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EXHIBIT 10.12(A)
LICENSE AGREEMENT
THIS AGREEMENT is made as of the 7th day of May, 1991, by and between
GEORGIA TECH RESEARCH CORPORATION, a nonprofit Georgia corporation with offices
in the Centennial Research Building, Georgia Institute of Technology, Atlanta,
Georgia, ("GTRC"); and LASER ATLANTA OPTICS, INC., a company incorporated under
the laws of the State of Georgia, and having its registered office in that state
at 6015D Unity Drive, Norcross, Georgia 30071, ("LASER").
W I T N E S S E T H:
WHEREAS, this Agreement is intended to cancel that certain License
Agreement between the parties hereto, dated April 10, 1990; and
WHEREAS, GTRC entered into an agreement with Joslin Diabetes Center
whereby GTRC obtained the exclusive right to market know--how related to a
method of using non-invasive instrumentation to quantitatively measure molecular
changes in living human lenses for the purpose of diagnosing diabetes and
precataractous conditions (the "Know-How") For the purpose of this Agreement,
Know-How includes, among other things, information not in the public domain,
including Confidential Information and Trade Secrets forwarded or transmitted to
LASER by GTRC, Dr. Nai-Teng Yu, Dr. Sven Bursell and Joslin Diabetes Center. The
system covered by the Know-How employs low power illuminations of different
optical wavelengths of the lens of the eye. The spectral content of the
resulting emitted light from specific sites in the lens is then acquired and
analyzed providing information that can be used to detect diabetes and
precataractous conditions.
WHEREAS, GTRC desires the further commercial development of the
Know-How and for such purpose has accepted the offer of LASER to collaborate
with GTRC upon the terms and conditions herein contained; and
WHEREAS, LASER desires to acquire an exclusive license, with the right
to grant sublicenses to others, to commercialize products incorporating the
Know-How (the "Products") and to operate and use such Products and to
manufacture, having manufactured, use, market, have marketed, sell and have sold
the Products; and
WHEREAS, GTRC and LASER have agreed that in connection with such
collaboration GTRC shall grant to LASER an exclusive license throughout the
world (the "Territory") to manufacture, have manufactured, use, market, have
marketed, sell and have sold Products incorporating the Know-How.
NOW THEREFORE, for and in consideration of the sum of one Hundred
($100.00) Dollars and other good and valuable consideration, the receipt and
sufficiency of which are hereby acknowledged, GTPC and LASER do hereby warrant
and agree as follows:
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1. EXCLUSIVE LICENSE
GTRC hereby grants to LASER the exclusive, worldwide, right and license
to commercialize, use and exploit the Products; to make, assemble, and use
apparatus machinery, auxiliaries, and all devices for carrying such Products
into practice; and to manufacture, have manufactured, use, market, have
marketed, sell and have sold the Products.
(a) GTRC hereby grants to LASER the right to grant sublicenses on such
terms as are consistent with the provisions of this Agreement.
(b) The exclusive rights and licenses herein granted shall include all
inventions, improvements to, enhancements of and modifications of the Know-How
and Products thereto made or conceive during the term of this Agreement which
GTRC owns or controls or hereafter owns or controls and all patent applications
and patents based on or covering the same which the GTRC now owns or hereafter
owns or controls.
2. REPRESENTATIONS BY GTRC
(a) Much of the Know-How is secret, and to the best of GTRC's
knowledge and belief has not been revealed to anyone except
Joslin Diabetes Center and Dr. Sven Bursell, and shall not be
revealed to anyone without the prior approval of LASER.
(b) GTRC shall communicate to LASER all information and data,
which may come into its possession, relating to the Know-How,
but no information prominently marked "Confidential" so
communicated or otherwise acquired by LASER from GTRC, save
such information which is in the public domain, shall be
divulged to any third party (except to employees or
consultants of LASER and its sublicensees) without the prior
consent of GTRC.
(c) GTRC's and LASER' a obligations set out in this section shall
survive the termination of this Agreement to the extent that
such information has not entered the public domain.
(d) GTRC has an agreement with Joslin Diabetes Center (the
subcontractor) concerning the "Know-How" which provides for
the sharing of royalties.
3. PATENTS
(a) Should LASER at any time seek and obtain Letters Patent or
equivalent protection for any development arising from its use
of the Know-How not in the public domain, any products covered
by such Letters Patent or equivalent protection shall be
deemed to be Products within the terms of this Agreement and
be subject to the terms and conditions herein.
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(b) LASER shall advise GTRC within fourteen (14) days of lodging
an application for such Letters Patent or equivalent
protection, and shall keep GTRC advised of the prosecution and
maintenance of such Letters Patent or equivalent protection.
4. OWNERSHIP OF PATENTS
All patents regarding "the Know-How" shall be the sole exclusive
property of GTRC, subject to the exclusive license hereby granted GTRC shall,
upon demand, execute and deliver to LASER such documents as may be deemed
necessary or advisable by counsel for LASER for filing in the appropriate patent
offices to evidence the granting of the exclusive license hereby granted.
5. ROYALTIES
LASER shall pay to GTRC:
(a) Where the products are the subject of a Patent Application,
Letters Patent or equivalent protection, a [*] price ("Net
Selling Price) for each Product manufactured and sold anywhere
in the world.
Net Selling price shall mean LASER's gross selling price for the Products less
any of the following:
1) sales or excise taxes paid directly or indirectly to
LASER;
2) any shipping costs separately itemized by LASER;
3) normal and customary trade discounts, returns and
allowances.
(b) In all other cases, a [*].
(c) It shall be the obligation of LASER to pay all royalties due
hereunder to GTRC and GTRC shall not be required to look to
any other seller to recover any monies.
(d) The obligations of LASER with respect to the payment of
royalties in accordance with this Agreement shall apply with
respect to all sales in any country of the Territory,
notwithstanding that no letters Patent or equivalent
protection shall have been obtained or be in force in that
country.
6. ACCOUNTS
(a) LASER shall not later than the First day of March in each year
furnish to GTRC a statement showing the total net sales by
LASER and any approved sub-licensees during the immediately
preceding calendar year, and the royalties payable thereon
calculated in accordance with this Agreement.
[*] Confidential treatment requested pursuant to a request for confidential
treatment filed with the Securities and Exchange Commission. Omitted
portions have been filed separately with the Commission.
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(b) LASER shall keep at its usual place of business true and
particular accounts of all matters connected with the use of
the Know-How and the manufacture and sale of all Products and
shall, if so requested by GTRC make available books of account
relating to royalties payable hereunder containing true
entries complete in every particular as may be necessary or
proper for enabling the amount of such royalties to be
conveniently ascertained.
7. ASSIGNMENT
This Agreement shall be binding upon and inure to the benefit of the
successors and assigns of the parties hereto, but shall not otherwise be
assigned by either party without the written consent of the other party; EXCEPT
THAT GTRC shall have the right to assign this Agreement to the Georgia Institute
of Technology or the Board of Regents of the University System of Georgia.
8. NO WARRANTY
GTRC does not nor will it assert or warrant that the Know-How or any
improvement thereto is not an infringement of the rights of third parties nor
that under the law of any country it will be possible to grant an exclusive
license.
9. NEW INVENTIONS
If during the term of this Agreement GTRC, individually or
collectively, makes any further improvements in such Products or Know-How or the
mode of using them or becomes the owners of any new improvements either through
patents or otherwise, then it shall communicate such improvements to LASER and
LASER shall have the right to include the same in this Agreement without
additional compensation. Provided, however, that this paragraph shall not apply
to any situation in which GTRC has a contrary contractual commitment as a third
party.
10. NOTICE
Any notice under this Agreement shall be addressed as follows:
(a) Georgia Tech Research Corporation
Centennial Research Building
Georgia Institute of Technology
Atlanta, Georgia
(b) Laser Atlanta Optics, Inc.
6015D Unity Drive
Norcross, Georgia 30071
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With a copy to:
Thornton W. Morris & Co., P.C.
1950 North Park Place
Suite 400
Atlanta, Georgia 30339
11. FORCE MAJEURE
Neither party shall be held in breach of this Agreement for any reason
for acts or omissions caused by any act of God or other cause beyond the control
of the parties, including, but not limited to, fire, floods, labor disputes, or
other unforeseen circumstances.
12. INDEMNITY
Notwithstanding anything herein contained, LASER shall indemnify and
save GTRC harmless with respect to any claims by any third party against GTRC
alleging loss, damage or injury as a result only of the use by LASER or by such
third party of the Products. The obligation of Indemnity shall survive
Termination.
13. TERM OF LICENSE
Subject to Clauses 14 and 15 herein, this Agreement and the license
granted hereunder shall continue in force for Fifteen (15) years from the date
hereof.
14. TERMINATION BY LASER
LASER may terminate this Agreement by giving to GTRC at least Three (3)
months notice in writing of any breach by GTRC of this Agreement which causes
damage to LASER, specifying the particulars of the breach and requiring that it
be rectified or made good and by a further notice if at the expiration of that
period of three months, the relevant breach has not been rectified or made good
WITHOUT PREJUDICE however to the right of GTRC to sue for and recover any moneys
due to GTRC with respect to any previous breach by LASER of any of the
provisions of this Agreement.
15. TERMINATION BY GTRC
GTRC may terminate this Agreement by Thirty (30) days notice in writing
to LASER on the happening of any of the following events:
(a) If LASER shall commit or allow to be committed a breach of any
of the terms and conditions on its part here in contained; or
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(b) If LASER makes any assignment for the benefit of its
creditors, provided, however, that this provision shall not
apply to the assignment of any rights made as collateral for
new loans; or
(c) If a receiver, liquidator or official manager is appointed
with respect to LASER indicates its consent, approval of or
acquiescence in any proceedings for the appointment of any
such receiver, liquidator or official manager; or
(d) If LASER ceases to carry on its business;
WITHOUT PREJUDICE HOWEVER to the right of GTRC to sue for and recover
any money then due and to the rights of GTRC with respect to any
previous breach by LASER of any of the provisions contained in this
Agreement.
16. SEVERABILITY
A holding that a Clause of this Agreement is invalid or unenforceable
shall not effect any other provisions of this Agreement.
17. USE OF NAMES
LASER shall not use the names of GTRC, the Georgia Institute of
Technology or any affiliate or entity in any advertisement or sales material
without the prior written consent of the entity or entities name in such
material.
18. INTERPRETATION
(a) In the interpretation of this Agreement, unless the context
otherwise requires, words importing the singular or plural
number shall be deemed to import the plural and singular
number respectively, words denoting gender shall include all
genders, and references to persons shall include corporations
or other bodies or vice versa.
(b) The headings in this Agreement are included for convenience
only and are not to be construed as forming part of the text
or as in any way affecting the interpretation of this
Agreement.
(c) Nothing herein shall be construed as forming any sort of
partnership or joint venture between GTRC and LASER. The
relationship between the parties is that of licensor and
licensee.
(d) This Agreement shall be interpreted and governed in all
respects by the laws of the State of Georgia.
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19. ENTIRE AGREEMENT
This Agreement embodies the entire Agreement between GTRC and LASER
respecting the subject matter hereof and may not be modified or amended except
in a writing signed by GTRC and LASER.
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IN WITNESS WHEREOF the parties have hereunto signed this Agreement on
the day hereinbefore referred to.
GEORGIA TECH RESEARCH LASER ATLANTA OPTICS, INC.
CORPORATION
By: /s/ J.W. Dees By: /s/ Mark A. Samuels
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Typed Name: J.W. Dees Typed Name:
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Title: Assistant Secretary Title:
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Date: May 7, 1991 Date:
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By: /s/ R.M. Bell
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Typed Name: R.M. Bell
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Title: Vice President/General Manager
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Date: May 7, 1991
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