thereto.
“ Licensed Product ” means
Products whose process of manufacture or use incorporate Know-How
or come within the scope of any unexpired claim of any Licensed
Patent.
“ Licensed Trademarks ”
means the trademarks of West or Daikyo, as the case may be,
identified in Schedule A hereto. Schedule A may be amended
from time to time by mutual consent of the Parties.
“ Licensee ” means West or
Daikyo, as the case may be, in its capacity as licensee of Know-How
or Licensed Patents.
“ Licensor ” means West or
Daikyo, as the case may be, in its capacity as licensor of Know-How
or Licensed Patents.
“ Net Sales ” means gross
sales of the relevant Licensed Product less returns, customary
trade discounts and amounts included in the sales price with
respect to insurance, shipping, handling and taxes.
“ Person ” means an
individual, partnership, corporation, trust or unincorporated
organization, and a government or agency or political subdivision
thereof.
“ Products ” means closures,
vials, medical device components, and similar products used in
connection with the packaging, delivery or dispensing of
pharmaceutical products, along with materials for making the same,
manufactured or sold by West or Daikyo. “West Products”
means Products manufactured or sold by West, and “Daikyo
Products” means Products manufactured or sold by
Daikyo.
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“ Special Material, Formula or
Process ” means a material, formula, or process together
with finished product specifications, used in or useful to the
manufacture of Products, and which (i) constitutes Know-How or is protected
by Licensed Patents and
(ii) has demonstrated commercial potential.
“ Subsidiaries
” means (i) any corporation or other legal entity of which
West or Daikyo owns 100% of the stock ownership or other equity
interest, directly or indirectly, (ii) any other entity that
both West and
Daikyo consent
to designate as a
subsidiary, provided, however, that West or Daikyo may in
any case revoke such consent for any reason without prejudice to
the revoking Party , and (iii)
in the case of West, West Pharmaceutical Services of Mexico, Inc.
and Medimop Medical Projects, Ltd.
“ Territory
” means all countries in the world.
ARTICLE 2 FURNISHING OF KNOW-HOW
2.01
Furnishing of Know-How . To the extent that they are
legally free to do so, the Parties shall (i) mutually furnish to
each other their complete present Know-How, (ii) assist each other
in the exploitation of such
Know-How, (iii) keep each other fully and promptly informed as to
all Developments, and
(iv) cooperate to jointly develop new Products and improvements to
existing Products for
their mutual benefit and the benefit of their
customers.
2.02
Exchange of Documents
. Subject to the terms of
any confidentiality or non-disclosure agreements or obligations
that may be binding on a Party, upon request, the Parties will
furnish each other with such records, work-drawings, other
drawings, formulae and other technical records as may be necessary
or desirable to further the
purposes of this Agreement.
2.03
Assistance . Each Party may send personnel to the
premises of the other Party for the purpose of acquainting such
personnel with all existing and future Know-How so long as the
normal course of production and
business of the other Party are not disrupted by such
personnel. Upon request, each Party shall send
personnel to assist in acquainting the other Party with Know-How,
but only in the event and to the extent that the normal course of
production and business of the sending Party is not disrupted.
2.04
Expenses of Furnishing Know-How
. All expenses
incurred in connection with furnishing Know-How will be
borne by the Party to which the Know-How is being furnished, except
that the salaries of personnel
and related salary costs will be borne in any case by their
employer, unless also in
respect of such salaries a different arrangement has been reached
by prior written agreement.
ARTICLE 3 CROSS LICENSE
3.01
Daikyo License . Subject to the terms and conditions
of this Agreement, West grants to Daikyo, and Daikyo
accepts:
3
(a)
The non-exclusive right and license to use and employ Licensed
Patents of West solely in the manufacture, use and sale of Licensed
Products in the Territory;
(b)
The non-exclusive right and
license to use and employ Know-How of West disclosed to
Daikyo under this Agreement solely in the manufacture, use and sale
of Licensed Products in the
Territory;
(c)
The non-exclusive right to use and employ Licensed Trademarks of
West solely in the sale of
Licensed Products in the Territory; and
(d)
The right to sublicense any or all of the rights granted in
paragraphs (a), (b) and (c)
above to any Subsidiary of Daikyo but to no other
Person.
3.02
West License . Subject to the terms and conditions of
this Agreement, Daikyo grants to West, and West
accepts:
(a)
The non-exclusive right and
license to use and employ Licensed Patents of Daikyo solely
in the manufacture, use and sale of Licensed Products in the
Territory;
(b)
The non-exclusive right and license to use and employ Know-How of
Daikyo disclosed to West under this Agreement solely in the
manufacture, use and sale of Daikyo’s Licensed Products in the
Territory;
(c)
The non-exclusive right to use and employ Licensed Trademarks of
Daikyo solely in the sale of
Licensed Products in the Territory; and
(d)
The right to sublicense any and all of the rights granted under
paragraphs (a), (b) and (c)
above to any Subsidiary of West but to no other
Person.
3.03
Restrictions on Manufacturing Sites . The Parties
acknowledge that the Licensor has an interest in assuring
that (i) Licensed Products meet quality standards that are
at least equivalent to those generally prevailing in the industry
and (ii) Licensee shall keep all the technical information provided
by Licensor in accordance with this Agreement secret.
Licensee shall obtain prior written consent of Licensor with
respect to Licensee’s manufacturing site(s) for Licensed
Products and processes. Licensor shall not unreasonably
withhold or delay such consent to Licensee’s manufacturing
site(s) and processes. Notwithstanding the foregoing provisions, if
Licensee’s manufacturing site(s) shall be located in any
country (such as China) which may not comply with legal process and
patent system, Licensor shall withhold such consent.
3.04
Negotiation of
Sublicensing Rights . To the extent that Know-How subject
to this Agreement is owned by third Persons, each Party shall use
commercially reasonable efforts to negotiate contracts or agreements with such
third Parsons which permit sublicensing and technology
transfer to the other Party and its permitted sublicensees in
accordance with the terms of this Agreement.
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3.05
Continuing Rights upon Expiration . Upon expiration of
the full term of the rights granted under any Licensed Patents, the
Licensee will have a perpetual, royalty-free, nonexclusive, fully
paid-up license of the expired Licensed Patent to manufacture, use
and sell Products which were Licensed Products within the Territory under the Licensed
Trademarks (as such terms are in effect immediately prior
to such expiration); provided,
however, that the Licensee will comply with confidentiality
restrictions in place with
respect to any confidential information as may remain confidential,
and provided, further, that the Licensee shall continue to
pay royalties assigned to any Know-How under Section 4.04 hereof.
3.06
Acknowledgement of License . The Licensee’s
Internet website and each written brochure, catalogue or other
promotional material that displays or refers to a Licensed Product
shall contain the following notation “[name of Licensed
Product or Technology] licensed from [Licensor name]”,
provided that Licensee may continue to use brochures and other
promotional material that does not contain the notation to the
extent it was already in use or on hand at the effective date of
the Agreement. The Licensee’s Internet website, and
each written brochure, catalogue or other promotional material that
contains a Licensed Trademark or other registered trademark of the
Licensor shall also identify the mark with the symbol
“®” and appropriately indicate that the mark is a
registered trademark of [Licensor name]. Licensor shall
provide to Licensee a list of its registered marks and the
countries or jurisdictions where such marks are registered with
respect to any new trademarks that become so
registered.
ARTICLE 4 ROYALTIES; FEES
4.01
General Rule . [**]
.
4.02
Designation and Disclosure of
Special Material , Formula or Process . Before furnishing Know-How
or granting the license of a Licensed Patent, either Party may
declare that such Know-How or the Licensed Patent contains a
“Special Material, Formula, or Process,” in which event the
Parties shall consult with each other and mutually determine,
before the Licensee
elects to receive such Know-How or the license of the
Licensed Patent , in which rank
the Special Material, Formula, or Process shall be classified. In the
event that the classification for rank is not agreed by the
Parties, the rank should be “A” rank. If
so designated, such Party shall promptly provide the other Party
with such information
concerning the Special Material, Formula, or Process as is
necessary to enable the other Party to determine if such Special
Material, Formula, or Process would be useful to it.
Each transfer of a
Special Material, Formula or Process shall be made pursuant to a
separate transfer agreement, substantially in the form of Exhibit A
hereto, which shall be executed at the time of transfer by the Parties involved. The
Parties entered into separate transfer agreements pursuant to the
1997 Agreement. Such agreements shall continue in effect
after execution of this Agreement in accordance with the terms of
this Agreement.
4.03
Quality Assurances . The
Licensor may provide a Certificate of Equivalency
satisfactory in form and substance to the Licensee or to its
sublicensee with respect to Licensed Products manufactured using a Special
Material, Fo
