Exhibit 4.18
CEDARA SOFTWARE CORP.
and
CARL ZEISS OBERKOCHEN
and
CARL ZEISS, INC.
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PATENT LICENSE AGREEMENT
January __, 2002
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This Patent License Agreement (the "Agreement") dated January ____,
2002 is made between Cedara Software Corp., a corporation organized and
existing under the laws of the Province of Ontario ("Cedara"); Carl Zeiss
Oberkochen, a trust foundation organized and existing under the laws of
Germany ("Zeiss Germany"); and Carl Zeiss, Inc., an indirect wholly owned
subsidiary of Zeiss Germany ("Zeiss US"). ( Zeiss Germany and Zeiss US are
herein collectively referred to as the "Zeiss Entities", and Cedara and the
Zeiss Entities are herein collectively referred to as the "Parties".)
Background:
A. On November 1, 2000, pursuant to a purchase agreement (the "Purchase
Agreement") entered into by the Parties and other companies, the Parties
entered into, as set out in Schedule 12.2(a)(vii) of the Purchase
Agreement, a Technology and Patent License Agreement (the "TPL
Agreement") which dealt with the licensing of certain intellectual
property and patents including the licensing of patents owned by the
Zeiss Entities that are microscope related with Image Guided Surgery
Relevance as set out in Schedule C of the TPL Agreement.
B. On December 10, 2001, parties to the Purchase Agreement entered into a
Minutes of Settlement and agreed, amongst other things, that the terms of
the TPL Agreement shall no longer apply to the patents set out in
Schedule C of the TPL Agreement, and the Parties shall enter into a new
license agreement to replace Schedule C of the TPL Agreement with a
licence granted by the Zeiss Entities (the "Licensor") to Cedara and its
direct and indirect subsidiaries (collectively referred to as the
"Licensee") on a non-exclusive royalty-free basis.
C. The patents listed in Schedule C (the "Listed Patents") are as follows:
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Medical Therapeutic and/or Diagnositc Applicance with a Sterilizable Position Sensing Attachment
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German patent application 196 40 993.4
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Swiss patent application 1917/96
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Japanese Patent Application 287253/96
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Swedish Patent 513530
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US Patent 5891020
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US Divisional Patent Application 09/120963
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Medical Therapy and/or Diagnostic Equipment with a Position Sensing Device
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German patent application 198 37 152.7
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Swiss Patent Application 1723/98
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Japanese Patent Application 272870/98
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US Patent Application 09/160611
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Image Guided Surgery Device
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German Patent Application 100 40 498.4
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Japanese Patent Application 2000-256781
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US Patent Application Filed
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NOW THEREFORE the Parties, each intending to be legally bound, agree as
follows:
1. GRANT OF RIGHTS
1.1. Grant of Rights. The Licensor grants to the Licensee, and the Licensee
accepts, a world-wide, non-exclusive license to use the Listed Patents,
together with the right to manufacture (or have manufactured) and sell
products which incorporate the patents.
1.2. Royalty. The license shall be on a royalty-free basis.
2. OWNERSHIP
2.1. Ownership of Patents. All right, title and interest in and to all
Listed Patents, is owned by the Licensor.
2.2. Maintenance of the Listed Patents. The Licensor shall, at its
discretion, determine whether or not to maintain any or all of the
Listed Patents and Licensor is solely responsible for any fees and
other charges related to such maintenance activities. If the Licensor
decides to not maintain one of the Listed Patents, the Licensor will
give the Licensee 60 calendar days advance notice before the patent is
abandoned or otherwise lapses in any way, and give the Licensee the
option of assuming full ownership of that patent in which case Licensee
is responsible for all ongoing maintenance fees for the patent from the
date the transfer of ownership is effected.
3. SUB-LICENSING CONDITIONS
3.1. Licensor and Licensee acknowledge and agree that Licensee has no right
to grant sub-licenses to the Listed Patents.
4. CONFIDENTIALITY
4.1. Licensee shall keep confidential any information derived from drawings,
specifications, oral communications and other data or information
furnished by Licensor in connection with this Agreement.
4.2. Licensor shall keep confidential any information derived from drawings,
specifications, oral communications and other data or information
furnished by Licensee in connection with this Agreement.
5. WARRANTIES AND INDEMNITIES
5.1. Licensor agrees to notify Licensee in writing within 30 calendar days
of a challenge by any third party in any form to any of the Listed
Patents.
6. TERMINATION
6.1. Term of License. The license terminates three years after the date of
signing of this Patent License Agreement unless it is extended and on
such modified terms and conditions as mutually agreed to by the
Parties.
6.2. Early Termination At the option of Licensor, Licensor may terminate
this agreement if Licensee is in breach of any material term hereof and
within sixty (60) days written notice of such breach Licensee fails to
rectify such breach.
6.3. Actions on Termination Licensee shall immediately deliver to Licensor
any of Licensor's confidential information and property then in its
possession or control, and Licensee shall refrain from further use of
Licensor's confidential information and Listed Patents.
7. CONTINUANCE
7.1. Upon standard termination of this license, the Parties agree that,
should the Licensee have product either released to customers or in
development that requires a license to one or more of the Listed
Patents, the Parties will negotiate in good faith a continuance of this
license which will be non-exclusive, world-wide, and will have other
terms and conditions as the parties may agree including bearing a
reasonable royalty.
7.2. The license continuation would include the right for Cedara to
manufacture (or have manufactured) and sell products which incorporate
the Listed Patents.
8. GENERAL
8.1. Notice. Any notice, direction or other communication given under this
Agreement shall be in writing and given by delivering or sending it by
facsimile or other similar form of recorded communication addressed:
(i) Notice to Cedara
Cedara Software Corp.
6509 Airport Rd.
Toronto, Ontario
L4V 1S7
Attention: CEO
Facsimile number: 905 672 0360
(ii) Notice to Zeiss Entities
Carl Zeiss Oberkochen
Carl Zeiss
Carl Zeiss Strasse 4-54
D-73447 Oberkochen
Germany
Attention: Vice President & General Manager Surgical Products Division
Facsimile number: +49-(0)7364-20-2117
Any such communication shall be deemed to have been validly and
effectively given (a) if personally delivered, on the date of such
delivery if such date is a business day and such delivery was made
prior to 4:00 p.m. (local time) and otherwise on the next business
day, or (b) if transmitted by facsimile or similar means of recorded
communication on the business day following the date of transmission.
Any Party may change its address for service from time to time by
notice given in accordance with the foregoing and any subsequent
notice shall be sent to such Party at its changed address.
8.2. Successors and Assigns. This Agreement shall enure to the benefit of
and be binding upon the Parties and their respective successors and
permitted assigns.
8.3. Governing Law. This Agreement shall be governed by and construed in
accordance with the laws of The Federal Republic of Germany. The
Parties hereby irrevocably submit to the non-exclusive jurisdiction of
the courts located in Stuttgart, Germany. The Parties expressly exclude
the application of the United nations Convention on Contracts for the
International Sale of Goods.
8.4. Facsimile Transmission. The execution and delivery of this Agreement by
a Party by facsimile transmission will constitute valid execution and
delivery of this Agreement.
8.5. Invalidiy. If any provision of this Agreement shall be determined by an
arbitrator or any court of competent jurisdiction to be illegal,
invalid or unenforceable, that provision will be severed from this
Agreement and the remaining provisions shall remain in full force and
effect.
IN WITNESS WHEREOF the Parties have executed this Patent License
Agreement.
CEDARA SOFTWARE CORP.
By: /s/ MICHAEL GREENBERG
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Name: Michael Greenberg
Title: Chairman & CEO
Date ___________________________
CARL ZEISS OBERKOCHEN
By: /s/ ULRICH KRAUSS
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Name: ULRICH KRAUSS
Title: VICE-PRESIDENT AND GENERAL
MANAGER SURGICAL
PRODUCTS DIVISION
Date JANUARY 22, 2002
CARL ZEISS, INC.
By: /s/ JAMES KELLEY
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Name: JAMES KELLEY
Title: PRESIDENT AND C.E.O.
Date JANUARY 22, 2002