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Title: |
International License Agreement |
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Entities: |
Canadian Imperial Bank of Commerce; Rofin-Sinar Technologies Inc.; Siemens AG |
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Date: |
2004 |
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Size: |
Preview shows 17KB of 63KB total |
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Price: |
$51 |
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ID: |
#426525 |
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Start of Preview |
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Dated the 21st day of August, 1990.
-----------------------------------------
BOREAL LICENSING INC.
- and -
ROFIN SINAR LASER GmbH
-----------------------------------------
INTERNATIONAL LICENSE
AGREEMENT
-----------------------------------------
CRUICKSHANK, KARVELLAS,
LAYTON & CONNAUTON
Barristers and Solicitors
Patent and Trademark Agents
#300 Albrumac Business Centre
8657 - 51 Avenue
Edmonton, Alberta T6E 6A8
CANADA
#1500, Bow Valley Square IV
250 - 6th Avenue
Calgary, Alberta T2P 3H7
CANADA
SOLICITOR'S FILE: 9685-01/MPJK
4441F/0047I
{PAGE}
I N D E X O F A R T I C L E S
---------------------------------
{TABLE}
{CAPTION}
ARTICLE DESCRIPTION PAGE NO.
------- ----------- --------
{S} {C} {C}
ARTICLE I DEFINITIONS...........................................................................2
ARTICLE II LICENSE GRANT.........................................................................4
ARTICLE III TERM OF AGREEMENT AND TERMINATION.....................................................6
ARTICLE IV ROYALTIES, PAYMENTS AND CHARGES.......................................................7
ARTICLE V DELIVERY.............................................................................11
ARTICLE VI TECHNICAL SUPPORT BY BOREAL..........................................................11
ARTICLE VII RELATED PATENTS......................................................................11
ARTICLE VIII PROSECUTION OF THE CORRESPONDING PATENTS.............................................12
ARTICLE IX WARRANTY OF NO INFRINGEMENT CLAIMS BY THIRD
PARTIES..............................................................................12
ARTICLE X INFRINGEMENT OF THE LICENSED PATENTS.................................................13
ARTICLE XI DENTAL LASER SYSTEM JOINT DEVELOPMENT................................................13
ARTICLE XII OWNERSHIP OF LICENSED PATENTS, PROPRIETARY AND
CONFIDENTIAL INFORMATION ............................................................14
ARTICLE XIII EVENTS OF DEFAULT: REMEDIES.........................................................14
ARTICLE XIV RECORDS, REPORTS AND AUDITS..........................................................15
ARTICLE XV PATENT MAINTENANCE...................................................................15
ARTICLE XVI GENERAL PROVISIONS...................................................................15
EXECUTION............................................................................19
{/TABLE}
{PAGE}
INTERNATIONAL LICENSE AGREEMENT
-------------------------------
THIS INTERNATIONAL LICENSE AGREEMENT made effective as of this 1st day
of July, 1990.
BY AND BETWEEN:
BOREAL LICENSING INC., a corporation
organized and existing under the laws of
the Province of Alberta, and having a
principal place of business at 10328 -
133 Street, Edmonton, Alberta, Canada,
T5N 1Z9 (herein called "Boreal"),
- and -
ROFIN SINAR LASER GmbH, a corporation
organized and existing under the laws of
West Germany, having a principal place
of business at Berzeliusstrasse 87, P.O.
Box 740360, D-2000 Hamburg 74, West
Germany, (herein called "Rofin"),
WHEREAS:
A. Dr. John Tulip has invented a certain laser technology described in United
States Patent #4,719,639, Carbon Dioxide Slab Laser, issued January 12, 1988,
relating to the design of a carbon dioxide slab laser as described in said
patent;
B. Dr. John Tulip has also effected corresponding patent applications in
Canada, Japan and Europe.
C. Boreal Laser Inc. has acquired by assignment from Dr. John Tulip his entire
right, title and interest to said patent and the corresponding patent
applications.
D. Dr. John Tulip has invented certain additional technology related to the
design of carbon dioxide slab lasers related to said patent which he wishes to
protect by means of patent applications in the United States, Canada, Japan,
Europe, and in other jurisdictions.
E. Boreal Laser Inc. has acquired by assignment from Dr. John Tulip his entire
right, title and interest to said related patents including the right to make
applications therefore in any patent office.
{PAGE}
- 2 -
F. Boreal Laser Inc. has granted an exclusive license to Carl Zeiss Canada
Limited ("Zeiss") under the said patent and corresponding patents for medical,
scientific and veterinary applications only.
G. Except for the Zeiss Agreement, Boreal Laser Inc. has granted the sole and
exclusive right to license the said patent, corresponding patents and additional
related technology to Boreal which right includes the right to grant the present
license to Rofin including the right of sublicense as granted hereunder to
Rofin.
H. Rofin wishes to acquire an exclusive license to make, use and sell laser
units as come within the scope of the said patent, corresponding patents and
related patents for industrial applications, certain dental applications and
certain military or aerospace applications as more specifically set out herein
but excluding any license to make, use or sell any such laser units for medical,
scientific and veterinary applications.
I. Boreal is desirous of granting an exclusive license to Rofin to make, use
and sell laser units as come within the scope of the said patent, corresponding
patents or any related patents on the terms set out herein and represents that
it is entitled to grant such exclusive license.
J. Rofin is desirous of undertaking responsibility for the manufacture, use,
marketing, sale, installation and servicing of the laser units in the
Territories as set out herein.
K. Rofin represents that it has sufficient facilities, resources and personnel
in the Territories to properly and adequately manufacture, use, market, sell,
install and service the laser units within the Territory, and to perform its
obligations under this Agreement, and is not precluded by any existing
arrangement, contractual or otherwise, from entering into this Agreement.
L. Boreal and Rofin wish to formalize their preliminary agreement made April
25, 1990 and attached hereto as Exhibit "B".
NOW THEREFORE, for and in consideration of the covenants and premises
herein recited, it is understood and agreed as follows:
ARTICLE I DEFINITIONS
---------------------
1.01 In this Agreement including this Article:
(a) "Affiliated Company" shall mean and include any company or legal
entity at least twenty-five (25%) percent of whose outstanding
equity or equity stock is now or hereafter owned or controlled by
Rofin, either directly or indirectly; Siemens Aktiengesellschaft,
Munich, West Germany; and any company or other legal entity at least
fifty (50%) percent of whose outstanding equity or equity stock is
now or hereafter owned or controlled by Siemens Aktiengesellschaft.
A company
{PAGE}
- 3 -
or other legal entity shall be deemed to be an affiliated company
only so long as such ownership or control exists as herein
described.
(b) "Arm's Length" shall mean a relationship between Rofin and a
customer under which the customer is not an Affiliated Company of
Rofin nor under the legal, actual or financial control, directly or
indirectly, of Rofin.
(c) "Base Royalty Product" shall mean all components making up the Laser
Unit constituting the complete laser light producing system (from
socket to beam) including the laser head and power supply and any
replacement laser tubes, but specifically excluding the controls or
other parts for repairs.
(d) "Corresponding Patents" shall mean applications for letters patent
corresponding to the subject matter of the Patent filed in the
patent offices in Canada, Europe and Japan.
(e) "Laser System" or "Laser Systems" shall mean apparatus, product or
device containing one or more Laser Units and including one or more
of the Base Royalty Product and also including any controls,
housing, stand and instrumentation for the operation of the
apparatus, product or device.
(f) "Laser Unit" or "Laser Units" shall mean an apparatus, product,
device or process as comes within the scope of the Licensed Patents
and which, except for this License, would constitute an infringement
of any one or more valid, unexpired claim of any Licensed Patents
granted and issued in any country where such Laser Unit or Laser
Units are either manufactured, used, or sold and includes any
replacement laser tubes.
(g) "Licensed Patents" shall mean the Patent, all Corresponding Patents
and any Related Patents or any of them.
(h) "Minimum Annual Royalties" shall mean the minimum performance
requirements set forth in Article IV, which Rofin acknowledges are
reasonable.
(i) "Net Sales" shall mean that proportion of the net amount of monies
or equivalent received by Rofin from the Sale of Base Royalty
Product to a third party with whom Rofin deals at Arm's Length,
excluding sales taxes, turn-over or transfer taxes, import, export
and excise taxes, custom duties, discounts actually allowed to the
customer, shipping costs, packaging costs, and returns for credit
attributable to the Base Royalty Product. Where Rofin carries out
Sales to a party with whom it does not deal at Arm's Length, then
the Net Sales shall be based on the price charged to the customers
of such third party by the party with whom Rofin does not deal at
Arm's Length except where such customer does also not deal at Arm's
Length with Rofin in which case the price established in an open
market between Rofin and a party with whom Rofin does deal at Arm's
Length shall determine the Net Sales Price.
{PAGE}
- 4 -
(j) "Patent" shall mean United States Patent No. 4,719,639 issued
January 12, 1988, a copy of which is attached as Exhibit "A" to this
Agreement, including any counterpart, subsidiary, re-issue or
continuation thereof.
(k) "Related Patents" shall mean all patents which issue with a subject
matter related to the Patent resulting from a patent application
henceforth filed by or on behalf of Boreal for which Rofin (or
another Licensee of Boreal) undertakes to and does pay prosecution
fees and attorney expenses or undertakes to pay prosecution fees and
attorney expenses in the event another licensee of Boreal who was
making payments of such fees and expenses ceases making such
payments.
(l) "Sale" or "Sales" shall mean all sales, licensing, leasing, rental,
barter, trade or other exchange of Laser Units or Laser tubes for
valuable consideration and which will be or can be measured in money
or money's worth terms.
(m) "Sell" or "Sells" shall mean to make Sales.
(n) "Sold" shall mean to have made Sales.
(o) "Territory" shall mean the geographical area or areas related to
each licensed application as set forth in this Agreement.
ARTICLE II LICENSE GRANT
------------------------
INDUSTRIAL APPLICATIONS
-----------------------
2.01 Boreal hereby grants to Rofin, and Rofin hereby accepts, subject to
the terms and conditions provided in this Agreement, a world-wide exclusive
license under the Licensed Patents of Boreal to make, have made for its account,
use, and Sell Laser Units intended or sold for industrial laser application
throughout the world. The parties understand the term industrial applications
shall comprise but not be limited to the following examples of laser technology
application: cutting, welding, scribing, drilling, surface treatment, soldering,
brazing, marking and engraving, melting, vaporizing, material analyzing,
material testing, measuring technology heating of material, hot machining,
removing of material, forming of layers on material, alloying, dispersing,
hardening of material, curing of plastic material.
MILITARY AND AEROSPACE APPLICATION IN EUROPE
--------------------------------------------
2.02 Boreal hereby grants to Rofin, and Rofin hereby accepts, subject to
the terms and conditions provided in this Agreement, an exclusive license under
the Licensed Patents to make, have made for its account, use, and Sell Laser
Units intended and sold for military or aerospace laser applications to
customers based in Europe only. Boreal shall retain all rights in relation to
military and aerospace customers based other than in Europe.
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