Exhibit No. 10.1
SOFTWARE LICENSE AGREEMENT
THIS SOFTWARE LICENSE AGREEMENT (the "Agreement") entered into as of
the 29th day of September, 2005, by and between PRIMECARE SYSTEMS,
INC., ("Licensor"), a Delaware corporation with an office at 56
Harrison Street, New Rochelle, NY 10801, U.S.A. and TELEMEDICA SRL
("Licensee"), a corporation organized under the laws of Argentina,
with an office at Santa Fe 2534 Segundo A, (1425) Buenos Aires,
Argentina, determines the rights and licenses granted to the
Licensee in the Licensed Software (hereinafter defined) to be
provided by the Licensor hereunder.
1. Definitions. As used in this Agreement, the following
definitions shall apply:
(a) "Licensed Product" shall mean, collectively, the
Licensed Software and Licensed Documentation (as each are
hereinafter defined), of the PrimeCare(TM) Patient Management
System, Version Nine (the "PrimeCare V9 System"). A fully
operational PrimeCare V9 System is comprised of two major
constituents, the V9 Client Software, and the V9 Data Center tier.
During operational use, the V9 Client Software connects with and
exchanges data with the V9 Data Center using the world-wide Internet
as a communications medium.
(b) "Licensed Software" or "Software" shall mean the
operating programs for the V9 Client Software, whether in object
code form, or not, including all updates, modifications,
enhancements, improvements and revisions thereof, supplied by the
Licensor during the Term hereof (hereinafter defined), and all
permitted copies, if any, of the foregoing, for operation on
Licensee's Hardware (hereinafter defined). The Software and all
Updates are, and shall remain, the sole property of Licensor.
(c) "Licensed Documentation" shall mean all
documentation supplied by the Licensor hereunder, other than the
Licensed Software, related to such Software.
(d) "Use" shall mean the reading into, and out of,
memory of the Licensed Software and the execution thereof, in whole
or in part, on Licensee's computer hardware (the "Hardware") located
at the Installation Locations (hereinafter defined) for the internal
uses of the Licensee only.
(e) "Demonstration Mode" shall mean Use of the
Licensed Software to access only test and demonstration data, as
restricted by the Software prior to Software Registration
(hereinafter defined).
(f) "Software Registration" shall mean establishment
of a unique identifier for the entity desiring to Use the Licensed
Software in an operational setting, so that access to other than
test and demonstration data is permitted. The Software Registration
process is controlled and managed solely by Licensor.
(g) "Registered Use" shall mean Use by any Licensee
of the Licensed Software in other than Demonstration Mode. Any
Licensee desiring Registered Use of the Licensed Software must have
properly executed an End User Software License Agreement prior to
such Use.
(h) "Installation Locations" shall mean each and
every facility of the Licensee in which the Licensed Software is to
be installed or Used.
(i) "Sub-Licensee" shall mean Licensee's
Sub-licensees located solely in Argentina, Brazil, Chile, Paraguay
and Uruguay.
(j) "User" shall mean any person or entity
responsible for activating and operating the Licensed Software at
any Installation Location.
(k) "Updates" shall mean any and changes, additions
and/or modifications to the medical content of the Software, which
includes the patient questionnaires, physician reference materials,
patient education materials, prescriptions and medications list and
prescriptions and medications interaction data, as well as
enhancements, improvements, and changes to the Software itself.
2. License. Subject to the continued timely payment by
Licensee to Licensor of the license fees hereinafter set forth on
Schedule A hereto (the "Fees"), Licensor hereby grants to Licensee,
and Licensee hereby accepts, during the Term hereof, a personal,
exclusive and non-transferable license to market and sub-license
PrimeCare V9 for use at Installation Locations situate solely within
the countries of Argentina, Brazil, Chile, Paraguay and Uruguay (the
"License"), all of whom are members of the free trade association ,
known as Mercosur. Notwithstanding the foregoing, in the event that
the gross revenues derived by Licensee from sub licensing PrimeCare
V9, are less than two million five hundred thousand U.S. dollars
(US$2,500,000) for the third year of the Term of this Agreement, or
any year thereafter, then, in that event, this Agreement will become
non-exclusive for the balance of the Term. Each Sub-licensee who
desires to Use PrimeCare V9 under this Agreement shall be required
to comply with the terms and conditions of this Agreement, and enter
into, and comply with, the terms and conditions of the Software
Sub-License Agreement, in form and substance as set forth in
Schedule B, annexed hereto and made part hereof, and which Software
Sub-license Agreement has been approved by Licensor. The Fees
required from each Sub-licensee will be negotiated by Licensee on
behalf of Licensor subject to approval by Licensor.
3. License fees and taxes.
(a) The Fees for the license granted pursuant to
Section 2 hereof, and for the support services provided for under
Section 4 hereof, shall be the Fees set forth on Schedule A, annexed
hereto and made part hereof.
(b) The Fees shall be due from the Licensee and payable to
the Licensor in twelve (12) equal monthly payments on, or before,
the tenth day of each month. Licensee shall pay a late payment
charge of 1.5 percent per month, or the maximum rate permitted by
applicable law, whichever is less, on the aggregate unpaid amount
due for each calendar month or fraction thereof that any payment to
Licensor is in arrears.
(c) In addition to all Fees, Licensee shall pay all taxes
based on, or in any way measured by, this Agreement, use of the
PrimeCare V9 or any portion thereof, or any services related
thereto, excluding taxes based on Licensor's net income, but
including personal and/or intangible property taxes, if any. If
Licensee desires to challenge the applicability of any such tax, it
shall first pay such tax to Licensor and then Licensee, at its own
cost and expense, thereafter may challenge such tax before the
applicable governmental agency and seek refund thereof.
4. Support of licensed software. During the Term of this
License, Licensor shall provide to Licensee, without additional
charge, all Updates to the Licensed Software, so as to provide
Licensee with the most current medical content contained in a
marketed version of the Software, together with technical
information and assistance regarding all phases of the Updates to
the Software. Each User, however, shall be solely responsible for
ensuring that the most recent version of the Software, required to
Use PrimeCare V9, is installed at User's Installation Location.
5. Term of agreement and licenses. This Agreement shall
commence on the day and date first above written and shall continue
in being for ten (10) years from that date (the "Initial Term"),
unless otherwise terminated or canceled as hereinafter provided.
This Agreement shall be automatically extended for successive
periods of twelve (12) months following the Initial Term (each a
"Renewal Term"), unless at least thirty (30) days, but not more than
sixty (60) days, prior to the end of the Initial Term and each
Renewal Term either party shall notify the other in writing, of its
termination of this Agreement.
6. Protection of trade secrets.
(a) Licensee acknowledges and agrees that the PrimeCare V9
is Licensor's exclusive property and constitutes a valuable trade
secret of Licensor. Licensee shall use the PrimeCare V9 only for
the purposes expressly permitted hereby, and Licensee shall make no
attempt, nor shall it permit any other person to attempt, directly
or indirectly, to "reverse engineer" the same.
(b) Upon any termination, cancellation or expiration of
this Agreement, or the License granted hereunder, Licensee and its
Sub-licensees shall immediately return to Licensor the original, and
any and all copies, of PrimeCare V9, with all Updates, together with
any and all other materials, data or products relating to the
PrimeCare V9 in the possession or control of Licensee or its
Sub-licensees.
(c) Licensee acknowledges that, as a result of its
relationship with Licensor arising from this Agreement, certain
confidential information and property of Licensor may come into
Licensee's possession, and Licensee agrees not to disseminate
Licensor's proprietary information to any other person.
7. Confidentiality; Competition.
(a) For the purposes hereof, the term, confidential
information, is used herein in its legal sense and includes (without
limitation) trade secrets, as well as any information in the
possession of the Licensor, whether created by Licensor or Licensee
which is kept or intended to be kept as a secret from others,
whether or not the secret or confidential information provides a
measurable commercial benefit to Licensor, such as Licensor's
development work, its Software and computer programs (including but
not limited to the Software and computer programs referred to in
this Agreement as the PrimeCare V9 which includes, but is not
limited to the following: program source code, object code, and
underlying algorithms; system medical data organization, storage
mechanisms and techniques; data coding and encryption methodologies;
system usage access algorithms, procedures, and techniques; and
system enhancement plans, schedules, and forecasts), specifics
concerning the design of its equipment or software and computer
programs, whether used internally or not, procedures used to render
programs, equipment or services fit for sale, Licensor's underlying
costs and Licensor's underlying sources of supply, and information
which concerns the business of Licensor and the manner in which the
Licensor conducts its business, its future plans, work in progress,
customers, customer lists, and any other information relating to
research, development, inventions, manufacture, purchasing,
accounting, engineering, marketing, merchandising, and selling which
is used by the Licensor in the conduct of its business and which is
not generally known to others, collectively constitute "Licensor's
Confidential Information". Licensee acknowledges that Licensee
shall have access to, and knowledge of, Licensor's Confidential
Information, and that improper use or revelation of the same by
Licensee or its Sub-licensees during the Term or thereafter, would
cause serious injury to Licensor's business. Accordingly, Licensee
covenants and agrees that (except to the extent reasonably necessary
to enable Licensee to perform services hereunder, and except as
otherwise permitted or contemplated by this Agreement), Licensee
shall forever keep secret and confidential all Licensor's
Confidential Information which shall come into Licensee's
possession, and Licensee shall not use the same for Licensee's own
private benefit, or directly or indirectly for the benefit of
others, and Licensee shall not disclose such Licensor's
Confidential Information to any other person. Notwithstanding the
foregoing, Licensor's Confidential Information shall not include any
information which is in the public domain at the time such
information is disclosed to Licensee, or which later falls into the
public domain through no fault of Licensee or its Sub-licensees, or
which is at any time lawfully received by Licensee from a third party.
(b) If it shall be finally determined by any court of
competent jurisdiction ruling on this Agreement, or any dispute
which may arise out of, or in connection with, this Agreement, that
the scope or duration of any limitation contained in this Section 7
is too extensive to be legally enforceable, then the parties hereby
agree that the scope or duration of such limitation shall be deemed
to be the maximum scope or duration (not greater than that provided
for herein) which shall be legally enforceable, and Licensee hereby
consents to the enforcement of such limitation as so modified.
(c) Each of the parties acknowledges that any violation by
Licensee or any of its Sub-licensees of the provisions of this
Section 7 would cause serious and irreparable damages to Licensor.
Each of the parties further acknowledges that it might not be
possible to measure such damages in money. Accordingly, each of the
parties further acknowledges that, in the event of a breach or
threatened breach by Licensee of the provisions of this Section 7,
Licensor, in addition to any other rights or remedies, including
money damages, may seek an injunction or restraining order,
restraining Licensee from doing or continuing to do or perform any
acts constituting such breach or threatened breach.
8. Reproduction and modification of software. Neither
Licensee, nor any of its Sub-licensees, may reproduce and/or modify
the Licensed Product, or any portion thereof.
9. SOFTWARE LIMITATIONS. THE LICENSEE HEREBY ACKNOWLEDGES
AND AGREES THAT:
(A) PRIMECARE V9 IS SOLELY A PHYSICIAN'S PRODUCTIVITY
ENHANCEMENT PRODUCT.
(B) USE OF PRIMECARE V9 IS NOT INTENDED TO, AND WILL NEVER,
REPLACE THE PHYSICIAN'S PROFESSIONAL MEDICAL JUDGMENT AND/OR
KNOWLEDGE, AND NEITHER LICENSEE, NOR ANY OF ITS SUB-LICENSEES, SHALL
MAKE ANY STATEMENT OR REPRESENTATION TO THE CONTRARY.
(C) THE DIAGNOSTIC CONSIDERATIONS, SUGGESTIONS FOR
TESTS AND LISTS OF TREATMENTS, AS WELL AS PATIENT EDUCATION MATERIAL
AND PHYSICIAN REFERENCE MATERIAL, CONTAINED IN THIS PRIMECARE V9 ARE
NOT COMPLETE, MAY NOT BE CURRENT AND WILL NOT BE USED AS A
SUBSTITUTE FOR THE JUDGMENT OF THE PHYSICIAN, AND NEITHER LICENSEE,
NOR ANY OF ITS SUB-LICENSEES, SHALL MAKE ANY STATEMENT OR
REPRESENTATION TO THE CONTRARY. .
(D) THE LICENSEE ASSUMES TOTAL AND SOLE
RESPONSIBILITY FOR VERIFYING ALL INFORMATION CONTAINED IN PRIMECARE
V9 BEFORE APPLYING IT IN A CLINICAL SETTING.
10. NEGATION OF WARRANTY. PRIMECARE V9 IS PROVIDED ON AN "AS
IS" BASIS, AND THERE ARE NO WARRANTIES, EXPRESS OR IMPLIED,
INCLUDING, BUT NOT LIMITED TO, ANY WARRANTIES OF MERCHANTABILITY OR
FITNESS FOR A PARTICULAR PURPOSE OR USE OR AS TO THE ACCURACY,
COMPLETENESS OR CURRENCY OF ANY INFORMATION CONTAINED IN PRIMECARE
V9. LICENSEE SHALL BE SOLELY, TOTALLY AND EXCLUSIVELY RESPONSIBLE
FOR THE SELECTION, INSTALLATION, USE, EFFICIENCY AND SUITABILITY OF
PRIMECARE V9, AND LICENSOR, ITS AGENTS, DEALERS, EMPLOYEES AND
MEDICAL STAFF CONSULTANTS SHALL HAVE NO LIABILITY THEREFOR.
11. NEGATION OF PROPRIETARY RIGHTS INDEMNITY. LICENSOR, ITS
AGENTS, DEALERS, EMPLOYEES AND MEDICAL STAFF CONSULTANTS SHALL HAVE
NO LIABILITY TO LICENSEE, OR ANY OF ITS SUB-LICENSEES, FOR THE
CLAIMED INFRINGEMENT OF PROPRIETARY RIGHTS BY PRIMECARE V9 OR ANY
PORTION THEREOF.
12. Termination/cancellation.
(a) Licensor may terminate this Agreement, and the
License granted to Licensee hereunder if:
(i) Licensee fails timely to pay Licensor
any Fee or other required payment when due and payable;
(ii) Except as to a failure under Section
12(a)(I) above, Licensee, or any of its
Sub-licensees, is in default of any other provision
hereof, and such default is not cured within ten
(10) days after Licensor shall give Licensee written
notice thereof: or
(iii) Licensee becomes insolvent or seeks
protection, voluntarily or involuntarily, under any
bankruptcy or insolvency law.
(b) In the event of any termination of the
Agreement, or the License granted hereunder:
(i) Licensee and each of its Sub-licensees
shall cease any further Use of PrimeCare V9 or any
portion thereof, whereupon Licensee, and each such
Sub-licensees shall forthwith return the same and
all copies thereof to Licensor; and
(ii) Licensor may cease performance of all
of Licensor's obligations hereunder, without any
liability to Licensee.
(c) The Agreement, and the License shall
automatically terminate if Licensee, or any of its Sub-licensees,
uses the Software in any manner not expressly permitted hereunder.
(d) Licensor's foregoing rights and remedies shall
be cumulative and in addition to all other rights and remedies
available to Licensor in law or in equity.
13. Limitation of liability. IN NO EVENT SHALL LICENSOR, ITS
AGENTS, DEALERS, OFFICERS, DIRECTORS, EMPLOYEES AND MEDICAL STAFF
CONSULTANTS BE LIABLE TO LICENSEE FOR ANY:
(a) DAMAGES RESULTING DIRECTLY OR INDIRECTLY FROM,
OR RELATED TO, ANY FAILURE OF PRIMECARE V9, INCLUDING, BUT NOT
LIMITED TO, LOSS OF DATA, OR DELAY OF THE LICENSOR, ITS AGENTS,
DEALERS, OFFICERS, DIRECTORS, EMPLOYEES AND MEDICAL STAFF
CONSULTANTS IN THE DELIVERY OF PRIMECARE V9, OR IN THE PERFORMANCE
OF SERVICES THEREUNDER.
(b) DIRECT OR INDIRECT, SPECIAL OR CONSEQUENTIAL
DAMAGES OR LOST PROFITS ARISING OUT OF, OR RELATED IN ANY WAY TO,
THIS SOFTWARE LICENSE AGREEMENT, THE LICENSE GRANTED THEREUNDER, OR
THE PERFORMANCE OR BREACH THEREOF, EVEN IF LICENSOR HAS BEEN ADVISED
OF THE POSSIBILITY THEREOF. LIABILITY OF LICENSOR, ITS AGENTS,
DEALERS, OFFICERS, DIRECTORS, EMPLOYEES AND MEDICAL STAFF
CONSULTANTS TO LICENSEE HEREUNDER, IF ANY, SHALL IN NO EVENT EXCEED
THE TOTAL OF THE LICENSE FEES PAID BY LICENSEE HEREUNDER TO LICENSOR
DURING THE PERIOD CORRESPONDING TO WHEN SUCH LIABILITY ACCRUED.
14. Assumption of Risk and Liability. THE LICENSEE, FOR
ITSELF AND FOR EACH OF ITS SUB-LICENSEES, HEREBY ASSUMES ALL RISKS
ASSOCIATED WITH, AND/OR ARISING FROM, THE LICENSEE'S, OR ITS
SUB-LICENSEES, USE OF PRIMECARE V9. THE LICENSEE, FOR ITSELF AND FOR
EACH OF ITS SUB-LICENSEES, HEREBY RELEASES AND INDEMNIFIES LICENSOR,
ITS AGENTS, DEALERS, OFFICERS, DIRECTORS, EMPLOYEES AND MEDICAL
STAFF CONSULTANTS FROM ANY AND ALL LIABILITY, AND SHALL REIMBURSE
LICENSOR, ITS AGENTS, DEALERS, EMPLOYEES AND CONSULTANTS ON DEMAND,
FOR ANY, AND ALL, COSTS AND EXPENSES (INCLUDING ATTORNEY'S FEES AND
EXPENSES) WHICH LICENSOR, ITS AGENTS, DEALERS, OFFICERS, DIRECTORS,
EMPLOYEES AND MEDICAL STAFF CONSULTANTS MAY INCUR, AS THE RESULT OF
ANY CLAIMS ASSOCIATED WITH, AND/OR ARISING FROM, EITHER THE USE BY
LICENSEE OR A USER OF PRIMECARE V9 OR FROM THE ENFORCEMENT OF THIS
AGREEMENT.
LICENSEE FOR ITSELF AND FOR EACH OF ITS SUB-LICENSEES,
AGREES THAT NO ACTION, REGARDLESS OF FORM, ARISING OUT OF THE
TRANSACTIONS UNDER THIS AGREEMENT MAY BE BROUGHT BY LICENSEE MORE
THAN SIX (6) MONTHS AFTER LICENSEE KNEW OR SHOULD HAVE KNOWN OF THE
OCCURRENCE OF THE EVENTS WHICH GAVE RISE TO THE CAUSE OF ACTION.
LICENSEE, FOR ITSELF, FOR EACH OF ITS SUB-LICENSEES OR USER
UNDERSTAND AND AGREE THAT THE LIMITATION OF THE LIABILITY OF
LICENSOR, ITS AGENTS, DEALERS, OFFICERS, DIRECTORS, EMPLOYEES AND
MEDICAL STAFF CONSULTANTS, STATED ABOVE, REPRESENTS A DELIBERATE
ALLOCATION OF RISK WHICH AFFECTS THE PRICE OF PRIMECARE V9. WITHOUT
THIS EXCULPATION OF LIABILITY THE PRICE CHARGED BY LICENSOR WOULD
NECESSARILY BE MUCH GREATER. BY THE USE OF PRIMECARE V9, LICENSEE
AND EACH USER EXPRESSLY ACCEPTS THE ABOVE DISCLAIMERS OF LIABILITY.
15. Miscellaneous.
(a) This Agreement, together with the schedules and
exhibits annexed hereto, is the sole agreement between the parties
relating to the subject matter hereof, and supersedes all prior
understandings, writings, proposals, representations or
communications, oral or written, of either party. This Agreement may
be amended, modified or changed only by a prior written instrument
signed by the party against whom it is sought to be enforced.
(b) This Agreement and the License granted hereunder
may not be transferred or assigned by Licensee without the prior
written consent of Licensor.
(c) This Agreement shall be interpreted in
accordance with the substantive laws of the State of New York,
U.S.A.,without giving effect to the conflict of law provisions
thereof, and each party hereby grants jurisdiction over their person
to the federal and State courts located in Westchester County, State
of New York, U.S.A..
(d) In the event that any third party alleges or
claims that the Software infringes upon an intellectual property
right, then in that event, Licensee shall promptly notify Licensor
of such allegation or claim.
(e) No waiver of any performance or breach of any
provision of this Agreement shall constitute a waiver of any other
breach of that, or any other provision. No delay or failure on the
part of any party in exercising any rights under this Agreement (and
no partial or single exercise thereof) shall constitute a waiver of
such rights, or of any other rights, under this Agreement.
(f) In the event of a conflict between the terms of
this Agreement and any provision of any other instrument which is
not specifically identified as an amendment to this Agreement, even
though signed by duly authorized officers or representatives of all
parties, the terms of this Agreement shall control.
(g) No provision of this Agreement shall be deemed
waived, amended or modified by any party unless such waiver,
amendment or modification shall be in writing and signed by a duly
authorized officer or representative of the party against whom it is
sought to enforce the waiver, amendment or modification.
(h) In the event that any one or more provisions
contained in this Agreement, for any reason, should be held to be
unenforceable in any respect under the laws of the United States, or
of any State of the United States, or of any foreign government
(including Argentina, Brazil, Chile, Paraguay, and Uruguay), such
unenforceability shall not affect any other provision of this
Agreement, but this Agreement shall be construed in the applicable
jurisdiction as if such unenforceable provision had not been
contained herein.
(i) The headings in this Agreement are inserted for
convenience only, and shall not form a part of this Agreement or
affect the meaning or interpretation of this Agreement or any
provision hereof.
16. Notices. Any notice or other communication given under
this Agreement to any party shall be in writing and shall be
delivered, or mailed, to it at its address as hereinafter specified,
provided that any party may, by a similar notice, designate a change
of address for such party. Any such notice, if mailed properly
addressed, postage prepaid, shall be deemed given fifteen (15) days
after it had been deposited in the United States or Argentine mail,
by certified or registered mail, return receipt requested (or the
Argentinian equivalent thereof). Without limiting any of the
foregoing, a notice sent by telegram, confirmed facsimile or cable
by any authorized officer or authorized representative of a party
shall be deemed given upon receipt thereof. Whenever any party is
required to take action within a specified time period after receipt
of notice, the time period for taking such action shall be measured
three (3) days from the giving of such notice, if by mail, or from
the receipt of such telegram, confirmed facsimile or cable.
Until further notice, notice sent to the following addresses
shall be proper:
If to Licensor: PrimeCare Systems, Inc.
56 Harrison Street, Suite 501
New Rochelle, NY, U.S.A. 10801
Att: President
If to Licensee: Telemedica S.A.
Santa Fe 2534 Segundo A
(1425) Buenos Aires, Argentina
Att: President
IN WITNESS WHEREOF, the parties hereto have executed and
delivered this Agreement as of the date first above written.
PRIMECARE SYSTEMS, INC. TELEMEDICA SRL
Licensor Licensee
By: /s/ Robert A. Shiver By: /s/
Nathan Nebbe
Robert A. Shiver, President Nathan
Nebbe, President
SCHEDULE A
FEES: The Fees for the License granted pursuant to Section 2 of
the Agreement, and for the support services provided for
under Section 4 of the Agreement, shall consist of an
amount equal to twenty-five (25%) percent of the gross fees
charged by Licensee to each and every Sub-licensee for use
of the Software during the first three years of the Term of
this Agreement, or in the alternative, until the gross
revenues of Licensee derived from Sub-licensees in any year
of the Term exceeds four hundred thousand U.S. dollars
(US$400,000.00), whichever occurs first, and thereafter, an
amount equal to fifty (50%) percent of the gross fees
charged by Licensee to each and every Sub-licensee for use
of the Software. Licensee agrees that the fee to be charged
to a Sub-licensee shall be not less than four US dollars
(US$4) per annum, per patient of each Sub-licensee, without
regard to whether the patient or Sub-licensee uses the
software during that year, unless Licensor agrees, in
writing, to a lower fee.