license1.htm


    Exhibit
10.1

     

    LICENSE
AGREEMENT

     

    This
LICENSE AGREEMENT (the "License Agreement") is by and between

     

    
    

    Implant Sciences Corporation, a Massachusetts
corporation having offices at 107 Audubon Road, Wakefield, MA  01880-1246,
USA ("Implant Sciences")

     

    and

    International Brachytherapy, s.a.,
having offices at Zone Industrielle C, 7180 Seneffe, Belgium  ("IBt")

    made and
effective on the date set forth on the signature page hereof.

     

    RECITALS

     

    WHEREAS, Implant Sciences is
the owner of certain intellectual property identified below; and

     

    WHEREAS, IBt wishes to acquire
the Xenation Business of Implant Sciences, as defined below, and to utilize such
intellectual property in its business; and

     

    WHEREAS, Implant Sciences is
willing to grant IBt licenses to utilize the intellectual property on the terms
and conditions hereinafter set forth;

     

    AGREEMENT

     

    NOW, THEREFORE, the parties,
intending to be legally bound, agree as follows:

     

    1.
Definitions

     

    As used
in this License Agreement, the following phrases shall have the meanings set
forth below:

     

    1.01 Xenation Business. This
phrase shall mean using Xenation machines to implant Xenon-124 atoms and other
ions into cores used to produce low dose rate brachytherapy seeds and other
radioactive sources for the treatment of diseases.

     

    1.02. Xenation Intellectual Property
Rights. This phrase shall mean the right to make, have made, use, import,
export and sell products and services within the scope of any and all claims
reciting xenon in: (i)
U.S. Patent Number 6,183,409, for which the pertinent claims are 9 through 13;
(ii) any foreign counterparts of the aforementioned patent; and (iii) any
reissue, continuation, divisional or continuation-in-part applications claiming
priority directly or indirectly from any such patent, and such patents as may
issue from any such application, and also including the right to claim priority
under any applicable statute, treaty or convention based on any of said patent
applications. Also within the meaning of this phrase is the right to Licensor's
know-how for practicing the subject matter of said patent claims and for
operating Xenation equipment to implant Xenon-124 atoms and other ions into
various materials.

     

    1.03. Ancillary Intellectual Property
Rights. This phrase shall mean the right to make, have made, use, import,
export and sell products and services produced by implanting xenon atoms or ions
into materials as covered by any claims, other than claims included in the
Xenation Intellectual Property Rights as defined above, of any U.S. or foreign
patent for which Implant Sciences, at the time of the later of the effective
date of this Agreement or the Assignment Effective Date, as defined below, has
the power to grant a nonexclusive license, including claims 1 through 8 of U.S.
Patent 6,183,409, and any reissue, continuation, divisional or
continuation-in-part applications claiming priority directly or indirectly from
any such patent, and such patents as may issue from any such
application.

     

    1.04 Licensor. The term
Licensor shall mean Implant Sciences. Following the assignment of or transfer of
interest in any or all of the Xenation Intellectual Property Rights and the
Ancillary Intellectual Property Rights, the Term Licensor shall mean the
successor in interest.

     

    1.05 Licensee. The term
Licensee shall mean IBt, and any successor to this License
Agreement.

     

    1.06 BMI. The term BMI shall
mean Best Medical International, Inc.

     

    2. Grant

     

    2.01 Grant of Exclusive License.
Licensor hereby grants Licensee a perpetual, worldwide, royalty-free,
exclusive license to the Xenation Intellectual Property Rights. Licensor is
hereby excluded from practicing the Xenation Intellectual Property
Rights.

     

    2.02 Grant of Non-Exclusive License.
Licensor hereby grants Licensee a perpetual, worldwide, royalty-free,
non-exclusive license to the Ancillary Intellectual Property
Rights.

     

    3. Assignment and
Sublicensing

     

    3.01 Assignability by Licensee.
Licensee shall have the right to assign the rights and licenses granted
in this License Agreement to a purchaser of its Xenation Business.

     

    3.02 Sublicensing Right.
Licensee shall have the power to grant sublicenses based on the aforesaid
licenses.

     

    3.03 Attachment of Licenses. Any
assignment by Licensor of U.S. Patent 6,183,409, and/or any Xenation
Intellectual Property Rights, and/or any Ancillary Intellectual Property Rights,
shall be expressly subject to the licenses granted under this License Agreement.
Licensor shall give Licensee two weeks notice of its intention to grant rights
or transfer an ownership in the Xenation Intellectual Property Rights and/or the
Ancillary Intellectual Property Rights to a third party. IBt hereby acknowledges
receipt of Implant Sciences’ intention to grant rights or transfer an ownership
in the Xenation Intellectual Property Rights and/or the Ancillary Intellectual
Property Rights to BMI. If Licensor attempts to grant rights or transfer an
ownership interest in the Xenation Intellectual Property Rights and/or the
Ancillary Intellectual Property Rights to a third party without reciting and
obligating the grantee or transferee to respect the interest of Licensee in any
grant or transfer document relating thereto, such attempted grant or transfer
shall be null and void.

     

    3.04 Security Interest and
Recordation. Licensor hereby grants to Licensee a Security Interest in
the Xenation Intellectual Property Rights and Ancillary Intellectual Property
Rights in the form of the Security Agreement attached as Exhibit SA. Licensor
hereby grants to Licensee the power to record with and limited to the U.S.
Patent and Trademark Office and the patent office of any other jurisdiction for
which there is a patent or patent application of the Xenation Intellectual
Property Rights, and/or Ancillary Intellectual Property Rights.

     

    3.05 Third-Party Beneficiary.
Licensee shall be a third-party beneficiary in any permitted grant or
transfer by Licensor of any of the Xenation Intellectual Property Rights and/or
the Ancillary Intellectual Property Rights.

     

     

    4.
Consideration

     

    In
consideration for the Grant and obligations undertaken by Licensor, IBt shall
pay Implant Sciences a one-time fee of Ten Dollars ($10.00). Said fee shall be
paid to Implant Sciences upon closing of the sale of its Xenation Business to
IBt.

     

    5. Enforcement of Intellectual
Property Rights. In the event that either party hereto becomes aware that
anyone is infringing any part of the Xenation Intellectual Property Rights, then
it shall promptly notify the other and provide any supporting evidence of which
that party has knowledge. Licensee shall have the right but not the obligation
to initiate litigation to terminate the infringement, at Licensee's expense,
and, if so required, to sue in Licensor's name or join Licensor as a plaintiff.
In connection with the foregoing:

     

    (a) Licensee
shall keep Licensor informed as to developments.

     

    (b) Implant
Sciences and any successor in interest shall provide such reasonable cooperation
to Licensee as Licensee shall reasonably request, at Licensee's expense,
including by using commercially reasonable efforts to provide documents,
witnesses, and any other reasonably obtainable evidence.

     

    (c) In the
event that the termination of the litigation results in the payment of any
damages, royalties, or other cash consideration to either Licensee or Licensor,
Licensee shall receive such consideration.

     

    6.
Maintenance of
Patents

     

    Licensor
shall maintain in force all patents of the Xenation Intellectual Property Rights
by paying all government fees at least one month before they become due.
Licensor shall immediately report such payments to Licensee. If Licensor should
fail to report any such payment one month before a due date, Licensee shall be
entitled to make such payment and to be reimbursed for the cost thereof plus a
handling charge of 100% of the total cost incurred.

     

    7. General

     

    7.01. Term. This License
Agreement shall become effective as of the date first written above and shall
continue in force until six years following the expiration of the last-to-expire
patents included in the Xenation Intellectual Property Rights and the Ancillary
Intellectual Property Rights.

     

    7.02. Termination. This
License Agreement may be terminated for breach by either party of any material
provision of this License Agreement if written notice of breach has been given
and the breach has not been cured within sixty days of the receipt of such
notice.

     

    7.03. Post-Termination.
Termination of this License Agreement shall not relieve either party of
any obligations which accrued prior to termination of this License Agreement and
which have not been fulfilled at the time of termination. Such obligations
include the duty to pay the other party for litigation expenses or awards, as
set forth in Section 5.(c) of this License Agreement.

     

    7.04. Correspondence. All
notices, reports, or requests shall be given by one party in writing to the
other by certified mail, electronic mail, or fax to the addresses set forth
below or to such other address as may be designated by a party by
notice:

     

    If to
Licensee:                                                                      Attention: Mr.
Francois Blondel

    Chief
Executive Officer

    International Brachytherapy,
s.a.

    Zone Industrielle C, 7180 Seneffe,
Belgium

    Email:fblondel@ibt.be

    Fax: +32 64 52 08 01

    


    If to
Licensor:                                                                     
Attention: ___________________

    Implant Sciences
Corporation

    107 Audubon Road

    Wakefield, MA 01880-1246,
USA

    Email:

    Fax:

    


    7.05. Choice of Law and Venue.
This License Agreement shall be construed and interpreted in accord with
United States federal law and the law of the State of Maryland (U.S.A.) except
for its conflict of laws principles. Each party irrevocably (i) agrees that any
action or proceeding arising from or relating to this Agreement may be brought
only in the courts of Maryland or the U.S. District Court located in Baltimore,
Maryland, (ii) consents, for itself and in respect of its property, to the
jurisdiction of each such court in any such action or proceeding, and (iii)
waives any objection to proceeding in such venue, including that the forum is
inconvenient.

     

    7.06. Entire Agreement. This
License Agreement sets forth the entire agreement and understanding of the
parties as to the subject matter hereof and merges all discussions between them.
Neither party shall be bound by any terms or conditions except as expressly set
forth herein or as duly set forth in a subsequent document signed by authorized
representatives of the parties.

     

    7.07. Severability. If any
provision of this License Agreement is held invalid, such holding shall not
affect the validity of any other provision of this License
Agreement.

     

    7.08. Assignment to BMI. IBt
hereby acknowledges Implant Sciences’ intention to assign or transfer ownership
in the Xenation Intellectual Property Rights and Ancillary Intellectual Property
Rights to BMI (“Assignment”). IBt agrees that in the event of the Assignment,
IBt shall, and hereby does, forever release and discharge Implant Sciences, as
of the effective date of the Assignment (the “Assignment Effective Date”), from
any and all warranties, covenants, and obligations of Licensor under this
License Agreement, excluding only those obligations of Implant Sciences
expressly set forth in Section 5.(b), from and after the Assignment Effective
Date, and IBt further agrees that, from and after the Assignment Effective Date,
as between Implant Sciences and BMI, only BMI shall have any obligation to
perform any liability with respect to any and all warranties, covenants, and
obligations of Licensor under this License Agreement, excluding only those
obligations of Implant Sciences expressly set forth in Section
5.(b).

     

    [Remainder
of page intentionally left blank; Signature page follows]

     

    
      
        
        

      

      
        
        

        
          

        

      

      
        
        

      

    

     

    IN WITNESS WHEREOF, the
parties hereto have executed this License Agreement on the day and year written
below.

     

    International
Brachytherapy,
s.a.                
Implant Sciences Corporation,

    Licensee                                                             Licensor

    By:                       By:

    


    /s/ John Carden                             /s/ Phillip C. Thomas

    Name:  
John
Carden                                         Name: 
Phillip C. Thomas

    Title:     Director                                         Title:  
CEO

    Date:     June
30,
2008                                Date:  June
30, 2008

    
      
        
        

      

      
        
        

        
          

        

      

      
        
        

      

    

    
      SECURITY
AGREEMENT

       

    

    This
SECURITY AGREEMENT (the "Agreement") is by and between

     

    
      	
               
      

            	
              International Brachytherapy,
      s.a., having offices at Zone Industrielle C, 7180 Seneffe, Belgium
      ("Secured Party" or “IBt”)

            


    

    and

    
      	
               
      

            	
              Implant Sciences Corporation,
      a Massachusetts corporation having offices at 107 Audubon Road,
      Wakefield, MA 01880-1246, USA ("Grantor" or “Implant
      Sciences”)

            


    

    made and
effective on the date set forth on the signature page hereof

     

    RECITALS

     

    WHEREAS, the Grantor is the
owner of certain Collateral defined herein; and

     

    WHEREAS, the Secured Party
seeks a security interest in said Collateral to secure the rights granted to it
in the License Agreement (hereinafter the "Obligations"); and

     

    WHEREAS, the Grantor, having
been duly advised of its rights and liabilities by independent counsel, wishes
to grant a security interest in favor of the Secured Party as herein
provided;

     

    AGREEMENT

     

    NOW, THEREFORE, in
consideration of the promises contained herein and for other good and valuable
consideration, the receipt and sufficiency of which are hereby acknowledged, the
parties, intending to be legally bound, agree as follows:

     

    1.
Definitions and
Interpretation

     

    As used
in this Agreement, the following phrases shall have the meanings set forth
below:

     

    1.01 Terms Defined in License
Agreement. All capitalized terms used in this Agreement and not otherwise
defined herein shall have the meanings assigned to them in the License
Agreement.

     

    1.02 Certain Defined Terms. As
used in this Agreement, the following terms shall have the following
meanings:

     

    (i) Collateral. This word has the
meaning set forth in Section 2.

     

    (ii) Patent Office. This term means
the United States Patent and Trademark Office and the patent office of any other
jurisdiction.

     

    (iii) License Agreement. This phrase
means that certain License Agreement, dated as of the date hereof, between
Implant Sciences Corporation and International Brachytherapy, s.a.

     

    (iv) UCC. This term means the
Uniform Commercial Code as in effect in the state of Maryland.

     

    1.03 Terms Defined in UCC.
Where applicable in the context of this Agreement and except as otherwise
defined herein, terms used in this Agreement shall have the meaning assigned to
them in the UCC.

     

    1.04 Construction. In this
Agreement, the following rules of construction and interpretation shall be
applicable: (i) no reference to "proceeds" in this Agreement authorizes any
sale, transfer, or other disposition of any Collateral by the Grantor; (ii)
"includes" and
"including" are not limiting; (iii) "or" is not exclusive; and (iv) "all"
includes "any" and "any" includes "all." To the extent not inconsistent with the
foregoing, rules of construction and interpretation applicable to the License
Agreement shall also be applicable to this Agreement and are incorporated herein
by reference.

     

    2. Security
Interest

     

    2.01 Grant of Security Interest.
The Grantor hereby assigns, transfers, and conveys to the Secured Party,
and grants a security interest in: (i) U.S. Patent Number 6,183,409; (ii) any
foreign counterparts of the foregoing patent; (iii) any reissue, continuation,
divisional or continuation-in-part applications and such patents as may issue
thereon; and (iv) the right to claim priority under any applicable statute,
treaty, or convention, to said patent applications (all hereinafter called the
"Collateral").

     

    2.02 Continuing Security Interest.
The Grantor agrees that this Agreement shall create a continuing security
interest in the Collateral which shall remain in effect for the Term defined in
Section 8.01 of this Agreement.

     

    3. Supplement to License
Agreement

     

    This
Agreement has been entered into in conjunction with the License Agreement. The
rights and remedies of the Secured Party (referred to as "Licensee" in the
License Agreement) with respect to the security interest granted herein are
without prejudice to, and are in addition to those set forth in the License
Agreement, the terms and provisions of which are incorporated herein by
reference.

     

    4. Grantor's
Warranties and Covenants The Grantor makes the
following warranties and covenants:

     

    (i)           The
Grantor will, on a continuing basis, make, execute, acknowledge and deliver, and
file and record in the proper filing and recording places, all such instruments
and documents, and take all such action as may be necessary or advisable or may
be requested by the Secured Party to carry out the intent and purposes of this
Agreement, or for assuring, confirming, or protecting the grant or perfection of
the security interest granted or purported to be granted hereby, to ensure the
Grantor's compliance with this Agreement or to enable the Secured Party to
exercise and to enforce its rights and remedies hereunder with respect to the
Collateral, including any documents for filing with the Patent
Office.

     

    (ii)           The
Grantor agrees that, at the Secured Party's option, for the maintenance and
preservation of the Collateral, the Secured Party may pay certain Patent Office
fees including but not limited to filing fees, recordation fees, issue fees,
maintenance fees and other necessary expenses, for which Grantor shall reimburse
Secured Party on demand for any payment made pursuant to the foregoing
authorization plus a handling charge of 100% of the total cost incurred;
and

     

    (iii)           The
Grantor grants the Secured Party a power of attorney and authorization to record
this Agreement, an abstract thereof, or any other document describing the
Secured Party's interest in the Collateral with the Patent Office.

     

    5. Default

     

    Until
default, Grantor may exercise ownership of the Collateral and use it in any
lawful manner not inconsistent with this Grant of Security
Interest.

     

    Grantor
shall be in default upon violation of or failure to perform any warranty,
covenant, or obligation set forth in Section 4 above or the License Agreement,
if written notice of breach has been given and the breach has not been cured
within sixty days of the receipt of such notice, or any event which results in
the acceleration of the maturity of the indebtedness of Grantor to others under
any indenture, agreement or undertaking, or any act of bankruptcy.

     

    Upon such
default and at any time thereafter, the Secured Party may declare the Collateral
secured by this Agreement immediately due. No waiver by the Secured Party of any
default shall operate as a waiver of any other default or of the same default on
a future occasion.

     

    6. Assignments

     

    Any
assignment of the Collateral to a third party shall be null and void unless the
third party stands in the shoes of the Grantor with respect to the Licensing
Agreement and the warranties and covenants set forth in Section 4, Subsections
(iii) to (v), above.  Otherwise, any such assignment shall not be
unreasonably withheld.

     

    7. Binding
Effect

     

    All
rights of the Secured Party under this Agreement shall inure to the benefit of
its successors and assigns. Any and all of the warranties, covenants, and
obligations of the Grantor shall be binding on its assigns, trustees and
administrators.

     

    8. General

     

    8.01. Term. This Agreement
shall create a security interest effective as of the date set forth on the
signature page hereof and shall continue in force until six years after the
expiration of all patents constituting the Collateral. Thereupon, the security
interest created by this Agreement shall terminate.

     

    8.02. No Inconsistent Requirements.
The Grantor acknowledges that this Agreement and the other documents,
agreements, and instruments entered into or executed in connection herewith may
contain covenants and other terms and provisions variously stated regarding the
same or similar matters, and Grantor agrees that all such covenants, terms, and
provisions are cumulative and all shall be performed and satisfied in accordance
with their respective terms.

     

    8.03. Notices. All notices and
other communications hereunder shall be in writing and shall be mailed, sent, or
delivered in accordance with the License Agreement.

     

    8.04. Choice of Law and Venue.
This Agreement shall be construed and interpreted in accord with the laws of the
State of Maryland except as required by mandatory provisions of law or to the
extent the perfection or priority of the security interests hereunder, or the
remedies hereunder, in respect of an Collateral are governed by the law of a
jurisdiction other than Maryland. Each party irrevocably (i) agrees that any
action or proceeding arising from or relating to this Agreement may be brought
only in the courts of Maryland or the U.S. District Court located in Baltimore,
Maryland, (ii) consents, for itself and in respect of its property, to the
jurisdiction of each such court in any such action or proceeding, and (iii)
waives any objection to proceeding in such venue, including that the forum is
inconvenient.

     

    8.05. Entire Agreement. This
Agreement and the License Agreement, together with the Schedules hereto and
thereto, set forth the entire agreement and understanding of the parties as to
the subject matter hereof and merge all discussions between them. Neither this
Agreement nor any provision hereof may be modified, amended, or waived except by
the written agreement of the parties, as provided in the License
Agreement.

     

    8.06. Severability. If any
provision of this Agreement is held invalid, such holding shall not affect the
validity of any other provision of this Agreement.

     

    8.07. Assignment to BMI. IBt
hereby acknowledges Implant Sciences’ intention to assign or transfer ownership
in the Xenation Intellectual Property Rights and Ancillary Intellectual Property
Rights to Best Medical International, Inc. (“BMI”) (“Assignment”). IBt agrees
that in the event of the Assignment, IBt shall, and hereby does, forever release
and discharge Implant Sciences, as of the effective date of the Assignment (the
“Assignment Effective Date”), from any and all warranties, covenants, and
obligations of Grantor under this Agreement from and after the Assignment
Effective Date, excluding only those obligations of Implant Sciences expressly
set forth in Section 5.(b) of the License Agreement and IBt further agrees that,
from and after the Assignment Effective Date, only BMI or its assigns pursuant
to the License Agreement and this Agreement shall have any obligation to perform
and liability with respect to any and all warranties, covenants, and obligations
of Grantor under this Agreement excluding only those obligations of Implant
Sciences expressly set forth in Section 5.(b) of the License
Agreement.

     

    [Remainder
of page intentionally left blank; Signature page follows.]

     


    
      
        
           

        

         


      

      
         


        
          

        

      

      
         


        
           

           

          


        

      

    


    


     

    IN WITNESS WHEREOF, the
parties hereto have executed this Security Agreement on the day and
year  written below.

     

    
      International
Brachytherapy,
s.a.                
Implant Sciences Corporation,

      Secured
Party                                                    Grantor

      By:                       By:

      


      /s/ John Carden                             /s/ Phillip C. Thomas

      Name:  
John
Carden                                         Name: 
Phillip C. Thomas

      Title:     Director                                         Title:  
CEO

      Date:     June
30,
2008                                Date:  June
30, 2008