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EXHIBIT
10.33
EXECUTION
COPY
TECHNOLOGY LICENSE
AGREEMENT
BETWEEN
SALUMEDICA,
LLC
AND
SPINEMEDICA
CORP.
This Technology
License Agreement (this “License Agreement”) is made
effective as of the 12th day of August, 2005 (the “Effective
Date”), by and between SALUMEDICA, LLC, a Georgia limited
liability company (“Licensor”), and SPINEMEDICA CORP.,
a Florida corporation (the “Licensee”).
RECITALS:
A. Licensor is the
owner of certain intellectual property rights; and
B. Licensee is
desirous of obtaining and commercializing these intellectual
property rights under the terms set forth below;
NOW THEREFORE, in
consideration of ten dollars ($10.00) in hand paid and the promised
performance of each of the parties of the terms set forth herein,
the parties hereto, intending to be legally bound, mutually agree
as follows:
Section 1.
Definitions .
1.1
“Flexible Spinal Disc Patents” means patent application
listed in Section III of Appendix A and any and all future patent
applications, patents, divisions, reissues, provisionals,
continuations, continuations-in-part, renewals and extensions
thereof or related thereto in the United States and in foreign
jurisdictions.
1.2
“Background Technology” means technical and other
information in the possession of Licensor that is necessary or
convenient to practice the Licensed Patents and that is in the
public domain.
1.3
“Confidential Information” means all confidential
information and trade secrets in the Field of Use and comprised in,
relating to or arising out of the Licensed Patents that is
proprietary to Licensor or licensed or otherwise transferred to
Licensor by any person or entity and that is not generally known to
the public and which is known to Licensor on the date hereof or at
any time during the Improvement Cooperation Period. Notwithstanding
the foregoing, for purposes of the licenses granted to Licensee
herein, Confidential Information shall not include information that
Licensor obtains after the Effective Date and which is subject to
restrictions on further disclosure that would be breached by a
disclosure to Licensee.
1.4
“Effective Date” means the effective date of this
License Agreement, as set out above.
1.5
“Field of Use” means all neurological and orthopedic
uses, including muscular and skeletal uses, related to the human
spine.
1.6
“Improvement Cooperation Period” means that period of
time following the Effective Date of this Agreement until the first
to occur, in a single or set of related transactions, of
(i) the sale of all or substantially all of the assets of
either Licensor or Licensee; (ii) a merger or other
transaction in which more than fifty (50%) percent of the
outstanding voting shares or other voting equity, by whatever name
called, of either Licensor or Licensee immediately after such
transaction is held by holders who were not holders of such voting
equity immediately prior to such transaction; or (iii) in the
case of Licensee, the sublicense or assignment of all or
substantially all of its rights under this License
Agreement.
1.7
“Improvement Patents” means all patents or patent
applications disclosing and claiming any Improvements and all
future patent applications, patents, divisions, reissues,
continuations, continuations-in-part, renewals and extensions
validly claiming priority to any of these patents or patent
applications.
1.8
“Improvements” means any enhancements, additions,
changes, supplements or other improvements to the Licensed
Technology, whether or not patentable, that are now existing or
otherwise developed by Licensor or Licensee during the Improvement
Cooperation Period.
1.9
“Know-How” means all technical and other information,
intellectual property or knowledge useful for practicing the
Licensed Technology in the Field of Use in the possession of
Licensor on the Effective Date or at any time during the
Improvement Cooperation Period that is necessary or convenient to
practice the Licensed Technology, which is not in the public
domain, including, without limitation, concepts, discoveries, data,
designs, formulae, ideas, inventions, methods, models, assays,
research plans, procedures, processes, designs for experiments and
tests and results of experimentation and testing (including results
of research or development) processes (including manufacturing
processes, specifications and techniques), laboratory records,
chemical, clinical, analytical and quality data, trial data, case
report forms, data analyses, reports, manufacturing data or
summaries and information contained in submissions to and
information from regulatory authorities, and includes any rights
including copyright, database or design rights protecting any of
the foregoing. The fact that an item is known to the public shall
not be taken to exclude the possibility that a compilation
including the item, or a development relating to the item, is or
remains not known to the public. Notwithstanding the foregoing,
Know How shall not include information or knowledge that Licensor
obtains after the Effective Date subject to restrictions on
disclosure or use by third parties.
1.10
“License Agreement” means this Technology License
Agreement, as it may be amended from time to time.
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1.11
“Licensed Patents” means (i) Patents Under
License, (ii) Owned Patents, and (iii) Licensor’s
Improvement Patents.
1.12
“Licensed Product” means any product or device that is
developed, manufactured, produced, expressed, used or licensed for
use by Licensee, its affiliates, successors or sublicensees, or
their contract manufacturers, utilizing the Licensed Technology in
the Field of Use.
1.13
“Licensed Technology” means the Licensed Patents,
Confidential Information, Know How, and Improvements solely as they
relate to the Field of Use, in each and every case.
1.14
“Licensee Indemnitees” has the meaning set forth in
Section 6.1.
1.15
“Licensor Indemnitees” has the meaning set forth in
Section 6.2.
1.16
“Losses” has the meaning set forth in
Section 6.1.
1.17
“Owned Patents” means the patents and patent
applications listed in Section II of Appendix A and all future
patent applications, patents, divisions, reissues, continuations,
continuations-in-part, renewals and extensions thereof or related
thereto in the United States and in foreign jurisdictions validly
claiming priority to any of these patents and patent applications.
The Parties acknowledge that U.S. Patent No. 6,231,605 is a
continuation in part of U.S. Patent No. 5,981,826. Although
the pending patent applications listed at Section A. II are
presently identified as owned by Licensor, it is possible that one
or more of the continuation applications may be owned by Georgia
Tech Research Corporation (“GTRC”) or may be co-owned
by GTRC and Licensor, depending on the claimed subject matter. To
the extent that GTRC has any ownership rights to the continuations
listed at Section II, Licensor is the exclusive licensee thereof
pursuant to the terms of the License Agreement dated March 5,
1997 by and between GTRC and Licensor, as amended from time to time
(the “GTRC License”). The Parties agree that if such
ownership rights of a continuation patent application or issuing
patent should change to be owned in whole or in party by GTRC, then
such application or patent shall be deemed to be included under the
term “Licensed Patents”.
1.18
“Parties” means Licensor and Licensee, and
“Party” means either one of them.
1.19
“Patents Under License” means the patents and patent
applications listed in Section I of Appendix A and any and all
future patent applications, patents, divisions, reissues,
continuations, continuations-in-part, renewals and extensions
thereof or related thereto in the United States and elsewhere
validly claiming priority to any of these patents and patent
applications.
1.20
“Rules” has the meaning set forth in
Section 8.6.
1.21
“Practice” means the right in the Field of Use to make,
have made, manufacture, have manufactured, use, offer to sell, sell
or import Licensed Products.
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1.22
“Third Party” means any person, firm or entity other
than the Parties.
1.23
“Unauthorized Activity” means (i) any practice of
the Licensed Technology outside of the Field of Use by Licensee or
any of its sublicensees or any Third Party claiming by, through, or
under Licensee, or any Third Party obtaining intellectual property
of Licensor as a result of a breach of the terms of this Agreement
by Licensee or any Third Party claiming by, through or under
Licensee (all of the foregoing being collectively called
“Licensee Third Party”), (ii) any uncured
unauthorized disclosure of Confidential Information to any Third
Party, or (iii) breach of the contemporaneously executed
Trademark License Agreement.
Section 2.
License and Assignment; Cooperation in Commercialization;
Unauthorized Activity .
2.1 Licensor
hereby grants to Licensee an exclusive, fully-paid, worldwide,
royalty-free, perpetual (except as expressly herein provided),
irrevocable and non-terminable (except as provided in
Section 4 of this Agreement and subject to the termination
provisions of the GTRC License) license to Practice the Licensed
Technology in the Field of Use. Licensor will grant Licensee
reasonable access to and the ability to make copies of all
Background Technology and Licensed Technology.
2.2 Pursuant
to a concurrently executed patent assignment, Licensor has assigned
to Licensee all of its right, title and interest (if any) in and to
the Flexible Spinal Disc Patents.
2.3 Licensee
hereby grants to Licensor an exclusive, fully-paid, royalty-free,
irrevocable and non-terminable license to use the Improvements and
to practice the Improvement Patents outside the Field of Use for
the life of the Improvement Patents.
2.4 Licensor
shall not itself, nor shall it directly or knowingly and indirectly
assist or consent to any Third Party, to manufacture, have
manufactured, market, offer for sale or sell Licensed Products or
otherwise practice the Licensed Technology in the Field of
Use.
2.5 Licensor
shall have the exclusive right and authority, in its own name, to
apply for, prosecute and obtain Owned Patents.
2.6 Either
party may seek to obtain Improvement Patents in its own name,
subject to applicable laws, treaties and regulations.
2.7 During
the Improvements Cooperation Period, each party shall meet with the
other party on a continuing and regular basis (but no less
frequently than quarterly), and shall in good faith discuss and
seek to disclose to the other their respective developments and
Improvements with respect to the Licensed Technology.
2.8 Licensee
shall not itself conduct, nor shall it directly or indirectly
assist or consent to any sublicensee or other Third Party to
conduct, any Unauthorized Activity during the term of this License
Agreement.
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2.9 Each
sublicense granted by Licensee shall provide that the sublicense
rights exclude any Improvements developed by Licensor after the
date of such sublicense agreement.
Each sublicense shall further
provide that it is terminable by Licensee upon the occurrence of a
breach by sublicensee of the sublicense agreement, after reasonable
opportunity to cure such breach.
Section 3.
License Fee . In consideration of the license and other
rights granted hereby, Licensee shall pay Licensor the
following:
3.1 A
one-time license fee in the amount of Two Million Five Hundred
Thousand ($2,500,000.00) Dollars delivered simultaneously with the
execution and delivery of this Agreement by both Parties;
and
3.2 During
the Improvement Cooperation Period, an annual reimbursement (within
60 days of receipt of invoice) of the reasonable, documented
expenses incurred by Licensor in connection with the filing or
maintenance of patents relating to the Licensed Patents in
countries other than the United States, such annual reimbursement
not to exceed Fifty Thousand and 00/100 Dollars ($50,000.00);
provided, however, that Licensee shall only reimburse such expenses
to the extent that they were incurred in connection with the filing
or maintenance of Licensed Patents that can be utilized in the
Field of Use.
Section 4. Term
of Agreement .
4.1 The term
of this License Agreement shall commence on the Effective Date and
shall remain in full force for a perpetual term, provided that the
license granted hereby shall terminate on a country-by-country
basis as to any Licensed Patent or portion thereof upon the
expiration thereof in each country, but such expiration shall not
affect the license granted hereby with respect to: (i) such
Licensed Patent or portion thereof in any country in which such
Licensed Patent or portion thereof remains effective; or
(ii) the remainder of the life of any Licensed
Technology.
4.2
Notwithstanding any other provision hereof, Licensor shall have no
right to terminate this License Agreement or the practice of any of
Licensee’s rights and licenses hereunder in the event of any
breach hereof by Licensee, except only in the event that Licensor
obtains a judgment for money damages against Licensee for breach of
this License Agreement pursuant to a court order or arbitration
award which is not subject to further appeal, and Licensee fails to
pay such money damages within ninety (90) days after such
order becomes final and nonappealable.
4.3 If
Licensee elects to permanently abandon its efforts to commercialize
a spinal disc prosthesis using the Licensed Technology, Licensee
agrees to provide written notice thereof to Licensor and agrees to
negotiate in good faith with Licensor to amend or terminate this
License Agreement with respect to such portion of the Licensed
Technology that has been permanently abandoned for nominal
consideration. If Licensee
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elects to
permanently abandon the Flexible Spinal Disc Patents, Licensee
agrees to provide written notice thereof to Licensor and agrees to
assign such patent(s) to Licensor.
Section 5.
Representations and Warranties . Licensor hereby represents
and warrants to Licensee that as of the Effective Date:
5.1 Licensor
has the full right and power to grant the licenses set forth in
Section 2 of this License Agreement;
5.2 Appendix
A sets forth an accurate and complete list of all patents and
patent applications owned, under license, or otherwise controlled
by Licensor that are necessary or convenient to practice the
Licensed Technology in the Field of Use.
5.3 Licensor
has received no notice of any claims or suits pending and, to
Licensor’s knowledge, there are no claims or suits threatened
against Licensor challenging Licensor’s ownership of or right
to use any of the Intellectual Property, nor, to the knowledge of
Licensor, does there exist any basis therefor.
5.4 Licensor
has received no notice of any claims or suits against Licensor
pending and, to Licensor’s knowledge, there are no claims or
suits threatened against Licensor alleging that any of the Licensed
Technology infringes any rights of any third parties in the Field
of Use, nor, to the knowledge of Licensor, does there exist any
basis therefor.
5.5 To the
knowledge of Licensor, no person has infringed or is infringing the
Licensed
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