WORLDWIDE INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT DATED May 1, 2013 This Intellectual Property Assignment Agreement (“Agreement”) is entered into on May 1, 2013 by and between Dr. Wei Ping Min (“Assignor”), an individual residing at 84 Hesketh St,...
Exhibit
10.7
WORLDWIDE INTELLECTUAL PROPERTY ASSIGNMENT AGREEMENT
DATED May 1, 2013
This Intellectual Property Assignment Agreement (“Agreement”) is entered into on
May 1, 2013 by and between ▇▇. ▇▇▇ Ping Min (“Assignor”), an individual
residing at ▇▇ ▇▇▇▇▇▇▇ ▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇▇ ▇▇▇, ▇▇▇▇▇▇, and Regen
BioPharma Inc. (“Assignee”), a fully owned subsidiary of Bio-Matrix Scientific
Group, Inc. having offices at ▇▇▇▇ ▇▇▇▇▇▇ ▇▇ # ▇▇▇, ▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇
WHEREAS, Assignor is the owner of all proprietary and intellectual property
rights, including but not limited to trade secrets, patent applications and patents, in
the concepts and technologies specifically described in Attachment A (“Min IP”)
WHERAS, Assignee desires to acquire the ownership of all proprietary rights,
including, but not limited to, the copyrights, trade secrets, trademarks and
associated good will and patent rights in the Min IP
THEREFORE, IT IS AGREED AS FOLLOWS:
1. ASSIGNMENT OF RIGHTS:
As consideration to Assignee for entering into this Agreement and agreeing to
comply with the terms and conditions of this Agreement, Assignor hereby assigns,
transfers, and conveys to Assignee 100% of Assignor’s right, title and interest in
the Min IP, including:
(1) all copyrights, trade secrets, trademarks and associated good will and all
patents anywhere in the world which are granted and which may be granted on the
Min IP;
(2) all applications for patents (including divisions, continuations in whole or
part or substitute applications) in the United States or any foreign countries whose
duty it is to issue such patents;
(3) any reissues and extensions of such patents; and
(4) all priority rights under the International Convention for the Protection of
Industrial Property for every member country.
2. WARRANTIES AND REPRESENTATIONS OF ASSIGNOR
(a)Assignor is sole and rightful owner of any and all rights, title and interest in
the Min IP
(b)The Min IP has not been sold or transferred to any third party nor has any
third party been granted the right to acquire or license any of the Min IP
(c) The execution, delivery and performance of this Agreement by Assignor
does not and shall not constitute Assignor’s breach of any statute or
regulation or ordinance of any governmental authority, and shall not conflict
with or result in a breach of or default under any of the terms, conditions, or
provisions of any order, writ, injunction, decree, contract, agreement, or
instrument to which the Assignor is a party, or by which Assignor is or may
be bound.
3. WARRANTIES AND REPRESENTATIONS OF ASSIGNEE
(a)Assignee is a corporation duly organized, validly existing and in good
standing under the laws of the state its incorporation and has the requisite
corporate power and authority to enter into and perform its obligations under
this Agreement without the consent, approval or authorization of, or
obligation to notify, any person, entity or governmental agency which
consent has not been obtained.
(b)The execution, delivery and performance of this Agreement by Assignee
does not and shall not constitute Assignee’s breach of any statute or
regulation or ordinance of any governmental authority, and shall not conflict
with or result in a breach of or default under any of the terms, conditions, or
provisions of any order, writ, injunction, decree, contract, agreement, or
instrument to which the Assignee is a party, or by which Assignee is or may
be bound.
(c)Assignee shall cause Bio-Matrix Scientific Group, Inc. (.BMSN.) to
perform any and all actions required in order that BMSN shall authorized
have a sufficient number of common shares that consideration may be
rendered to Assignor in accordance with the terms and conditions of this
Agreement ..
4. CONSIDERATION TO ASSIGNOR
(1)Assignee agrees to negotiate in good faith with Assignor with regards to a
proposed consulting agreement whereby the Assignor shall perform certain
agreed upon tasks for the benefit of Assignee for consideration to
the Assignor consisting of ▇▇▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ Dollars
($100,000 ) of the common shares of BMSN valued as of the date of
issuance and to be paid over a twelve month period in twelve equal
installments (“Consulting Shares”) and registered under the Securities Act of
1933 on Form S-8.
(2)
(i) Assignor shall receive 100,000 of the preferred shares of BMSN within 10
days of execution of this document (.Assignor Preferred Shares.).
(ii)Assignor preferred Shares may be exchanged by Assignor for newly issued
common shares of BMSN (“Exchange Common Shares”) at Assignor’s
option subject to the following conditions:
(a)A sufficient number of common shares shall be authorized for issuance by
BMSN in order that the required number of Exchange Common Shares may
be issued
(b)Subject to (2)(ii)(a) above, upon any date subsequent to the date of the
completion of a satisfactory review by the United States Food and Drug
Administration (“FDA”) of an Investigational New Drug Application
(“IND”) for the Min IP submitted by the Assignee which shall result in the
ability of the Assignee to lawfully begin clinical testing of the Min IP on
human subjects within the United States the Assignee shall be permitted, at
Assignee’s option, to exchange 33,333 of the Assignor Preferred Shares into
that number of Exchange Common Shares having a value of Three Hundred
Thirty Three Thousand United States Dollars ($333,000) such shares being
valued at a price per share equal to the closing price as of the day written
notice is given by Assignor to Assignee of Assignor’s intent to exchange.
(c) Subject to (2)(ii)(a) above, upon any date subsequent to the date that
manufacturing procedures for the manufacture of the Min IP have been
developed by the Assignee which comply to the Current Good
Manufacturing Practices (“cGMP “) requirements of the Food Drug and
Cosmetics Act of 1938 and the rules and regulations promulgated thereunder
as they may apply to the manufacture of the Min IP the Assignor shall be
permitted, at Assignor’s option, to exchange 33,333 of the Assignor
Preferred Shares into that number of Exchange Common Shares having a
value of Three Hundred Thirty Three Thousand United States Dollars
($333,000) such shares being valued at a price per share equal to the closing
price as of the day written notice is given by Assignor to Assignee of
Assignor’s intent to exchange.
(d)Subject to (2)(ii)(a) above, upon any date subsequent to the date that, in
connection with a lawfully administered Phase I clinical trial of the Min IP
being conducted by the Assignee within the United States on human
subjects, both of (1) a clinical trial protocol has been completed and (2) a
Principal Investigator has been appointed, the Assignor shall be permitted,
at Assignor’s option, to exchange 33,333 of the Assignor Preferred Shares
into that number of Exchange Common Shares having a value of Three
Hundred Thirty Three Thousand United States Dollars ($333,000) such
shares being valued at a price per share equal to the closing price as of the
day written notice is given by Assignor to Assignee of Assignor’s intent to
exchange.
(e) Subject to sufficient number of common shares having been authorized for
issuance by BMSN, Assignor shall receive, upon successful completion of a
lawfully administered Phase I clinical trial of the Min IP being conducted by
the Assignee within the United States on human subjects, the results of
which (1) shall indicate that the Min IP can be safely tolerated by human
subjects (2) shall not indicate that use of the Min IP in human subjects result
in side effects of such severity that commencement of a Phase II clinical
trial could not occur, and (3) establishes the optimal dosage and/or method
of administration( as applicable )of the Min IP the Assignor shall receive
that number of the common shares of BMSN which, at a price per share
equal to the closing price of the shares as of the day of issuance, shall equal
One Million United States Dollars ($1,000,000)
(f) For purposes of this Section 4, the term “closing price” with regards to any
common shares of BMSN issued to the Assignor shall mean the last sale
price as reported by the principal securities exchange or trading market
where the common shares of BMSN are listed or traded. In the event that the
common shares of BMSN are not be traded publicly on a securities
exchange or trading market as of the date of required issuance the common
shares shall be valued at fair value as determined by a third party who shall
be approved by both Assignor and Assignee.
(g)Assignor shall be entitled to additional consideration for productivity and
deliverables over and above listed items (“Bonus”) The eligibility of the
Assignor to receive a Bonus as well as the nature and amount of any Bonus
shall be at the sole discretion and determination of the CEO of BMSN on
behalf of Assignee.
5. NO REGISTRATION UNDER THE SECURITIES ACT OF 1933 OR THE
SECURIES LAWS OF ANY STATE
Assignor acknowledges that any securities issued pursuant to this Agreement that
are not registered pursuant to the Securities Act of 1933 shall constitute “restricted
securities” as that term is defined in Rule 144 promulgated under the Securities Act of
1933, and shall contain the following restrictive legend:
THESE SECURITIES HAVE NOT BEEN REGISTERED UNDER THE
SECURITIES ACT OF 1933, AS AMENDED (THE .ACT.), OR SECURITIES
LAWS OF ANY STATE AND MAY NOT BE OFFERED, SOLD, ASSIGNED,
PLEDGED, TRANSFERRED OR OTHERWISE DISPOSED OF IN THE
ABSENCE OF AN EFFECTIVE REGISTRATION STATEMENT UNDER THE
ACT AND APPLICABLE STATE SECURITIES LAWS OR PURSUANT TO
AN AVAILABLE EXEMPTION FROM REGISTRATION UNDER THE ACT
OR SUCH LAWS AND, IF REQUESTED BY THE COMPANY, UPON
DELIVERY OF AN OPINION OF COUNSEL REASONABLY
SATISFACTORY TO THE COMPANY THAT THE PROPOSED TRANSFER
IS EXEMPT FROM THE ACT OR SUCH LAWS.
6. COOPERATION BY ASSIGNOR. Assignor agrees to cooperate with
Assignee and to execute and deliver all papers, instruments and assignments
as may be necessary to vest all right, title and interest in and to the Min IP to
Assignee. Assignor further agrees to testify in any legal proceeding, sign all
lawful papers and applications and make all rightful oaths and generally do
everything possible to aid Assignee to obtain and enforce proper protection
for the Min IP in all countries.
7. This Agreement embodies all of the representations, warranties and
agreements of the parties hereto with respect to the subject matter hereof,
and all prior understandings, representations, and warranties (whether oral or
written) with respect to such matters are superseded and may not be
amended, modified, waived, discharged, or orally terminated except by the
mutual written consent of the parties.
8. The invalidity or unenforceability of any particular provision of this
Agreement shall not affect the other provisions hereof, and this Agreement
shall be construed in all respects as if such invalid or unenforceable
provisions were omitted. Furthermore, in lieu of such illegal, invalid, or
unenforceable provision there shall be added automatically as a part of this
Agreement a provision as similar in terms to such illegal, invalid, or
unenforceable provision as may be possible and be legal, valid and
enforceable.
9. The parties each shall bear their own legal and other expenses incurred in
connection with the preparation, execution and performance of this
Agreement.
10. The terms and conditions of this Agreement shall be governed by and
construed in accordance with the laws of the State of California, without
reference to its choice of law rules. Any action arising as a result of this
Agreement shall be brought in the state courts located in San Diego County,
State of California.
11. This agreement may be signed in two or more counterparts each of which
may be a facsimile copy and which shall be deemed to be an original, but
together shall constitute the same instrument and shall be binding on the
parties.
IN WITNESS WHEREOF, the parties have executed this Agreement as of the date
first above written.
"ASSIGNOR"
By: /s/Wei Ping Min
Date: May 1, 2013
"ASSIGNEE"
By: /s/▇▇▇▇▇ ▇. ▇▇▇▇
Title: Chairman & CEO
Date: May 1, 2013
APPENDIX A
- Method of Cancer Treatment using siRNA Silencing US Patent # 8,389,708
- Patent applications from the same family corresponding to numbers PCT/CA2006/000984,
CA2612200 and EP1898936