Exhibit
10.1
LIMITED TECHNOLOGY LICENSE
AGREEMENT
This Limited Technology License Agreement
(“Agreement”) is made and entered into this 9th day of
July, 2007 (the “ Effective Date ”), by and
between Trillennium Medical Imaging, Inc. (“ Licensor
”), a Nevada corporation, whose principal office is located
at 6911 Pilliod Road, Holland, Ohio 43528, and Maclath Ltda.
(“ Licensee ”), a Costa Rica corporation, whose
principal office is located Edificio Colon, Paseo Colon, Piso 8,
Oficina 8-4, San José, Costa Rica. Licensor and Licensee are
sometimes referred to individually as a “ Party
” or collectively as the “ the Parties
.”
RECITALS
WHEREAS , Licensor purchases, licenses, sells and
distributes the thermal imaging cameras identified on Schedule A
annexed hereto, as the same may be amended from time to time during
the Term and Renewal Term, if applicable, of this Agreement (the
“ Trillennium Products ”) as integrated
components of one or more systems (each a “ System
”) consisting of the Trillennium Products, Trillennium
Product Software (as such term is hereinafter defined), and other
parts and components manufactured or procured by Licensor (the
“ System Components ”) (all of which are
collectively referred to hereinafter as the “ Trillennium
System ”);
WHEREAS , Licensee desires to purchase, distribute,
promote, license and/or sell the Trillennium System worldwide, in
non- embargoed countries exclusive of North America, United Arab
Emirates, Saudi Arabia, Jordan, Kuwait, Iran, Syria, Lebanon,
Egypt, Iraq, Yemen, Bahrain, Qatar, Oman (the “
Territories ”) for usage or application within all
medical and veterinary fields (the “ Fields of Use
”);
NOW, THEREFORE , in consideration of the mutual covenants and
agreements herein contained, Licensor and Licensee agree as
follow:
TERMS OF
AGREEMENT
1.
APPOINTMENT-EXCLUSIVE LICENSE . For and in consideration of
the payments and deliveries as set forth in Schedule C hereto,
Licensor hereby appoints Licensee to be the exclusive Licensee of
Trillennium Products and Trillennium Systems to persons and
entities located within the Territories who are engaged in business
within the Fields of Use (the “ End Users ”).
Licensor agrees that in addition to the thermal imaging cameras
identified on Schedule A annexed hereto, Licensor shall make
available to Licensee all such new or additional products as shall
be marketed by Licensor from time to time during the Term or any
Renewal Term hereof on a best market price or best market rate
basis.
2.
TERRITORIAL LIMITATIONS . Licensee will not market, sell, or
distribute Trillennium Systems or any components thereof,
separately or as a component of any other system, outside the
Territories, or to any business or person other than End Users.
This prohibition includes sales, marketing and distribution
activities via any sale, marketing or distribution channel,
including the Internet, provided, however, that the ability of
persons outside of the Territories to view any of the web pages of
Licensee’s website shall not be deemed to be a violation of
this section as long as Licensee does not sell or distribute
Trillennium Systems or any components thereof to such
persons.
3. TERM
. Unless sooner terminated as provided herein, this Agreement shall
commence on the Effective Date and continue for a term of
twenty-five years (the “ Term ”).
4. OPTION TO
RENEW . In the event that (a) Licensee shall give notice of its
election to renew this Agreement not later than one-hundred eighty
(180) days prior to the expiration of the Term; and (b) on the date
when such notice shall be given, Licensee shall have satisfied the
Minimum Renewal Purchase Obligation specified in Section 7.2
hereof, this Agreement shall be extended for an additional term of
twenty-five years commencing on the twenty-fifth anniversary of the
Effective Date (the “ Renewal Term
”).
5.
LICENSEE’S GENERAL OBLIGATIONS
5.1.
Exclusive Dealings with Licensor . During the Term of this
Agreement and the Renewal Term, if applicable, and provided
Licensor shall have fulfilled Licensee’s purchase orders in a
timely and commercially reasonable manner in accord with the terms
and conditions of this Agreement, Licensee shall not purchase,
lease, license or otherwise acquire, from any person or entity
other than Licensor, thermal imaging cameras or related software
for use in the Territories by End Users in any of the Fields of
Use. In the event that Licensee violates the exclusivity obligation
set forth in this Section, it may continue to purchase Trillennium
Systems or components thereof on a non-exclusive basis from
Licensor, but Licensor shall be entitled to sell Trillennium
Systems, or any component thereof, directly to, or authorize other
licensees or sales representatives to sell Trillennium Systems
and/or any components thereof to End Users located within the
Territories for use within the Field of Use.
5.2. Best
Efforts/Training. Licensee agrees to use its best efforts to
sublicense and/or sell the Trillennium Products and/or Systems in a
manner that preserves the existing goodwill and promotes the good
image of the Trillennium System and Licensor within the
Territories. Licensor agrees that it shall make its agents or
employees available to Licensee for marketing and equipment use and
training purposes or for such other and further purposes as
Licensee shall reasonably request from time to time during the Term
or any Renewal Term hereof. Licensee agrees that it shall be solely
responsible for the payment of all costs and expenses associated
with Licensor so providing it agents, employees and/or equipment as
requested by Licensee.
5.3. End
User Inquiries . Licensee will respond promptly to all
inquiries from End Users, including complaints and requests for
additional features or performance enhancements, and bug fixes and
to advise Licensor promptly of all such inquiries to the extent
they relate to a Trillennium Product. Licensor agrees to respond to
all inquiries from End Users, including complaints and requests for
additional features or performance enhancements, and bug fixes
relating to its Products or Systems in a commercially reasonable
manner.
5.4.
Licenses, Authorizations, Etc . Except as otherwise provided
in Section 5.6 hereof with respect to export licenses, Licensee
will obtain all necessary licenses, authorizations and approvals
from all governmental authorities having jurisdiction over Licensee
and any Systems incorporating a Trillennium Product, including but
not limited to regulatory authorities similar the United States
Food and Drug Administration located throughout the Territories,
for the sale and distribution of the Trillennium Systems within the
Fields of Use.
5.5. Import
Documentation . In the event that any governmental authority
within the Territories requires Licensor or Licensee to obtain any
import license, permit or other documentary authorization in order
for Licensor to be able to ship Trillennium Products and/or
Trillennium’s Systems into such jurisdiction,
Licensor’s shipment thereof shall be conditioned upon its
receipt of evidence satisfactory to Licensor of compliance by
Licensee or Licensee’s End User with such
requirements.
5.6. Export
Regulations . Licensee shall provide to Licensor on a timely
basis all information and documentation requested by Licensor in
order to permit Licensor to obtain such licenses, permits or other
documentary authorizations as may be required for the exportation
or re-exportation of Trillennium Products and/or Trillennium
Systems to Licensee or Licensee’s End Users. Licensor shall,
from time to time and upon request of Licensee, promptly provide
Licensee with all such licenses, permits or other documentary
authorizations or copies thereof as may be required for the
exportation or re-exportation of Trillennium Products and/or
Trillennium Systems to Licensee’s End Users in the
Territories. Licensor shall timely notify Licensee in writing of
any restrictions and/or other reporting requirements relating to
the sale of Trillennium Products or Trillennium Systems in the
Territories
5.7. No
Re-Exportation . Licensee shall not, either directly or
indirectly, re-export any Trillennium Products or any Trillennium
Systems from the Territories to any destination to which such
re-export is not permitted under a general license established
under the United States Export Administration Regulations unless
and until Licensor shall have applied for and obtained, at the
request and expense of Licensee, an individual validated license
from the Office of Export Administration of the United States
Department of Commerce for such re-export. Licensor shall notify
Licensee in writing, and update such notifications on a timely
basis, of any such restrictions of the kind referred to in this
paragraph.
5.8. Lead
Follow-Up . Licensee will investigate diligently all leads with
respect to potential End Users referred to it by any source,
including Licensor.
5.9.
Adequate Staffing. Licensee will maintain, or make
provisions for, an adequate staff of trained and qualified sales
and support personnel dedicated on a full-time basis to the sale
and support of Trillennium Systems.
5.10.
Royalties. Licensee agrees to pay Licensor ongoing payments
(each a “ Royalty ”) of * of gross
revenues received by Licensee from the sale, lease or sublicensing
of the Territory or part of the Territory, any Trillennium
Products, Trillennium Systems or any components thereof. Said
Royalties are due and payable to Licensor’s order within
fifteen (15) days after the end of the calendar month in which any
such revenue is received. Any amounts not paid with in the time due
shall bear interest at the rate of one and one-half percent (1.5%)
per month until said amount(s) are paid in full. Licensor shall
have the right to audit Licensee’s books and records in
accord with U. S. generally accepted accounting principals at such
times and at such places as Licensor shall from time to time deem
appropriate. Licensee shall cooperate with Licensor and
Licensor’s representatives in all such audit
requests.
6.
LICENSEE’S REPRESENTATIONS, WARRANTIES, AND COVENANTS.
Licensee represents, warrants, covenants, and agrees, as
follows:
6.1.
Licensee’s Trademarks . Licensee is and shall be
during the Term and any Renewal Term of this Agreement the sole
owner of any trademarks adapted by Licensee (the “
Licensee Marks ”) free and clear of all liens, claims
and encumbrances, other than liens arising from the assignment
thereof as collateral security to one or more lenders or providers
of credit to Licensee. The application of Licensee Marks, and any
other trademark or trade name designated by Licensee for inclusion
on any of the Trillennium Products, the Trillennium System or any
component thereof, the sale of such Trillennium Products, the
Trillennium System or any component thereof by Licensor to Licensee
and the sale, lease, sublicensing or other disposition of such
Trillennium Products by Licensee shall not violate the trademark or
other intellectual property rights of any third party.
6.2.
Adherence to Laws. Licensee will at all times perform its
obligations under this Agreement in strict accordance with all
applicable laws and regulations in the Territories and the highest
commercial standards. Licensee will also comply with the U.S.
Foreign Corrupt Practices Act and all United States export control
laws, rules and regulations.
6.3. Service
and Support . Licensee shall service all Trillennium Products
and Trillennium Systems sold, leased, sublicensed or otherwise
disposed of in the Territories, and shall provide customer support
to the End Users thereof.
6.4.
Marketing and Promotion . Licensee shall use its best
efforts to market and promote the Trillennium Products in the
Territories;
6.5.
Corporate Authority, Etc . Licensee is a corporation duly
organized and validly existing under the laws of the Republic of
Costa Rica. It has all requisite power and authority to carry on
the business it now conducts or intends to conduct during the Term
of this Agreement and the Renewal Term, if applicable, in the
Territories. The execution and performance of this Agreement has
been authorized and approved by Licensee’s Board of Directors
and constitutes a valid and binding agreement.
7.
LICENSEE’S PURCHASE OBLIGATIONS .
7.1. Minimum
Purchase Obligations to Maintain Exclusivity of License .
Licensee shall be obligated to purchase and pay for not less than
fifty (50) Trillennium Systems during the one (1) year period
commencing on the Effective Date, and each succeeding one (1) year
period during the Term and the Renewal Term, if applicable. In the
event that Licensee fails to comply with such obligation, it may
continue to purchase Trillennium Products, Trillennium Systems or
any components thereof pursuant to this Agreement on a
non-exclusive basis, but Licensor shall also be entitled to sell
Trillennium Products, Trillennium Systems or any components thereof
directly to, or authorize other licensees or sales representatives
to sell Trillennium Products, Trillennium Systems or any component
thereof to End Users located within the Territories.
7.2. Minimum
Purchase Obligations to Qualify for Renewal of Term . Licensee
shall not be entitled to exercise the renewal option specified in
Article 4 of this Agreement unless, during the period of the Term
which shall end on the last date upon which notice of
Licensee’s election to renew this Agreement may be given to
Licensor, Licensee shall have purchased and paid for not less than
One Thousand Two Hundred Fifty (1,250) Trillennium Systems (the
“ Minimum Renewal Purchase Obligation
”).
8.
PRICES . The prices to be paid by Licensee from time to time
for Trillennium Products, Trillennium Systems or any components
thereof will be equal to the list prices then published by the
Trillennium Product manufacturer(s) minus seven and one-half
percent (7.5%), plus all applicable taxes, fees, duties, or other
charges imposed by any government. Licensee shall be responsible
for all shipping and documentary costs relating to shipment of
Trillennium Products, Trillennium Systems or any components thereof
to Licensee’s designated point of destination. All such
deliveries shall be made F.O.B. at Licensor’s point of
distribution in either Oakland, New Jersey or Holland, Ohio, or
such other point of distribution as Licensor shall designate to
Licensee in writing from time to time during the Term or any
Renewal Term. All prices are in United States Dollars and all
quantities are in United States measures.
9. SALE OF
PRODUCTS .
9.1.
Purchase Orders . Each order for Trillennium Products,
Trillennium Systems or any components thereof (“ Purchase
Order ”) will be in writing and addressed to Licensor. No
Purchase Order will be effective until accepted by Licensor in
writing. No Purchase Order will alter the legal terms of this
Agreement.
9.2. Private
Labeling of Trillennium Products . All Trillennium Products
purchased pursuant to this Agreement shall bear Licensee’s
trademarks and/or trade names, as specified in the applicable
Purchase Order unless otherwise agreed to in a writing signed by
the Parties.
9.3. Terms
of Purchase . Licensee shall make all payments in immediately
available funds to Licensor’s order on or before the date of
shipment of any Trillennium Product, Trillennium System or any
component thereof. Licensor reserves the right, in its sole
discretion, to delay shipping additional Trillennium Products or
Trillennium Systems or any component thereof in the event the
aggregate of all past due amounts exceeds $50,000 until such time
as such aggregate past due amount, together with any accrued but
unpaid interest thereon shall be paid in full.
9.4.
Resale/License of Trillennium Products . Licensee may
resell, lease or license the use of the Trillennium Products, the
Trillennium Systems or any components thereof which it shall
purchase or obtain by license pursuant to this Agreement, either
separately or as a component of a System, at such prices as
Licensee in its sole discretion shall from time to time determine,
provided that any Trillennium Products, Trillennium Systems or any
components thereof which Licensee obtains by license from Licensor
may only be distributed by sub-license in a form and content
approved by Licensor in writing.
9.5.
Acceptance of Trillennium Products, Trillennium Systems or any
components thereof. In the event of any shortage, damage or
discrepancy in or to a shipment of Trillennium Products,
Trillennium Systems or any components thereof, Licensee shall
promptly report the same to Licensor and furnish such written
evidence or other documentation as Licensor may deem appropriate.
Licensor shall not be liable for any such shortage, damage or
discrepancy unless Licensor has received notice and substantiating
evidence thereof from Licensee within forty-five (45) days after
delivery. If the substantiating evidence delivered by Licensee
shall demonstrate to Licensor’s satisfaction that Licensor is
responsible for such shortage, damage or discrepancy, Licensor
shall promptly deliver additional or substitute Trillennium
Products, Trillennium Systems or any components thereof to Licensee
in accordance with the delivery procedures set forth herein, but in
no event shall Licensor be liable for any additional costs,
expenses or damages incurred by Licensee directly or indirectly as
a result of such shortage, damage or discrepancy in or to a
shipment.
9.6.
Licensor’s Failure to Supply Trillennium Products . In
the event that Licensee submits a Purchase Order and satisfies all
of the payment and export informational requirements imposed upon
Licensee pursuant to this Agreement with respect thereto, but
Licensor fails to accept the Purchase Order or ship the ordered
Trillennium Products, Trillennium Systems or any components thereof
for any reason other than those set forth in this Agreement which
would permit Licensor to reject the Purchase Order or fail to
fulfill the order, then solely for the purpose of determining
whether Licensee shall have complied with the purchase obligations
imposed upon it pursuant to Section 7.1 and/or 7.2 hereof, the
Trillennium Products identified in such Purchase Order shall be
deemed to have been purchased and paid for.
9.7. Product
Changes . Licensor shall not make changes that materially
affect or alter the product specifications for any product to be
marketed by Licensee hereunder without the written concurrence of
Licensee.
9.8. Risk of
Loss . Risk of loss for Trillennium Products, Trillennium
Systems or any components thereof shipped by Licensor to Licensee
or to Licensee’s designated End User shall pass to Licensee
upon departure from Licensor’s first point of
shipment.
10. PRODUCT
SOFTWARE .
10.1.
Pre-Existing Trillennium Product Software.
Licensor previously created software for use as an integrated
component of its Trillennium System which it has engineered
pursuant to its own specifications and which Licensee acknowledges
and agrees is exclusively owned by Licensor. Such Trillennium
Product Software is commonly known as the “TMI Med Image 5.0
Product Software.” All such software and all such software as
has been developed and/or is incorporated into use with the
Trillennium Products or Trillennium Systems or shall hereafter be
developed and/or incorporated into use with the Trillennium
Products and/or Trillennium Systems, including but not limited to
all design characteristics and/or source code relating thereto, is
Trillennium Product Software, exclusively owned and controlled by
Licensor.
10.2. Future
Software Engineering Services . In the event that Licensee asks
Licensor to create additional software during the Term or the
Renewal Term, if applicable, Licensor shall do so, and Licensee
shall pay therefore, pursuant to the terms of a separate agreement
to be entered into by the Parties with respect thereto. Any such
additional software created by Licensor shall be deemed to be
Trillennium Product Software for all purposes of this Agreement.
Licensee agrees it shall not directly or indirectly participate in
the creation of any software, design characteristics and/or source
code directly or indirectly competing with Trillennium’s
Product Software. Licensor further agrees that any software
enhancements, improvements, upgrades or modifications as
wel
