Patent License

Patent License


WHEREAS: DANVILLE ENGINEERING, INC. ("DANVILLE") desires to obtain a license under certain patents and patents pending which are owned by American Dental Technologies, Inc. ("ADT"), and is willing to license such patents to DANVILLE.


NOW THEREFORE, the parties agree as follows:


1. ADT hereby grants to DANVILLE, a nonexclusive license under U.S. Patent No. 5,275,561, U.S. Patent No. 5,330,354, U.S. Patent No. 5,350,299 and U.S. Patent No. 5,525,058, and any foreign counterparts, reexaminations, reissues, continuations or continuations-in-part based on the disclosures of the patents of this paragraph 1, for the life of such patents to make, use, lease and sell DANVILLE'S current air abrasive dental models and future models to the extent such future models do not infringe any non-dental patents or patent applications (for example, on helical powder feed mechanisms) of ADT, throughout the world, but excluding Japan, presently covered by agreements between ADT and Denics Co., Ltd., a/k/a Dental Innovative Corporation, a Japanese corporation. The license granted in this paragraph 1 is non-transferable by assignment, sublicense or other means of transfer provided, further, that the period in which DANVILLE is licensed under this Agreement, DANVILLE shall have the right to have the products of this paragraph 1 manufactured by a third party solely for DANVILLE. The license in this paragraph 1 is subject to the payment provided in paragraph 2 of this Agreement.


Payments


2. Beginning October 1, 1997, DANVILLE, or its permitted successor or assigneee, shall pay to ADT a royalty on the net sales price (defined as gross sales price less freight, duties and taxes) on all air abrasive products used for cavity preparations manufactured, sold or leased by DANVILLE, or its permitted successor or assignee, which are manufactured (by or on behalf DANVILLE), sold or leased in a country in which ADT, presently or in the future, owns or controls patents or patent applications on any dental air abrasive products or methods of treatment, until the expiration of all such patent/patent applications. For air abrasive products used for cavity preparations which have an electro mechanically operated system and which are covered by either U.S. Patent No. 5,330,354 or U.S Patent 5,320,299, or U.S. Patent No. 5,525,058 or any of their foreign counterparts, the royalty shall be **. For all other air abrasive products used for cavity preparation, such as completely pneumatic systems, the royalty shall be **. In the event that DANVILLE, manufactures or has manufactured on its behalf, and sells or leases air abrasive products used for cavity preparations wholly within a country where ADT holds no such patents or patent applications or where all such patents have expired, then no such payments shall be required. The payments required under this paragraph 2 of this Agreement shall accrue when the subject products are delivered, invoiced or paid for, which ever occurs first. All payments shall be made in U.S. ...