EXCLUSIVE LICENSE AGREEMENT
THIS AGREEMENT, made as of the 1st day of April, 1999 by and between:
VICTOR M. HERMELIN, a United States citizen; having a residence
at 1722 Baxter Forest Valley Court, Chesterfield. Missouri, 63005
("LICENSOR");
and
K.V. PHARMACEUTICAL COMPANY, a Delaware corporation, United
States of America whose principal place of business is 2503 South
Hanley Road, St- Louis, Missouri 63144 ("LICENSEE").
WITNESSTH that:
WHEREAS, LICENSOR is the sole owner of Licensed Patent Rights
(hereinafter defined) and has developed and is the sole owner of Technical
Information (hereinafter defined), all of which cover and relate to Licensed
Products (hereinafter defined); and
WHEREAS, LICENSEE wishes to obtain exclusive licenses (exclusive even
as to the LICENSOR) in and to the Licensed Patent Rights and the Technical
Information throughout the world, and LICENSOR is willing to grant such licenses
to LICENSEE, all subject to the terms and conditions of this Agreement;
THEREFORE, in consideration of the foregoing premises, which are
hereby made a part of the terms and conditions of this Agreement, and the mutual
covenants recited hereinafter, it is agreed as follows:
ARTICLE 1: DEFINITIONS
As used throughout this Agreement, each of the following terms shall
have the meaning set forth in this Article I
1.01 "Effective Date" means the date first written above.
1.02. "Licensed Patent Rights" means the patents and applications for
patent, and any patents issuing on such applications, which LICENSOR has filed
or hereafter files in any country of the world and patents issuing thereon which
relate to Licensed Products and the method of use or manufacture of Licensed
Products, including (but not limited to) the patents and patent applications
listed in Appendix A, and any continuations or reissues thereof, including any
prior continuation-in-part or divisional patent application thereof, and any
patent granted upon any of such patent applications and all foreign counterparts
and extensions thereof.
1.03. "Licensed Products" means products incorporating uneven dosing
technology developed by LICENSOR which fall within the scope of any one or more
valid and enforceable Licensed Patent Rights.
1.04. "Technical Information" means all LICENSOR know-how, data,
including raw data and other information or improvements, in existence on the
date hereof which is pertinent to the Licensed Patent Rights and the
development, testing, registration, manufacture, use or sale of Licensed
Products.
1.05. "Territory" means the United States of America and every country
in the world or such lesser number of countries as am designated in writing at
the sole election of LICENSEE.
ARTICLE 2: GRANT OF LICENSE
2.01. Licensed Patent Mitts: LICENSOR hereby grants and agrees to grant
to LICENSEE an exclusive license (exclusive even as to LICENSOR), with the right
to grant sub-licenses, under the Licensed Patent Rights.
2.02. Technical Information: LICENSOR hereby grants and agrees to grant
to LICENSEE an exclusive license (exclusive even as to LICENSOR), with the right
to grant sub-licenses, to use the Technical Information to make, have made, use.
sell and/or distribute Licensed Products throughout the Territory.
ARTICLE 3: ROYALTIES
3.01. Ongoing Royalty: Subject to the terms and conditions of this
Article 3, LICENSEE shall pay or cause to the paid to LICENSOR during the term
of this Agreement royalties equal to: (a) 10% of all royalties and/or milestone
payments actually paid to LICENSEE by any unaffiliated sub-licensee of the
Licensed Patent Rights; and (b) 2% of all net sales (after all discounts,
rebates, chargebacks, returns, credits and allowances) of Licensed products by
Licensee and its affiliates.
3.02. Invalidity of Patent: Should any patent licensed hereunder be
declared invalid or limited in scope or rendered unenforceable by a decision of
a court or other tribunal of competent jurisdiction in the country in which the
patent was granted which is binding on all persons in all parts of said country
and from which no appeal is or can be taken, then the construction placed upon
said patent by said court or other tribunal shall be followed by the parties
hereto from and after the date of entry of said decision and royalties shall
thereafter be payable to LICENSOR in accordance with such construction for the
country in which the decision was rendered.
ARTICLE 4: RECORDS AND PAYMENTS
4.01. Quarterly Reports and Payments: Not later than sixty (60) days
after the first calendar quarter with respect to which royalties are first
payable to LICENSOR by LICENSEE under Section 3.01 and sixty (60) days after the
end of any subsequent calendar quarter during the term of this Agreement,
LICENSEE shall deliver or cause to be delivered to LICENSOR a written report
showing all royalties and milestone payments received by LICENSEE and all sales
of Licensed Products by LICENSEE during the preceding quarterly period and the
amount payable as royalties to LICENSOR thereon under Section 3.01. Concurrently
with the submission of each such written report, LICENSEE shall pay or cause to
be paid to LICENSOR the amount of royalties shown to be due thereon under this
Agreement at the address of LICENSOR first set forth above or such other address
as shall be specified to LICENSEE in writing by LICENSOR.
4.02. Currency of Payment: Unless otherwise agreed to by the parties
hereto, royalties shall be remitted in the currency of the United States. Such
royalties shall be first determined in the currency of the country in which they
are earned and then converted to its equivalent in the currency of the United
States.
4.03. Taxes Withhold: Any income or other tax that LICENSEE is legally
required to withhold and pay on behalf of LICENSOR with respect to the royalties
payable to LICENSOR under this Agreement shall be deducted from said royalties
prior to remittance to LICENSOR.
4.04. Records: LICENSEE shall keep or cause to be kept accurate records
in sufficient detail to enable the royalties payable hereunder to be determined.
ARTICLE 5: PATENT PROSECUTION AND MAINTENANCE
5.01. Prosecution: LICENSEE agrees that it will file and prosecute, at
its own expense, any applications, reissue applications, divisionals,
contributions and continuations-in-part as are determined by LICENSEE, in its
sole and absolute discretion, to be necessary or desirable for patent protection
with respect to the Licensed Patent Rights in the United States and in such
foreign countries as LICENSEE determines, in its sole and absolute discretion,
to be necessary or desirable. LICENSOR shall have the right to file and
prosecute, at his own expense, any applications, reissue applications,
divisionals, continuations and continuations-in-part with respect to the
Licensed Patent Rights as are determined by LICENSOR to be necessary or
desirable but which are not filed or prosecuted by LICENSEE.
5.02. Expenses: LICENSEE shall pay the governmental fees and charges
necessary to maintain in force all issued patents within the Licensed Patent
Rights as are filed or prosecuted by LICENSEE. LICENSOR shall pay the
governmental fees and charges applicable to file and prosecute such patent
rights by LICENSOR.
ARTICLE 6: CONFIDENTIALITY
6.01. Obligation of Confidentiality: All Technical Information of
LICENSOR disclosed to LICENSEE shall be held in confidence and not disclosed by
LICENSEE to any third party, except that LICENSEE may disclose such information
to its officers and employees, sub-licensees, advisors, governmental
authorities, and consultants who are under a similar obligation of secrecy in
furtherance of the purposes of this Agreement and otherwise as may be determined
by LICENSEE, in its sole and absolute judgment to be necessary or desirable to
achieve the purposes contemplated by this Agreement; provided, however, that the
foregoing obligation of confidentiality assumed by LICENSEE hereunder shall not
apply to: any of the Technical Information that: (i) was known by LICENSEE prior
to its disclosure by LICENSOR; (ii) is or becomes available to the public
through no breach of this Agreement by LICENSEE; or (iii) is received by
LICENSEE or its sub-licensees in good faith from a third party who has a right
to disclose the same.
6.02 Term of Obligation of Confidentiality: The obligations of
confidentiality in this Article 6 shall remain in effect during the term of this
Agreement.
ARTICLE 7: INFRINGEMENT
7.01. Infringement Actions: LICENSEE and LICENSOR shall each promptly
notify the other of any infringement of the Licensed Patent Rights or
unauthorized use of the Technical Information which may come to its or his
attention LICENSEE may undertake such efforts as are determined by LICENSEE to
be appropriate to obtain a discontinuance of the aforesaid infringement or
unauthorized use. If LICENSEE does not undertake to obtain a discontinuance of
the or unauthorized use or is not successful in its efforts to do so, LICENSOR
may at his option bring suit against such infringer or unauthorized user. With
respect to any legal action that may be taken in accordance with this Article 7,
it is understood and agreed that the party to this Agreement that takes such
action shall bear solely all costs and expenses associated therewith.
7.02. Infringement of Third Party Patent; Alleged Invalidity: Each
party hereto shall notify the other promptly in the event of the receipt of
notice of any action, suit or claim alleging infringement by any Licensed
Product of any patent held by a third party or claiming the invalidity of any
Licensed Patent Right. LICENSEE may elect to control any legal action or claim
so instituted.
If, as a result of any judgment or settlement, it is determined that a
claim or claims by a third party dominate the manufacture, use or sale of the
Licensed Product and LICENSEE or its sub-licensees is required to make any
payments to any third party as a result thereof, LICENSEE may offset all such
payments against any present and/or future payment obligations it may have to
LICENSOR.
ARTICLE 8: TERMINATION
8.01 Term: This Agreement is effective as of the Effective Date and
shall unless terminated earlier by one of the parties in accordance with its
terms, expire as to each country in the Territory 25 years from the Effective
Date.
8.02 Right to Terminate for Breach: This Agreement may be terminated
by either party to this Agreement if the other party commits a material breach
of any of the terms or conditions hereof and does not remedy such breach within
ninety (90) days after receipt of a written demand therefor.
8.03. Right to Royalties: The termination of this Agreement for any
reason shall not prejudice LICENSOR's rights to royalties due it hereunder and
unpaid of the effective date of termination, or to any examination of LICENSEE's
records for any period as herein provided.
ARTICLE 9: GENERAL
9.01. Assignability: Neither LICENSOR nor LICENSEE shall assign this
Agreement or its rights and obligations under this Agreement without the prior
written consent of the other party, which consent shall not be unreasonably
withheld; provided however, either party shall be allowed to assign this
Agreement and its rights under this Agreement in whole or in part to any of its
respective Affiliates and LICENSOR may assign this Agreement to a purchaser of
substantially all of the business of LICENSOR to which it relates.
9.02. Non-Waiver: The waiver by either of the parties to this Agreement
of any breach of any provision hereof by the other party shall not be construed
to be a waiver of any succeeding breach of such provision or a waiver of the
provision itself.
9.03. Governing Law: This Agreement shall be governed by and construed
and interpreted under the laws of the State of Delaware.
9.04. Notices: Notices required or otherwise given hereunder shall be
given by hand delivery or by posting registered, certified or Express mail
postage prepaid, or by telefax, confirmed by certified mail, postage prepaid, or
by next business day delivery service to the third party at its or his address
set forth at the beginning of this Agreement or otherwise at the address as to
which the party has given such notice thereof to the other. Such notices shall
be deemed given upon receipt.
9.05. Force Majeure: No failure or omission by the parties hereto in
the performance of any obligation of this Agreement shall be deemed a breach of
this Agreement nor shall it create any liability, if the same shall arise from
any cause or causes beyond the reasonable control of the affected party, whether
or not foreseeable, including, but not limited to, the following, which for
purposes of this Agreement shall be regarded as beyond the control of the party
in question: acts of God; acts or omissions of any government; any rules,
regulations or orders issued by any governmental authority or by any officer,
department agency or instrumentality thereof; fire; storm; flood; earthquake;
accident; war; rebellion; insurrection; riot; invasion; strikes; and lockouts or
the like; provided that the party so affected shall use its reasonable
commercial efforts to avoid or remove such causes of nonperformance (but shall
not be required to incur any extraordinary expense or commence or continue any
legal action) and shall continue performance hereunder whenever such causes are
removed.
9.06. Headings: The headings appearing herein have been inserted solely
for the convenience of the parties hereto and shall not affect the construction,
meaning or interpretation of this Agreement of any of its terms and conditions.
9.07. Integration: The terms and provisions contained in this
Agreement, including the Appendix, constitute the entire agreement and
understanding between the parties to this Agreement with respect to the Licensed
Patent Rights and the Licensed Products. Neither party has relied or will rely
on any representation or agreement of the other except to the extent set forth
herein, and neither party shall be bound by or charged with any oral, written or
implied agreements, representations, warranties, understandings, commitments or
obligations not specifically set forth herein. This Agreement may not be
released, discharged, abandoned, changed or modified in any manner except by an
instrument in writing in which this Agreement is specifically referenced signed
by a duly authorized officer or representative of each of the parties hereto.
IN WITNESS WHEREOF, each of the parties hereto has caused this
instrument to be executed by it or its respective duly authorized representative
as of the day and year first above written.
KV Pharmaceutical Company
By:
------------------------------------
Victor M. Hermelin
Exhibit A
U.S. Patent Application entitled "Maximizing Effectiveness of
Substances Used To Improve Health and Well Being, to be filed April 2,
1999, by Victor M. Hermelin.