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TECHNOLOGY PURCHASE AND LICENSE AGREEMENT
Made and entered into on the __ day of January, 1998
and Between:
RAFAEL ARMAMENT DEVELOPMENT AUTHORITY
of the Israeli Ministry of Defense
of POB 2250 Haifa 31021 Israel
(hereinafter called "RAFAEL")
and:
GIVEN IMAGING LTD.
a private company incorporated under the laws of the State of Israel
PC #51-257802-2
(hereinafter called, the "COMPANY")
WHEREAS, Rafael has developed and owns the Project and the Technology,
as
defined and specified below; and
WHEREAS, The Company desires to purchase from Rafael, and Rafael
desires
to sell to the Company, the Project and the Project's Technology, and
to grant
the Company an exclusive license to use the Other Technology within
the
Company's Field of License, all as defined and specified below and
subject to
the terms and conditions set forth herein;
NOW, THEREFORE, the parties hereto hereby agree as follows:
1. DEFINITIONS.
In this Technology Purchase and License Agreement the following words
and
expressions shall bear the meanings set opposite them:
the "Agreement" this Technology Purchase and License Agreement,
the
preamble and all exhibits and schedules thereto;
"Improvements" all improvements, enhancements or modifications
to
the Project's Technology made by either party
during the term of this Agreement;
"Global Patent the Global Patent Assignment in the form attached
to
Assignment" this Agreement as EXHIBIT A;
the "Patents" the patents and patent applications, as
identified
in EXHIBIT B hereto;
the "Project" An in vivo video camera and an autonomous video
endoscope, including a swallowable capsule with a
camera and an optical system, a transmitter and a
reception system;
<PAGE>
the "Technology" the existing unclassified documented know-how and
intellectual property developed by Rafael, and
specifically used at Rafael for the Project,
including the Patents and other patents and patent
applications, if any, the prototypes, drawings,
designs, diagrams, computer programs and their
sources, design assurance data and other tangible
technical information used at Rafael for the
Project;
the "Project's the Patents, the prototypes, and such other part
of
Technology" Technology which was developed by Rafael
specifically for the Project;
the "Other any Technology other than the Project's Technology,
Technology" and which shall, when delivered in tangible form to
the Company, be marked as "Other Technology";
the "Company's the license granted by Rafael to the
Company under
License" SECTION 3.2 hereof;
the "Company's the commercial exploitation of the Project
and
Field of License" products to be developed or derived
therefrom;
the "Rafael the license granted by the Company to
Rafael under
License" SECTION 7.1 hereof;
the "Rafael's Field any military and/or security application
of the
of License" Project's Technology.
2. RAFAEL'S REPRESENTATIONS.
The Technology has been developed and is owned solely by Rafael, and
Rafael's rights therein are free and clear of any lien, charge, claim,
preemptive right or any other encumbrance or third party rights. Neither the
execution and delivery of this Agreement nor, to Rafael's best knowledge and
without having conducted any special investigation, the use by the Company of
the Technology, shall violate or infringe the rights of any other person, firm
or entity, nor has any person, firm or entity made or threatened Rafael with any
claim that will interfere with the Company's use of the Project or the Project's
Technology in accordance with the terms of this Agreement, and nor will the
execution, delivery or performance by Rafael of this Agreement constitute a
breach of any law, agreement or instrument to which Rafael is a party or by
which it is bound.
<PAGE>
3. SALE AND LICENSE OF TECHNOLOGY.
3.1 Rafael hereby sells to the Company, and the Company hereby purchases
from Rafael, all of Rafael's right, title and interest in and to the Project and
the Project's Technology, free and clear of any lien, charge, claim, license,
preemptive right or any other encumbrance or third party right, except for the
Rafael License, as provided for under SECTION 7 below and the restrictions on
the Company's use thereof as provided for under SECTION 3.3 below. In order to
give full effect to this transaction, Rafael shall deliver to the Company,
together with this Agreement, the GLOBAL PATENT ASSIGNMENT, duly signed by
Rafael.
Rafael agrees to execute upon the request of the Company such
additional instruments, applications, declarations and forms, as may be
necessary under any relevant law or as may be required by any official or
authority, to continue, secure, defend, register and otherwise give full effect
to, and perfect the rights of the Company under the Global Patent Assignment in
the Patents, including to register the assignment of each Patent in the name of
the Company.
3.2 (a) Rafael hereby grants to the Company, and the Company hereby
accepts, a world-wide, exclusive, royalty-free, and perpetual license to
use the Other Technology, solely for the purpose of the commercial
exploitation of the Project (the "COMPANY'S LICENSE"). The Company's
License shall be transferable only in accordance with the provisions of
Section 6 below.
(b) Except for Rafael's limited right to rescind the Company's
License as specifically provided in Section 3.3 below, the Company's
License shall be irrevocable and the only remedies for any breach of its
terms shall be damages and/or injunctive reliefs.
(c) The Company's License granted hereby shall be effective
upon the execution and delivery of this Agreement, without necessity for
any further action or writing, subject however to the payment by the
Company of the consideration as provided in SECTION 5 below. Upon the
Company's written request, Rafael shall forthwith confirm in writing the
Company's License and, at the Company's expense, shall execute any forms
or instruments necessary for the filing, registering, perfecting,
defending and recording of the Company's License at any appropriate
governmental offices or other competent authorities, in Israel or abroad.
(d) Subject to the Company's License granted hereby, Rafael
shall retain all rights in the Other Technology as the sole owner thereof.
3.3 The use of the Other Technology by the Company contrary to the
provisions of this SECTION 3.2(a) shall constitute a material breach of this
Agreement, and unless the Company shall cease making such use within thirty (30)
days from receiving Rafael's first written notice of same, Rafael shall be
entitled to rescind the Company's License by giving the Company a written notice
to that effect.
4. TANGIBLES, TECHNICAL SUPPORT AND PERSONNEL.
4.1 As soon as practicable following the signing hereof, Rafael
shall deliver to the Company all the tangible Project's Technology.
<PAGE>
4.2 For the exploitation of the Project by the Company, from time to time
as shall be coordinated between the Company and Rafael, at the Company's request
and subject to Rafael's security restrictions and available manpower and
facilities, Rafael shall provide the Company with: (i) technical support, such
as Rafael's available work space, manpower (for which the Company shall pay
according to Rafael's "Cost" rate plus 10%), laboratories, apparatus and other
equipment required, provided, however, that the Company shall be liable for any
loss or damage to Rafael or to any third party caused by any of the Company's
personnel (unless the person who caused such loss or damage was acting in
accordance with Rafael's written instructions), and that the Company shall
maintain during such period adequate insurances covering such liabilities; (ii)
reasonable assistance in technical guidance and instructions regarding the
Technology, as shall be required for the Company's technical staff to gain
acquaintance thereof for the purpose of the Project; and (iii) free access to
Rafael's existing documentation as required for completing and documenting the
Project by the Company's technical staff, consultants and other experts employed
thereby.
4.3 The Company may request Rafael from time to time that employees of
Rafael will provide consulting or other services similar in nature to the
Company in connection with the Project, and Rafael shall give due consideration
to such requests on a case by case basis, subject to the availability of such
employee, the provisions of the State Service Regulations (?????"?) and
customary terms of Rafael for such purpose.
5. CONSIDERATION.
In consideration for the Project, the Project's Technology and the
Company's License, the Company shall pay Rafael the amount of US$30,000 (thirty
thousand US Dollars). Payment shall be in NIS, calculated according to the
representative rate of exchange as published by the Bank of Israel immediately
prior to when payment is effected, plus V.A.T. at the applicable rate, against
delivery by Rafael of a "tax invoice" in the Company's name.
6. TRANSFERABILITY OF OTHER TECHNOLOGY.
Any transfer license or sub-license by the Company (a "TRANSFER") of
any currently existing Other Technology which is not in the public domain, or
any of the Company's rights under Sections 4, 8, 10 and/or 11 of this Agreement,
to any third party shall be limited at all times for use only within the
Company's Field of License, and further, shall be conditioned upon the prior
written consent of Rafael, which consent shall not be unreasonably withheld,
except for a Transfer to an affiliate which shall not require such consent. The
term "affiliate" shall mean, an entity which shall first agree to abide by the
terms hereof, and in which either the Company or RDC - Rafael Development
Corporation Ltd. shall hold at the time of such Transfer, directly, the majority
of voting rights assuring the effective control therein in a permanent fashion,
and such control shall be maintained at all times unless Rafael has otherwise
consented in writing and in advance, which consent shall not be unreasonably
withheld. Notwithstanding the foregoing, Rafael's rights under the Rafael
License shall in no way be impaired by virtue of any Transfer.
Any of the Project's Technology shall be freely transferable
by the Company, subject only to the Rafael's License, and a prior written notice
by the Company to Rafael of any intended Transfer thereof.
<PAGE>
7. THE RAFAEL LICENSE.
7.1 The Company hereby grants Rafael, and Rafael hereby accepts, a
world-wide, exclusive, royalty-free, freely transferable and perpetual license
to use the Project and the Project's Technology, to design, develop,
manufacture, market, sell, lease, service or otherwise exploit the Project and
the Project's Technology, but only within the Rafael's Field of License (the
"RAFAEL LICENSE").
7.2 The Rafael License shall be irrevocable and the only remedies for any
breach of its terms shall be damages and/or injunctive reliefs.
7.3 The Rafael License granted hereby shall be effective upon the
execution and delivery of this Agreement, without necessity for any further
action or writing. Upon the Rafael's written demand, the Company shall forthwith
confirm in writing the Rafael's License and, at Rafael's expense, shall execute
any documents necessary for the filing, registering, perfecting, defending and
recording the Rafael's License at any appropriate governmental offices or other
competent authorities, in Israel or abroad.
8. NEW PATENTS ON THE PROJECTS TECHNOLOGY.
8.1 Rafael shall have the exclusive right to prepare and file patent
applications for inventions developed by Rafael based on the Project's
Technology within the Rafael's Field of License in such jurisdictions and in
such manner as it shall determine, and shall prosecute such applications as it
deems appropriate, and the Company shall provide Rafael, at Rafael's expense,
with any reasonable assistance therefor as Rafael may request. All such
applications shall be filed and prosecuted in the name of Rafael and at its
expense. Rafael hereby grants to the Company an irrevocable, worldwide,
royalty-free, exclusive, freely transferable and perpetual license to use the
inventions protected by the said patents for any use outside the Rafael's Field
of License.
9. INFRINGEMENTS.
In the event of any infringement by a third party of any of the Patent
rights in the Rafael's Field of License, Rafael may take all legitimate steps to
halt such infringement, and otherwise the Company may take such steps. Rafael
may request the Company to lend its name to such proceedings and provide
reasonable assistance and the Company will do so subject to Rafael covering the
expenses it may incur.
10. IMPROVEMENTS.
10.1 Where a party to this Agreement has made an Improvement, the other
party shall be entitled to be notified in confidence of the general nature of
such Improvement, except insofar as such disclosure would disclose information
deriving from and subject to confidentiality obligations in favor of a third
party and, in case of Rafael, subject to all requisite defence consents. For the
foregoing purpose, either party may from time to time, by notice to the other,
convene a joint meeting of the parties' senior technical personnel, at which
meeting any Improvements made by each party shall be disclosed to the other
party, as provided above. If the other party is interested in obtaining rights
in such Improvement, the parties shall negotiate royalties or other
consideration therefor. Upon agreement, the party which made the Improvement
shall grant to the other exclusive rights (in the case of Rafael subject to all
requisite defence consents) to use and exploit such Improvement. Such rights
<PAGE>
where granted to the Company shall be restricted to non-military applications
and where granted to Rafael shall be restricted to military applications.
10.2 Where one party hereto has developed an Improvement, and the other
party has notified that it is interested in obtaining patent protection for such
Improvement, then the first party shall not publish the same or do anything that
might prejudice the validity of any patent that might subsequently be granted on
it for such time as may be reasonably required to prepare and file an
application for patent or other protection. Such patent shall be in the name of
the party requesting the patent who shall also bear all costs and expenses
connected therewith.
11. RAFAEL'S SERVICES.
11.1 The Company may from time to time request to engage Rafael as a
sub-contractor for providing research, development or prototype manufacturing
services to the Company in connection with the Project (the "SERVICES"), and
Rafael shall endeavor to meet such request, subject to its priorities and its
available manpower, facilities and other resources. The Services shall be
provided under terms as are customary in such engagements of Rafael and which
the Company and Rafael shall agree, and Rafael shall be entitled to charge the
Company for Services rendered the going commercial rates.
11.2 Notwithstanding the foregoing, where the Company decides to employ a
sub-contractor for Services, and the Company has a choice between Rafael and
another one or more sub-contractors, the Company shall nevertheless be obliged
to employ such Services of Rafael, if Rafael's Services are competitive in
respect of quality, quantity, time and price with those offered by such other
sub-contractors.
12. CONFIDENTIALITY.
12.1 Subject to the exclusions set forth in SECTION 12.2 below, (a) the
Company hereby agrees to keep the Other Technology confidential, (b) Rafael
hereby agrees to keep the Project's Technology confidential, and (c) both
parties agree to keep confidential any Improvement which may be disclosed
thereto by the other party pursuant to Section 10 above. For the foregoing
purpose, the parties hereby agree to keep the Project's Technology confidential
and to take all reasonably necessary steps to ensure that its affiliates,
officers and employees keep such information confidential, except for customary
disclosures in the ordinary business practice of either party in connection to
its respective permitted use of the Project's Technology or the Other
Technology, as applicable, as provided under this Agreement, including
information customarily disclosed in brochures, manuals of operation and other
similar documents.
12.2 The provisions of SECTION 12.1 shall not apply to any information
which: (i) is public knowledge at the date of the Agreement or
thereafter becomes public knowledge through no fault of the
receiving party, (ii) is lawfully received by the receiving party
from a third party who either has the right to disclose it, or is
under no obligation of confidentiality to the disclosing party, or
(iii) is disclosed as required under any applicable law. The burden
of proof that any disclosure falls within any of the aforesaid
exclusions shall be on the disclosing party. Where a doubt exists,
as to whether any of the aforesaid exclusions apply, the party
seeking to disclose shall give the other party a written notice and,
if a dispute arises, then such party shall keep such information
confidential until the dispute
<PAGE>
is settled or resolved in an appropriate court of law, subject to
any temporary relief which the party seeking the disclosure shall be
entitled to apply for to such court.
13. RAFAEL'S LIABILITY; INDEMNIFICATION.
13.1 Rafael shall promptly indemnify the Company against any losses,
damages, costs and expenses incurred by Company as a direct result of any
representation of Rafael contained in SECTION 2 above proven by the Company as
materially untrue or incorrect, provided, however, that all indemnifications,
compensations or other payments which Rafael may become liable for hereunder
shall in no event exceed the total consideration amount specified in SECTION 5
above.
13.2 The Company shall not be entitled to the above indemnity,
unless, if any claim, suit, action or other proceeding to which the indemnity
set forth above applies is brought against the Company, it shall give Rafael
prompt notice of same, and Rafael and the Company shall coordinate and cooperate
in the defense of such claim, suit, action or other proceeding. If the Company
seeks such indemnity from Rafael, then neither the Company nor Rafael shall
adjust, settle or compromise any claim, suit, action or other proceeding brought
against it to which the indemnity set forth herein applies without the prior
written consent of the other party which consent shall not be unreasonably
withheld; provided, however, that Rafael shall be entitled to adjust, settle or
compromise any such claim, suit, action or other proceeding without the prior
written consent of the Company if such adjustment, settlement or compromise is
monetary only and in an amount which is fully covered by the indemnification
under SECTION 13.1 above.
14. NOTICES.
Any notice or other communication required or authorized under this
Agreement to be given by any party to the other party may be personally
delivered, mailed, transmitted by telex, facsimile, or other electronic mean,
however such notice shall operate and be deemed to have been served upon its
actual receipt by the other party or upon the third working day in the postal
service from its dispatch by registered mail, postage prepaid and return receipt
requested, addressed to the other party's address as stated below:
If to Rafael:
Rafael Armament Development Authority
POB 2250
Haifa 31020, ISRAEL
Attention: President, and
General Counsel
If to the Company:
GIven Imaging Ltd.
c/o RDC Rafael Development Corporation Ltd.
14 Beith Hashoeva Lane
Tel-Aviv 65814
Attention: President and C.E.O.
<PAGE>
15. MISCELLANEOUS.
15.1 In the event that Rafael becomes a corporate or other legal
entity, then Rafael shall be entitled to assign all or part of it rights and
obligations hereunder to such corporation or entity, which shall become party to
this Agreement with respect to the rights and obligations assigned thereto. If
any Other Technology is transferred to such corporation or entity, such transfer
shall be subject to the Company's License granted to the Company hereunder and
the Company's rights related thereto. Except as provided in this SECTION 15.1
and in SECTION 6 above, neither this Agreement as a whole nor any right or
obligation hereunder, shall be assignable by any party without the prior written
consent of the other party.
15.2 This Agreement may be executed in two or more counterparts each
of which shall be deemed an original but all of which constitute one and the
same instrument.
15.3 Save as expressly provided herein, this Agreement may be amended
or terminated, and any of the terms hereof waived, only by a document in writing
specifically referring to this Agreement and executed by the parties hereto or,
in the case of a waiver, by the party waiving compliance. The failure of either
party hereto at any time or times to require performance of any provisions
hereof shall in no manner affect this right at a later time. No waiver by either
party hereto of a breach of any term contained in this Agreement, in any one or
more instances, shall be deemed or construed as a further or continuing waiver
of any such breach or a waiver of any breach of any other form.
15.4 If any provision of this Agreement is held to be invalid or
unenforceable, such invalidity or unenforceability shall not invalidate this
Agreement as a whole, but this Agreement shall be construed as though it did not
contain the particular provision held to be invalid or unenforceable and all
other rights and obligations of the parties shall survive to the maximum extent
permitted by law.
15.5 This Agreement and the rights and obligations of the parties
hereunder or pursuant hereto shall be governed by and construed in accordance
with the laws of the State of Israel. The parties hereby submit to the exclusive
jurisdiction of the competent courts situated in Tel-Aviv in all matters
relating to this Agreement.
15.6 Words herein denoting the singular number only shall include the
plural and vice versa.
15.7 The headings and section in this Agreement are inserted for
convenience only and shall not affect the construction thereof.
<PAGE>
IN WITNESS WHEREOF, the parties hereto have executed this Technology
Transfer and License Agreement on the day first written above.
RAFAEL ARMAMENT
DEVELOPMENT AUTHORITY
By: /s/ M. Zemel By: /s/ E. Yodikid By: /s/ [Illegible]
---------------- --------------- ----------------
Title: Comptroller Title: G.M. Title: President
------------ ------------ -----------
GIVEN IMAGING LTD.
/s/ Gavriel Meron
By: Gavriel Meron
Title: President and Chief Executive Officer
<PAGE>
EXHIBIT A
GLOBAL PATENT ASSIGNMENT
Whereas, GIven Imaging Ltd. ("GIL"), an Israeli corporation, has
entered into a Technology Purchase and License Agreement, dated January 29,
1998 (the "AGREEMENT") with Rafael Armament Development Authority, a
subdivision of the Israeli Ministry of Defense ("RAFAEL"), wherein Rafael has
agreed, inter alia, to sell, transfer and convey to GIL certain patents and
patent applications (as provided in the Agreement); and
Whereas, Rafael (hereinafter, the "ASSIGNOR") is the sole and
exclusive owner of all right, title and interest in and to the patents that have
been registered with the Israeli Patents and Trademarks Registrar, and/or the
United States Patent and Trademark Office and/or patent registration offices of
other countries, all as identified in SCHEDULE I, which is attached hereto and
incorporated herein by way of reference; and
Whereas, Assignor is the sole and exclusive owner of all right,
title and interest in and to the patent applications that have been filed with
the Israeli Patents and Trademarks Registrar, and/or the United States Patent
and Trademark Office and/or patent registration offices of other countries, all
as identified in SCHEDULE I; and
Whereas, GIL (hereinafter, the "ASSIGNEE") is desirous of acquiring
all right, title and interest in and to each of the patents and patent
applications identified in SCHEDULE I, subject to the rights of Assignor under
the Agreement;
NOW, THEREFOR, for good and valuable consideration, the receipt and
sufficiency thereof is hereby acknowledged, Assignors and Assignee agree as
follows:
1. Assignor hereby sells, assigns and transfers to Assignee, and
Assignee acquires and accepts, all right, title and interest in and to the
patents and patent applications identified in SCHEDULE I, subject to the rights
of Assignor under the Agreement.
2. Assignor hereby authorizes and requests the Patents and
Trademarks Registrar in Israel, the Commissioner of Patents and Trademarks of
the United States, and each official holding a corresponding position of
authority in any country or jurisdiction within which Assignor owns one or more
patents or have pending one or more patent applications, to issue and to record
the title of Assignee as owner of all right, title and interest in and to the
patents and patent applications identified in SCHEDULE I.
IN WITNESS WHEREOF, Assignor has signed below, by its duly
authorized representatives, on this ______ day of _________, 199__.
RAFAEL ARMAMENT DEVELOPMENT AUTHORITY
By: /s/ M. Zemel By: By: /s/ [Illegible]
---------------- --------------- ----------------
Title: Comptroller Title: Title: President
------------ ------------ -----------
<PAGE>
ACKNOWLEDGMENT
On behalf of ASSIGNEE, Given Imaging Ltd., I hereby acknowledge
receipt of assignment - for good and valuable consideration - of the patents and
patent applications identified in SCHEDULE I.
GIVEN IMAGING LTD.
/s/ G. Meron
By: Gavriel Meron
Title: President and Chief Executive Officer
<PAGE>
EXHIBIT B
THE "PATENTS"