PATENT ASSIGNMENT AGREEMENT
Exhibit 10.8
THIS PATENT ASSIGNMENT AGREEMENT (this “Agreement”) is dated as of April 1 , 2022 (“Effective Date”), and is made by and between HESP LLC, a Delaware limited liability company (“Assignor”), and Cadrenal Therapeutics Inc., a Delaware corporation (“Assignee”). Each of Assignor and Assignee may be referenced herein as a “Party,” and collectively, the “Parties.”
W I T N E S S E T H :
WHEREAS, pursuant to that certain Asset Purchase Agreement between Assignor and Assignee dated on or about the date hereof (the “Purchase Agreement”), Assignor has agreed to (and cause its applicable Affiliates to) sell, convey, assign and transfer to Assignee, at the Closing, the Purchased Assets, including the patents listed on Schedule A hereto (the “Assigned Patents”); and
WHEREAS, as a condition to the Closing, the Parties agreed to enter into this Agreement pursuant to which Assignor shall assign to Assignee all of Assignor’s right, title and interest in, to and under the Assigned Patents, as the case may be.
NOW, THEREFORE, for good and valuable consideration, the receipt and sufficiency of which is hereby acknowledged, the Parties hereto agree as follows:
1. Defined Terms; Interpretation. Capitalized terms used but not defined herein shall have the meanings given to them in the Purchase Agreement.
2. Assignment of Rights in Assigned Patents. Effective upon the Effective Date, Assignor hereby sells, conveys, assigns and transfers to Assignee, and Assignee hereby accepts, all of Assignor’s right, title and interest in, to and under (a) the Assigned Patents, (b) all applications and registrations for the Assigned Patents, together with all non-provisionals, reissuances, continuations, continuations-in-part, divisionals, revisions, extensions and reexaminations with respect thereto, and any other applications and patents claiming priority thereto, both in the United States and other jurisdictions, and (c) any and all rights, benefits, privileges and proceeds under the Assigned Patents throughout the world, including (i) any claim by Assignor against third parties for past, present or future infringement of the Assigned Patents, and the right to sue for and collect the same for Assignee’s own use and enjoyment, all to be held and enjoyed by Assignee, its successors and assigns, as fully and entirely as the same would have been held and enjoyed by Assignor had the assignment not been made, (ii) the exclusive right to apply for, maintain and claim priority from all registrations, renewals or extensions thereof, (iii) the exclusive right to grant licenses or other interests therein, (iv) the right to claim priority in all countries in accordance with international law, (v) the right to collect royalties and proceeds in connection with any of the foregoing and (vi) to apply for, prosecute, and seek patents throughout the world in respect of any inventions to the extent fully supported by the Assigned Patents.
3. Recording. Assignor hereby requests the Commissioner of Patents and Trademarks and the corresponding entities or agencies in any other applicable countries to record Assignee as the assignee and owner of the Assigned Patents, including any continuations, divisionals, continuations-in-part, registrations, reissues, reexaminations or extensions thereof, and to issue any and all letters patent thereon to Assignee, as assignee of the entire right, title and interest in, to and under the same, for the sole use and enjoyment of Assignee, its successors, assigns or other legal representatives.
4. Assistance. Assignor shall not execute any writing or do any act whatsoever conflicting with the terms and conditions of this Agreement. Furthermore, Assignor will, upon reasonable request, without further or additional consideration, but at the expense of Assignee, execute, acknowledge and deliver, or cause to be executed, acknowledged and delivered, such additional instruments, notices, releases, certificates, powers of attorney, assurances, bills of sale and other documents and do such further acts, assignments, transfers and other things, in each case, as reasonably necessary to transfer to Assignee the Assigned Patents, to vest and confirm in Assignee the legal title to the Assigned Patents, and to perfect Assignee’s enjoyment of this grant.
5. Miscellaneous. This Agreement is executed and delivered pursuant to, is in accordance with, and is subject to, all of the representations, warranties, covenants and indemnities set forth in the Purchase Agreement, all of which shall survive the consummation of the transactions contemplated hereby on the basis and to the extent set forth in the Purchase Agreement. Nothing contained in this Agreement shall in any way supersede, modify, replace, amend, change, rescind, waive, exceed, expand, enlarge or in any way affect the provisions set forth in the Purchase Agreement nor shall this Agreement reduce, expand or enlarge any remedies under the Purchase Agreement. In the event that any provision of this Agreement shall be construed to conflict with a provision in the Purchase Agreement, the terms of the Purchase Agreement shall control. This Agreement may be executed in any number of counterparts (including by facsimile or electronic transmission in .pdf, .tiff or any similar format), each of which shall be an original, but all of such counterparts together constitute one and the same instrument, and shall become effective when one or more counterparts have been signed by each of the Parties and delivered to the other Party. This Agreement shall be binding upon and shall inure to the benefit of the Parties hereto and their respective successors and assigns. This Agreement shall be governed in all respects, including validity, interpretation, construction, performance and effect, by the internal laws of the State of Delaware, without regard to its conflict of laws principles that would result in the application of the law of any other state or jurisdiction. This Agreement may not be waived or amended except by an instrument in writing signed on behalf of each of the Parties hereto.
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IN WITNESS WHEREOF, the undersigned has executed this Patent Assignment Agreement as of the date first set forth above.
| ASSIGNOR: | ||
| HESP LLC | ||
| By: | Horizon Technology Finance Corporation, | |
| its sole member | ||
| By: | ||
| Name: | ||
| Title: | President | |
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IN WITNESS WHEREOF, the Assignee has executed this Patent Assignment Agreement as of the date first set forth above.
| ASSIGNEE: | ||
| CADRENAL THERAPEUTICS INC. | ||
| By: | /s/ ▇▇▇▇▇ ▇▇▇▇ | |
| Name: | ▇▇▇▇▇ ▇▇▇▇ | |
| Title: | Chief Executive Officer | |
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Schedule A
Assigned Patents
For the avoidance of doubt, the Assigned Patents includes (i) any substitutions, extensions, additions, reissues, reexaminations, renewals, divisions, continuations, continuations-in-part, or supplementary protection certificates, or patents or pending patent applications claiming priority, to the following patents, and (ii) all foreign counterparts of any of the following patents or those listed in clause (i).
| Country | Application # | Owner | Application Date |
| U.S.A. | 62/323,904 | Espero Pharmaceuticals, Inc. | 04/18/2016 |
| U.S.A. | PCT/US2017/027887 | Espero Pharmaceuticals, Inc. | 04/17/2017 |
| U.S.A. | 15/131,446 | Espero Pharmaceuticals, Inc. | 04/18/2016 |
| U.S.A. | PCT/US2017/027883 | Espero Pharmaceuticals, Inc. | 04/18/2017 |
| U.S.A. | 15/131,478 | Espero Pharmaceuticals, Inc. | 04/18/2016 |
| U.S.A. | PCT/US2017/027886 | Espero Pharmaceuticals, Inc. | 04/17/2017 |
| Country | Registration # | Owner | Registration Date |
| Tecarfarin | |||
| U.S.A. | 7666902 | Espero BioPharma, Inc. | 02/23/2010 |
| U.S.A. | 7145020 | Espero BioPharma, Inc. | 12/05/2006 |
| Country | Application # | Owner | Application Date |
| U.S.A. | 7932405 | Espero BioPharma, Inc. | 04/26/2011 |
| U.S.A. | 7253208 | Espero BioPharma, Inc. | 08/07/2007 |
| U.S.A. | 7285671 | Espero BioPharma, Inc. | 10/23/2007 |
| Australia | 2005233614 | Espero BioPharma, Inc. | 7/12/2012 |
| Austria | 1735296 | Espero BioPharma, Inc. | 12/9/2009 |
| Belgium | 1735296 | Espero BioPharma, Inc. | 12/9/2009 |
| Belgium | 2161261 | Espero BioPharma, Inc. | 8/28/2013 |
| Brazil | PI0508392-3 | Espero BioPharma, Inc. | |
| Canada | 2559568 | Espero BioPharma, Inc. | 5/28/2013 |
| China | 200580012074.6 | Espero BioPharma, Inc. | 6/1/2011 |
| Cyprus | 1735296 | Espero BioPharma, Inc. | 12/9/2009 |
| Denmark | 1735296 | Espero BioPharma, Inc. | 12/9/2009 |
| Denmark | 2161261 | Espero BioPharma, Inc. | 8/28/2013 |
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| Country | Application # | Owner | Application Date |
| Europe | 05733799.0 | Espero BioPharma, Inc. | 12/9/2009 |
| Europe | 09175606.4 | Espero BioPharma, Inc. | 8/28/2013 |
| Finland | 1735296 | Espero BioPharma, Inc. | 12/9/2009 |
| Finland | 2161261 | Espero BioPharma, Inc. | 8/28/2013 |
| France | 1735296 | Espero BioPharma, Inc. | 12/9/2009 |
| France | 2161261 | Espero BioPharma, Inc. | 8/28/2013 |
| Germany | 602005018181.4 | Espero BioPharma, Inc. | 12/9/2009 |
| Germany | 602005041073.2 | Espero BioPharma, Inc. | 8/28/2013 |
| Great Britain | 1735296 | Espero BioPharma, Inc. | 12/9/2009 |
| Great Britain | 2161261 | Espero BioPharma, Inc. | 8/28/2013 |
| Greece | 3071104 | Espero BioPharma, Inc. | 12/9/2009 |
| Hong Kong | 1105200 | Espero BioPharma, Inc. | 3/9/2012 |
| Hong Kong | 1138265 | Espero BioPharma, Inc. | 5/23/2014 |
| India | 250594 | Espero BioPharma, Inc. | 1/11/2012 |
| Ireland | 1735296 | Espero BioPharma, Inc. | 12/9/2009 |
| Ireland | 2161261 | Espero BioPharma, Inc. | 8/28/2013 |
| Israel | 178122 | Espero BioPharma, Inc. | 5/4/2013 |
| Israel | DIVOF178122 | Espero BioPharma, Inc. | |
| Italy | 502010901815570 | Espero BioPharma, Inc. | 12/9/2009 |
| Italy | 502013902212109 | Espero BioPharma, Inc. | 8/28/2013 |
| Japan | ▇▇▇▇▇▇▇ | Espero BioPharma, Inc. | 7/13/2012 |
| Luxembourg | 1735296 | Espero BioPharma, Inc. | 12/9/2009 |
| Luxembourg | 2161261 | Espero BioPharma, Inc. | 8/28/2013 |
| Mexico | 274321 | Espero BioPharma, Inc. | 5/3/2010 |
| Monaco | 1735296 | Espero BioPharma, Inc. | 12/9/2009 |
| Monaco | 2161261 | Espero BioPharma, Inc. | 8/28/2013 |
| Netherlands | 1735296 | Espero BioPharma, Inc. | 12/9/2009 |
| Netherlands | 2161261 | Espero BioPharma, Inc. | 8/28/2013 |
| Norway | 338837 | Espero BioPharma, Inc. | 10/24/2016 |
| Philippines | ▇-▇▇▇▇-▇▇▇▇▇▇ | Espero BioPharma, Inc. | 11/19/2010 |
| Portugal | 1735296 | Espero BioPharma, Inc. | 12/9/2009 |
| Russia | 2335501 | Espero BioPharma, Inc. | 10/10/2008 |
| Russia | 2006/07667 | Espero BioPharma, Inc. | 10/10/2013 |
| South Africa | 2006/07667 | Espero BioPharma, Inc. | 11/28/2007 |
| South Korea | 1203124 | Espero BioPharma, Inc. | 11/14/2012 |
| Spain | 05733799.0 | Espero BioPharma, Inc. | 12/9/2009 |
| Spain | 09175606.4 | Espero BioPharma, Inc. | 8/28/2013 |
| Sweden | 05733799.0 | Espero BioPharma, Inc. | 12/9/2009 |
| Sweden | 09175606.4 | Espero BioPharma, Inc. | 8/28/2013 |
| Switzerland | 1735296 | Espero BioPharma, Inc. | 12/9/2009 |
| Switzerland | 2161261 | Espero BioPharma, Inc. | 8/28/2013 |
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