EXHIBIT 10.11
Dated 13th February 2002
GEOFFREY H GALLEY & OTHERS (1)
and
COOPER VISION INC. (2)
-----------------------------------------------------------
PATENT LICENCE AGREEMENT
-----------------------------------------------------------
PATENT LICENCE AGREEMENT
This Patent Licence Agreement is entered into as of 13th February 2002 by COOPER
VISION INC. whose principal place of business is at 21062 Bake Parkway, Suite
200, Lake Forest, CA 92630, USA (hereinafter "CV") and Geoffrey H Galley of Red
Lodge, The Close, Totteridge, London N20 8PJ, Anthony D Galley, Albert Morland,
Barrie Bevis and Ivor Atkinson (all care of the said Geoffrey H Galley)
(together "the Patent Owners").
WHEREAS: The Patent Owners are owners of a series of patents.
and
WHEREAS: CV entered into a licence with the Patent Owners dated 2 December 1997
("1997 Licence") for itself and its affiliates under those patents to
manufacture contact lenses.
and
WHEREAS: CV intends to acquire Biocompatibles and Hydron.
and
WHEREAS: The Parties wish to terminate with effect from the Effective Date the
1997 Licence,
and
WHEREAS: The Patent Owners are willing to grant a new licence to CV on the terms
and conditions of this Agreement, to apply in substitution for the 1997 Licence.
Now it is hereby agreed as follows:
1. In this Agreement the following expressions shall have the following
meanings:
Affiliate shall mean any company which directly or
indirectly controls or is controlled by or
is under common control with another company
including as a subsidiary or holding
company. For the purposes of this
definition, "control" means the ownership of
100% of the issued share capital in or the
legal power to direct or cause the direction
of the general management and policies of
the company in question.
Agreement shall mean this patent licence agreement.
-1-
Arbitrator shall mean a QC (being Queen's Counsel, who
is a member of a United Kingdom Inn of
Court) acceptable to both Parties with the
assistance, if required, of an independent
chartered accountancy practice acceptable to
both Parties or if no agreement can be
reached within fourteen days of one Party
notifying the other of its wish to refer a
matter to an arbitrator in accordance with
Clause 13, such arbitrator shall, upon the
application of either Party, be appointed by
the President, for the time being, of the
Law Society.
Biocompatibles shall mean Biocompatibles Eyecare Inc.
Biocompatibles shall mean the patent licence agreement
Licence between Biocompatibles Licence Limited and
the Patent Owners dated 4 December 1997 (now
terminated).
Effective Date shall mean the 1st of November 2001.
Hydron shall mean Hydron Limited.
Hydron Licence shall mean the patent licence agreement
between Hydron and the Patent Owners dated 6
July 1995.
Improvement shall mean any improvement, modification or
addition to the Licensed Patents or to any
Know-How.
Know-How shall mean all information to the extent
that such information is not in the public
domain (including that comprised in
formulae, techniques, designs,
specifications, drawings, components, lists,
manuals, instructions and catalogues)
relating to:
(i) the composition or production of
Lenses;
(ii) the design, development, manufacture
or use of Lenses;
(ii) the repair and maintenance of Lenses;
(iv) quality control;
(v) tooling design.
-2-
Lenses Lenses shall mean contact lenses produced in
accordance with the Licensed Patents.
Licence Fee shall mean the Standard Licence Fee or the
Reduced Licence Fee (as the case may be).
Licensed Patents shall mean the patents deriving and
prioritised from an original application
which resulted in the granting of United
Kingdom Patent No. GB 2,226,977 as listed in
Schedule 1, together with all other patent
applications and patents as may in the
future be derived therefrom.
[ * ] shall mean [ * ]
[ * ] shall mean [ * ]
Parties shall mean CV and the Patent Owners.
Patents shall mean the patents included in the
Licensed Patents.
Quarter shall mean the period of 3 calendar months
from the Effective Date and each consecutive
period of 3 calendar months thereafter
(ending on 31 January, 30 April, 31 July and
31 October respectively) and the phrase
"Quarterly" shall be construed accordingly.
Reduced Licence shall have the meaning ascribed to it in
Fee Clause 3.3.
Relevant Tax shall mean in relation to any payment which
is required to be made under this Agreement
any present or future tax of any nature now
or hereafter imposed by the rules of any tax
authority.
Standard Licence shall have the meaning ascribed to it in
Fee Clause 3.1.
Term shall have the meaning ascribed to it in
Clause 9.
Third Party shall have the meaning ascribed to it in
Clause 2.3.
- --------------------------------
* Confidential treatment has been requested from the Securities and Exchange
Commission. Omitted portions have been filed separately with the Commission.
-3-
Year shall mean the period of 12 calendar months
from the Effective Date and each consecutive
period of 12 calendar months thereafter
(ending on 31 October). For the purposes of
Schedule 2, "Year 1" is the period from the
Effective Date until 31 October 2002 and
"Year 2", "Year 3" etc. shall be construed
accordingly.
1.2 In this Agreement:
1.2.1 unless the context otherwise requires all references to a
particular Clause or Schedule shall be a reference to that
clause or schedule in or to this Agreement as it may be
amended from time to time pursuant to this Agreement;
1.2.2 the headings are inserted for convenience only and shall be
ignored in construing this Agreement;
1.2.3 unless the contrary intention appears, words importing the
masculine gender shall include the feminine and vice versa and
words in the singular shall include the plural and vice versa;
and
1.2.4 unless the contrary intention appears, words denoting persons
shall include any individual, partnership, company,
corporation, joint venture, trust, association, organisation
or other entity, in each case whether or not having separate
legal personality.
2. TERMINATION OF THE 1997 LICENCE AND GRANT OF NEW LICENCE
2.1 The Parties agree that, in consideration of the covenants contained in
this Agreement, the 1997 Licence shall, with effect from the Effective
Date, terminate and all the rights and obligations of the parties
thereunder shall cease and be of no further force and effect. For the
avoidance of doubt, any breach by either party thereto of any
provisions of the 1997 Licence is unconditionally and irrevocably
waived by the other party thereto and each Party hereby releases and
discharges the other Party absolutely from all claims and rights
whatsoever that it may have had arising out of or in connection with
the 1997 Licence.
2.2 Subject to the other terms and conditions of this Clause 2, the Patent
Owners hereby grant with effect from the Effective Date to CV a
worldwide, non-exclusive licence, to make, have made, use and sell
Lenses under the Licensed Patents.
2.3 CV shall be entitled at any time without notifying the Patent Owners to
sub-licence its rights hereunder to any Affiliate of CV and, subject to
Clause 3.5, shall be entitled at
-4-
any time without notifying the Patent Owners to sub-license its rights
hereunder to any person that is not an Affiliate of CV ("Third Party").
2.4 CV agrees that any sub-licences granted by it shall be personal to the
sub-licensee, shall not be capable of further sub-licensing by the
sub-licensee, and shall not be assignable and shall not be inconsistent
with this Agreement and shall not prejudice the Patent Owners' rights
set out in this Agreement. CV shall forward to the Patent Owners a copy
of all fully executed sub-licences or sub-licence agreements entered
into with sub-licensees from time to time within 28 days of execution
thereof, but shall not be required to do so in respect of any Affiliate
sub-licensee of CV save that if such sub-licensee ceases to be an
Affiliate of CV, then CV shall supply to the Patent Owners a copy of
the relevant sub-licence within 28 days of such sub-licensee ceasing to
be an Affiliate of CV.
2.5 CV shall at all times during the continuance of this Agreement be
responsible for the observance and performance by every sub-licensee of
the terms and conditions of the sub-licence and shall use all
reasonable endeavours to monitor and enforce the obligations of every
sub-licensee in terms of the relevant sub-license. Without prejudice to
the generality of the foregoing, CV shall indemnify the Patent Owners
in respect of any actions or omissions of the sub-licensee.
2.6 The Patent Owners shall not grant any further licences of the Licensed
Patents to third parties without the prior written consent of CV.
2.7 If the Patent Owners make or acquire any Improvement relating to the
Licensed Patents, they shall, to the extent that they are not
prohibited by law, by any undertaking given to others or by
considerations relating to security of a patent or other intellectual
property right protection, promptly notify CV in writing giving details
thereof and shall provide to CV free of charge such information or
explanations as CV may reasonably require to be able legally and
effectively to utilise the same for the Term and the Patent Owners
shall grant to CV a non-exclusive, worldwide, royalty-free licence to
the use of Improvements disclosed by the Patent Owners hereunder on the
same terms as those in this Agreement
2.8 CV and the Patent Owners agree and undertake that, following the
acquisition by CV (or any of its Affiliates) of Biocompatibles, they
shall procure (CV procuring in respect of the rights of Biocompatibles
and the Patent Owners acting in respect of their own rights) that the
Hydron Licence is terminated with effect from the Effective Date and
that all the rights and obligations of the parties thereunder and (to
the extent that any remain following its earlier termination) under the
Biocompatibles Licence
-5-
shall cease and be of no further force and effect to the intent that
any breach by either party to the Hydron Licence or the Biocompatibles
Licence (as the case may be) will be unconditionally and irrevocably
waived and that each party thereto will be released and discharged
absolutely from all claims and rights whatsoever that any such party
may have had arising out of or in connection with the Hydron Licence
and/or the Biocompatibles Licence.
3. LICENCE FEE
3.1 In consideration of the rights granted to CV under Clause 2, CV shall,
subject to the provisions of Clause 3.2, pay to the Patent Owners the
sum of 'L'21,485,494, such sum to be paid in instalments in accordance
with Clause 4 (the "Standard Licence Fee").
3.2 If, at any time during the Term, [ * ] the provisions of Clause 3.3
shall apply.
3.3 With effect from the first day of the Quarter ("Relevant Quarter")
immediately following [ * ], the licence fee payable by CV in
accordance with Clause 4 shall in respect of each Quarter thereafter be
reduced by an amount equal to [ * ]% (the "Reduced Licence Fee").
3.4 CV acknowledges that the amount of the Licence Fee payable pursuant to
this Agreement has been agreed between the Parties by way of full and
final settlement of all matters and disputes arising out of, or in
connection with, the 1997 Licence and that, accordingly, the Licence
Fee shall continue to be payable even if CV ceases directly or
indirectly to make use of and/or sell Lenses under the Licensed
Patents.
3.5 If CV grants a sub-licence to a Third Party under Clause 2.3, then CV
shall pay to the Patent Owners [ * ]% of all royalties and lump sums
paid to CV and any other benefits whether in cash or in kind receivable
by CV from any Third Party in consideration of the grant or subsistence
of such sub-licence. For the avoidance of doubt, CV shall not be
obliged to account to the Patent Owners in respect of any payments
received by CV pursuant to any sub-licence granted to an Affiliate of
CV, even if such Affiliate is subsequently acquired by a third party.
3.6 The Patent Owners hereby agree that, in the event that they become
entitled to any royalty payments under the Hydron Licence which become
due at any time after the Effective Date, they shall, at CV's option,
either assign their right to receive such royalty payments to CV or pay
such royalty payments over to CV. For the avoidance of doubt, this
Clause 3.6 shall apply whether or not CV (or any Affiliate of CV)
- --------------------------------
* Confidential treatment has been requested from the Securities and Exchange
Commission. Omitted portions have been filed separately with the Commission.
-6-
acquires Biocompatibles and/or Hydron. The Patent Owners shall, within
7 days of the date of this Agreement, instruct Biocompatibles and
Hydron to pay any royalty payments under the Hydron Licence which
become due at any time after the Effective Date directly to CV.
4. PAYMENT
4.1 Subject to Clauses 3.2 and 3.3, CV shall, in respect of each Quarter,
pay the Patent Owners in pounds sterling in arrears the amount set out
in the column headed "QUARTERLY FEE ('L')" in Schedule 2 which is
referable to the relevant Year, such payments to be made no later than
30 days after the last day of that Quarter. Time shall become of the
essence in relation to payments due to the Patent Owners under this
Agreement after a period of 30 days following notification by the
Patent Owners to CV that CV has failed to make a payment.
4.2 Payment shall be made to each Patent Owner directly into the bank
account of the relevant Patent Owner as specified to CV by the relevant
Patent Owner.
4.3 Without prejudice to any other rights the Patent Owners may have,
interest shall be payable at 2.5% per annum over the base rate of
National Westminster Bank Plc or its successor on late payment
calculated on a daily basis from the date on which payments are due
until receipt of payment in cleared funds by the Patent Owners.
4.4 CV acknowledges and agrees that, if CV is late in making any due and
payable Licence Fee payment by more than 30 days and if CV fails to
make such payment together with all interest thereon within 30 days of
any one of the Patent Owners notifying CV in writing requiring them to
pay the same, the Licence Fee to the extent not yet received by the
Patent Owners at such time shall immediately become due and payable in
full.
5. TAXES
5.1 Subject to Clause 5.2, all payments to be made by CV to the Patent
Owners under this Agreement shall be made free and clear of, and
without deduction or on account of, any Relevant Tax.
5.2 In the event that any relief from deduction or withholding of any
Relevant Tax may be available, the Patent Owners and CV agree and
undertake that the Patent Owners will use all reasonable endeavours to
complete the appropriate form for US tax purposes and lodge the form
with CV so that an exemption from withholding tax be obtained under the
applicable double-tax treaty.
-7-
5.3 Subject to Clauses 5.1 and 5.2, if CV is required by law to make any
payment under this Agreement subject to the deduction or withholding of
any Relevant Tax the full amount required to be deducted or withheld to
the relevant taxation or other authority shall be so deducted or
withheld by CV under the applicable law and CV shall deliver to the
Patent Owners within 30 days of actual receipt (or such shorter time
after actual receipt as the applicable authority requires) a receipt or
certified copy thereof or other appropriate evidence issued by such
authority evidencing the payment to such authority of all amounts so
required to be deducted or withheld in respect of such payment.
5.4 Subject always to Clause 5.5, in circumstances in which CV is required
by law to make a payment under this Agreement subject to deduction or
withholding in accordance with Clause 5.3 CV shall, on the relevant
payment dates, pay to the Patent Owners, in addition to the payments
due under this Agreement, 50% of the Relevant Sum. For the purposes of
this clause, the Relevant Sum shall be the amount which is equal to the
sum which would be required to be paid to the Patent Owners by CV to
ensure that, after the making of such deduction or withholding as is
required by Clause 5.3, the Patent Owners would receive and retain
(free from any liability in respect of any such deduction or
withholding) a net sum equal to the sum which they would have received
and so retained had no such deduction or withholding of any Relevant
Tax been made or been required to be made.
5.5 There shall be no obligation on CV to make a payment to the Patent
Owners under Clause 5.4 if the Patent Owners in their reasonable
opinion determine that, by virtue of the withholding or deduction
referred to in Clause 5.3, they have received, or will within a
reasonable period receive, a credit against, or any relief for, any tax
paid or payable by the Patent Owners in respect of the payments due to
them under this Agreement.
-8-
6. INTELLECTUAL PROPERTY
Except as provided for in this Agreement, CV recognises the Patent
Owners' title to the Licensed Patents and shall not claim any right,
title or interest in the Licensed Patents (save as provided for in this
Agreement) or at any future time seek to register or use any of the
Licensed Patents in its own name as proprietor.
7. ENFORCEMENT OF PATENTS AND PROSECUTION OF PATENTS
7.1 If any Party learns of any infringement or suspected infringement of a
Licensed Patent or Know-How it shall promptly notify the other Parties,
CV shall have the option and is hereby irrevocably authorised by the
Patent Owners, at its own expense, and in the name of the Patent
Owners, to take action against any such infringer or alleged infringer,
and shall be entitled to any damages received related to such matter.
If CV so takes action against any such infringer or alleged infringer,
CV shall, in its absolute discretion, determine what action if any
shall be taken, and shall have sole control over and shall conduct any
such action as it shall deem necessary, and the Patent Owners shall
take such actions as CV reasonably requests (including, but not limited
to, the use of its name in or being joined as a party to proceedings)
to facilitate CV's actions, provided, however, that CV shall reimburse
the Patent Owners for their reasonable expenses in assisting CV in such
matter.
7.2 In the event that action taken by CV against an infringer pursuant to
Clause 7.1 results in a court ruling in CV's favour and that the
reasonable expenses incurred by CV in taking such action exceed the
amount of damages payable to CV in relation to such matter, the Parties
shall bear the remainder of such excess expenses [ * ]. Subject to the
Patent Owners' agreement to the calculation of the amount due from them
to CV, such amount shall be treated as a prepayment of Licence Fee due
to the Patent Owners under this Agreement. In any other circumstances,
CV shall bear its own expenses incurred under Clause 7.1,
7.3 If CV grants a sub-licence to a Third Party following settlement of an
infringement action brought by it against such Third Party, CV shall be
entitled to deduct its reasonable costs (f any) in pursuing such action
from the amounts required to be paid by CV pursuant to Clause 3.5.
7.4 The Patent Owners shall, subject as hereinafter provided, during the
Term pay all renewal fees and do all such acts and thing as may be
necessary to maintain in force
- --------------------------------
* Confidential treatment has been requested from the Securities and Exchange
Commission. Omitted portions have been filed separately with the Commission.
-9-
the Patents and shall produce to CV the receipt for such renewal fees
not less than seven (7) days before the last day for renewing any of
such Patents (excluding periods allowed in extension of the time limit
for renewing), and in default shall recognise the right of CV to pay
the same and to be credited with the cost thereof. The Patent Owners
shall reimburse CV for any fees paid by CV pursuant to this Clause 7.4
within fourteen (14) days of receiving from CV notification that CV has
paid such fees.
7.5 The Patent Owners undertake, during the Term, not to abandon or allow
to lapse any of the Patents or to amend the specification of any of
them during the Term without the prior written consent of CV.
8. INDEMNIFICATION
8.1 Subject to Clause 8.2, the Patent Owners will indemnify and hold
harmless CV (together with its officers, servants and agents) against
any and all liability, loss, damages, costs (whether special, indirect,
consequential, direct or otherwise) including attorneys' fees
(i) that may be incurred in defending any claim or
(ii) awarded or agreed to be paid in respect of any claim, to any
third party in respect of any claim or action that the possession
or use of the Licensed Patents and Know-How infringes the patents
of the said third party. The Patent Owners shall have full
conduct of such claims save that they shall not settle or
otherwise compromise such claims without the prior written
consent of CV, such consent not to be unreasonably withheld or
delayed. If either Party learns of any infringement or suspected
infringement of the patents of a third party as referred to
above, it shall promptly notify the other Party.
8.2 In the event of the Patent Owners becoming liable to CV under the
provisions of Clause 8.1, the amount payable to CV under that Clause
shall not exceed an amount equal to the Licence Fee payable to the
Patent Owners under this Agreement from the date of a third party
bringing an action against CV. Under no circumstances shall the Patent
Owners be required to repay any Licence Fee paid to them prior to the
date of such action being brought. CV shall be entitled to suspend
payment of the Licence Fee to the Patent Owners from the date of such
action being brought provided that
8.2.1 in the event the third party action is struck out for want of
prosecution or otherwise or in any case when an action is lost
by the third party, CV shall forthwith pay to the Patent
Owners the amount of the Licence Fee falling due during the
period of the suspension, and
-10-
8.2.2 in the event of a third party successfully bringing an action
against CV for infringement of that third party's patent or
patents ("Third Party Patent") by the possession or use by CV
of one or more of the Licensed Patents and CV paying royalties
to that third party in respect of the Third Party Patent, CV
shall, in addition to suspending payments of the Licence Fee
in respect of the appropriate Licensed Patent, be entitled to
deduct from the Licence Fee due to the Patent Owners under
this Agreement the amount of any royalties it pays to such
third party in respect of the Third Party Patent.
9. TERM
This Agreement shall remain in effect from the Effective Date for a
period of eight Years or until the last of the Licensed Patents
expires, is abandoned or is finally adjudicated invalid, whichever is
the earlier (the "Term"), and, save as provided in Clause 10, this
Agreement may not be terminated earlier by either Party.
10. TERMINATION
10.1 This Agreement may be terminated forthwith by written notice from the
Patent Owners in the event that CV is late in making any due and
payable Licence Fee payment by more than 30 days, and if CV fails to
make such payment together with all interest thereon within 30 days of
any one of the Patent Owners notifying CV in writing requiring them to
pay the same.
10.2 CV shall be entitled to terminate this Agreement forthwith by written
notice with immediate effect if all the Licensed Patents are revoked or
declared invalid.
10.3 Termination of this Agreement shall not affect the accrued rights of
the Parties arising in any way out of this Agreement as at the date of
termination and in particular but without limitation the right to
recover damages from the other.
10.4 Upon the termination of this Agreement or upon its expiry, CV shall
forthwith return to the Patent Owners or permit the Patent Owners to
enter onto its premises for the purpose of repossessing all drawings,
data, material and other documents including, without limitation,
software supplied to CV by the Patent Owners and any copies of any of
the same in its possession or under its control (whether or not
containing Know-How) and shall procure the return of any of the same
(and any copies) in the possession of, or under the control of, any
third party.
10.5 Expiry of this Agreement or its termination for whatever cause shall
not release CV from any of its obligations which expressly or by
implication become effective or continue to be effective on or after
the termination of this Agreement
-11-
10.6 Termination of this Agreement for whatever cause or its expiry shall be
without prejudice to the rights of the Parties in respect of any
antecedent breaches or any other rights which may have arisen under
this Agreement and shall not relieve any Party from any existing
obligation or liability which has arisen under this Agreement.
10.7 Upon termination of this Agreement, all related sub-licences granted by
CV shall immediately (unless the sub-licensee is then in default
thereunder entitling CV to terminate such sub-licence) be deemed to be
licences in the terms they were granted by CV, and shall continue as if
originally granted by the Patent Owners, and the Patent Owners and CV
shall enter into such further documents as may be needed to give effect
to this SAVE THAT the Patent Owners shall not be bound to enter into
any such arrangement unless they are satisfied that the terms of any
such arrangement impose no obligations on the Patent Owners other than
those incumbent on the Patent Owners pursuant to this Agreement.
11. REPRESENTATIONS AND WARRANTIES BY THE PATENT OWNERS
The Patent Owners hereby represent and warrant to CV as follows:
11.1 Ownership of Licensed Patents: The Patent Owners are the registered
proprietors of the Patents and own all right, title and interest to the
Licensed Patents, free and clear of any liens, charges or other
encumbrances. The Patent owners have not done or omitted nor will
hereafter do or omit any act or thing whatsoever whereby the Licensed
Patents may be invalidated, encumbered or otherwise prejudicially
affected or the due performance of this Agreement hindered or
prevented.
11.2 No Other Applicable Patents: The Patent Owners do not own or have any
other interest in any other patents or patent applications applicable
to the cast moulding of Lenses.
11.3 Legal Proceedings: No Default: No action, suit, proceeding or
investigation so far as the Patent Owners are aware is pending or
threatened by any person or entity which seeks to challenge the
validity of the Licensed Patents and the Patent Owners arc not aware of
any basis therefor. The execution of this Agreement and the carrying
out of its provisions will not result in a violation of any contract,
agreement or obligation of the Patent Owners.
11.4 Authority: The Patent Owners have all requisite power and authority to
enter into this Agreement and to carry out its terms. All actions on
the part of the Patent Owners necessary for the authorisation,
execution, delivery and performance of their obligations hereunder has
been taken, and this Agreement, when executed and
-12-
delivered by the Patent Owners shall constitute their valid and legally
binding obligation, enforceable in accordance with its terms
11.5 Patent Infringement: The Patent Owners are not aware of any other
person or entity infringing any of the Licensed Patents, and are not
aware of any reason why the Licensed Patents, or any claims thereof,
could be challenged or invalidated.
11.6 No Other Licences: Other than the agreements listed in Clause 2.5 of
the 1997 Licence, the Patent Owners will not grant or purport to grant
any other licences, rights, assignments over or relating to the
Know-How or the Licensed Patents or over or relating to any other
industrial or intellectual property relating, or which may relate to,
Lenses.
11.7 Know-How: Other than under the agreements listed in Clause 2.5 of the
1997 Licence, the Patent Owners have not disclosed any of the Know-How
to any third party save under an obligation of confidence.
11.8 Infringement of Third Party Rights: To the best of the knowledge,
information and belief of the Patent Owners, the use of the Licensed
Patents by CV, its servants, agents or customers will not infringe the
rights of any third party.
11.9 Placing Right to Apply for Patent in Jeopardy: The Patent Owners have
not, nor to the knowledge of the Patent Owners has any other person,
done or omitted to do any act whereby the right to apply for letters
patent in respect of the Lenses and the conditions, requirements or
circumstances affecting the validity of the grant of any such letters
patent may be jeopardised.
-13-
12. GENERAL
12.1 Entire Agreement
This Agreement constitutes the entire understanding between the Parties
relating to the subject matter hereof and no modification or addition
to this Agreement shall have any effect whatsoever unless it is set
forth in writing and is referred to as a modification or addition to
this Agreement and signed by CV and by Geoffrey H Galley or Anthony D
Galley (or the duly authorised representative of either) or their
respective heirs or assigns for and on behalf of the Patent Owners.
12.2 Severability
Every provision of this Agreement shall be severable and should any
provision of this Agreement be void, or be liable to render this
Agreement void, then this Agreement shall be read as if that provision
were excluded.
12.3 Waiver
The failure of either Party to enforce at any time any term of this
Agreement or to exercise any right under this Agreement shall in no way
affect the validity of this Agreement or the right of the Party
thereafter to enforce any term of this Agreement or to exercise any
right under this Agreement unless such Party has provided to the other
Party in writing a specific waiver of such right. Notwithstanding the
above, either Party shall be entitled to an estoppel in relation to any
material breach of this Agreement which was known to one of the Parties
and of which such Party failed to inform the other Party in writing for
a period of six months from the date at which it had such knowledge.
12.4 Governing Law
This Agreement shall be governed by the law of England and Wales, and
the Parties hereby submit to the jurisdiction of the English Courts.
12.5 Service Agent
CV hereby irrevocably authorises and appoints CooperVision Limited of
Aspect House, Hamble Lane, Hamble, Hampshire SO31 4NH as its agent for
service of proceedings in relation to any matter arising out of or in
connection with this Agreement and service on such service agent shall
be deemed to be service on CV.
12.6 No Use of Name
Except as may be required by law or by virtue of contractual
obligations with third parties which are in existence at the date of
signing of this Agreement, and save in
-14-
respect of disclosure, under conditions of confidence, to professional
advisers and/or to potential sub-licensees, neither Party shall make
any disclosure of this Agreement or its terms without the prior written
consent of the other Party which shall not be unreasonably withheld.
12.7 Assignment
This Agreement will bind and inure to the benefit of each Party's
successors and assigns.
12.8 No Right of Offset
Other than as provided for under Clause 8.2, the Parties hereby waive
any and all claims of set-off against any payments (including interest)
due hereunder and each Party agrees to pay all amounts payable
hereunder to the other regardless of any rights in equity, set-off or
cross-claim it may have against the other and without any deduction.
12.9 Publicity
Neither Party shall make any public announcements regarding these
agreements without the prior consent of the other Party. However, once
any statement has been agreed, it may be repeated by either Party in a
substantially similar form at any future date unless one Party notifies
the other in writing that they no longer agree to such information
being disclosed.
12.10 Assistance
During the Term, the Patent Owners shall, as and when reasonably
requested by CV, provide such technical assistance and advice as CV
shall reasonably require and the Patent Owners shall be in a position
to provide in connection with the development, manufacture or marketing
of the Lenses, and CV shall reimburse the Patent Owners all
out-of-pocket and other expenses reasonably incurred by them in
providing such advice and assistance provided that such assistance
shall be limited to a maximum of [ * ] man days per Year.
12.11 Counterparts
This Agreement. may be executed in two or more counterparts and
execution by each of the Parties of any one of such counterparts will
constitute due execution of this Agreement.
- --------------------------------
* Confidential treatment has been requested from the Securities and Exchange
Commission. Omitted portions have been filed separately with the Commission
-15-
13. ARBITRATION
13.1. Subject to Clause 13.3, in the event that any dispute arises over the
terms of this Agreement or any of its provisions, the parties hereto
agree that such dispute shall, following one party notifying the other
of its wish to refer that dispute to an Arbitrator, be settled by
process of arbitration and not by process of law. The costs of any such
arbitration shall be awarded by the Arbitrator and the results of such
arbitration shall be final and binding on both parties.
13.2 The procedure to be followed for such arbitration shall be agreed
between the Parties or in default of agreement determined by the
Arbitrator.
13.3 Nothing in this Clause 13 shall prevent either Party from applying to
the Court in order to enforce the obligation of the other Party to
continue to perform its obligations hereunder pending resolution of any
dispute including, without limitation, the obligation of CV to continue
to pay royalties or any other sums due in accordance with this
Agreement.
13.4 Without prejudice to Clause 13.3, if the Patent Owners are in material
breach of any of their obligations hereunder and fail to remedy such
breach within 30 days' notice in writing requiring such remedy, then CV
may, as its exclusive remedy, refer the matter to an Arbitrator for his
determination. If the Arbitrator determines that such material breach
has occurred, he shall determine the amount of damages (if any)
suffered by CV and the Licence Fee, to the extent not yet received by
the Patent Owners at such time, shall be reduced by an amount equal to
such damages.
14. NOTICES
14.1 Any notice, report or statement to either party required or permitted
under this Agreement shall be in writing and shall be forwarded by
recorded delivery courier such as Federal Express or similar and shall
be deemed to be given when received by the Party to which it is
addressed. Such notification shall be sent to the address set forth
below or to such other address which may be notified from one Party to
another from time to time during the Term.
-16-
To CV: To the Patent Owners:
The Managing Director c/o G H Galley
CooperVision Limited Red Lodge
Aspect House The Close
Hamble Lane Totteridge
Hamble London N20 8PJ
Hampshire SO31 4NH
Copy to:
The President
Cooper Vision, Inc.
21062 Bake Parkway
Suite 200
Lake Forest
CA 92630
USA
14.2 Any notice to be given by or on behalf of the Patent Owners under this
Agreement shall be validly given if signed by either Geoffrey H Galley
or Anthony D Galley (or the duly authorised representative of either)
or their respective heirs or assigns.
15. VALUE ADDED TAX
All consideration payable to the Patent Owners under the terms of this
Agreement is exclusive of value added tax.
-17-
IN WITNESS WHEREOF, the parties hereto have entered into this Agreement as of
the date first written above.
COOPER VISION, INC. G H GALLEY
21062 BAKE PKWY., RED LODGE
SUITE 200 THE CLOSE
LAKE FOREST TOTTERIDGE
CA 92630 LONDON N20 8PJ
USA
/s/ Robert Weiss /s/ G H Galley
----------------------------------- ----------------------------
Vice President G H GALLEY
PATENT OWNER
B BEVIS ALBERT MORLAND
THE MAPLES 3 LIME TREE COURT
CHILWORTH ROAD FRESHWATER
CHILWORTH ISLE OF WIGHT
SOUTHAMPTON SO16 7JR PO40 9ET
/s/ B Bevis /s/ A Morland
----------------------------------- ----------------------------
B BEVIS A MORLAND
PATENT OWNER PATENT OWNER
A D GALLEY I B ATKINSON
SUMMER LODGE 90 QUEENS DRIVE
COACH ROAD SURBITON
WEST TYTHERLEY SURREY
SP5 1LB KT5 8PP
/s/ A D Galley /s/ I B Atkinson
----------------------------------- ----------------------------
A D GALLEY I B ATKINSON
PATENT OWNER PATENT OWNER
-18-
Schedule 1
- -------------------------------------------------------------------------------------------------
COUNTRY APPLICATION PATENT NO. STATUS
NO.
- -------------------------------------------------------------------------------------------------
Australia 629280 Granted Patent
- -------------------------------------------------------------------------------------------------
Great Britain 2,226,977 A Lapsed, replaced by European
(UK) 383425
- -------------------------------------------------------------------------------------------------
Singapore 1137/93 Registered European (UK)
Patent
- -------------------------------------------------------------------------------------------------
Europe 383,425 Granted Patent Austria,
Belgium, Switzerland,
Liechtenstein, Germany,
Denmark, Spain, France,
Greece, Italy, Luxembourg,
Netherlands, Sweden and Great
Britain
- -------------------------------------------------------------------------------------------------
Taiwan 39682 Granted Patent
- -------------------------------------------------------------------------------------------------
USA 5,087,015 Granted Patent
- -------------------------------------------------------------------------------------------------
Canada 2,007,536 Granted Patent
- -------------------------------------------------------------------------------------------------
Japan 2270517 Granted Patent
- -------------------------------------------------------------------------------------------------
S. Korea 140212 Granted Patent
- -------------------------------------------------------------------------------------------------
-19-
Schedule 2
Standard Licence Fee
--------------------
- -----------------------------------------------------------------------
YEAR QUARTERLY FEE ('L')
- -----------------------------------------------------------------------
1 562,500.00
- -----------------------------------------------------------------------
2 590,625.00
- -----------------------------------------------------------------------
3 620,156.25
- -----------------------------------------------------------------------
4 651,164.00
- -----------------------------------------------------------------------
5 683,722.25
- -----------------------------------------------------------------------
6 717,908.35
- -----------------------------------------------------------------------
7 753,803.75
- -----------------------------------------------------------------------
8 791,494.00
- -----------------------------------------------------------------------
-20-