PATENT ASSIGNMENT AGREEMENT between NANOLOGIX, INC. and NUTRA PHARMA CORP. Dated ____________, 2006
between
NANOLOGIX,
INC.
and
Dated
____________, 2006
1
This
Patent Assignment Agreement (“Agreement”) is dated ____________, 2006
(“Commencement Date”), by and between NanoLogix, Inc., a Delaware corporation
having a place of business at ▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇, ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇ (“Assignor”)
and
Nutra Pharma Corp., a California corporation having a place of business at
▇▇▇▇
▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇ (“Assignee”)
(each,
a “Party”
and
together, the “Parties”).
WHEREAS,
Assignor is the owner of certain patents;
WHEREAS,
Assignee desires to acquire said patents for use within the Field of Use (as
defined below), both domestically and internationally;
and
WHEREAS,
Assignor has the power and authority to convey said patents to Assignee
domestically and in certain countries;
NOW,
THEREFORE, in consideration of the respective covenants contained herein and
intending to be legally bound hereby, the Parties hereto agree as
follows:
1.
Definitions.
For
purposes of this Agreement, the following terms
and
variations thereof shall
have the meanings specified or referred to in this Section.
1.1 “Affiliate”
and
“Affiliates”
shall
mean any individual, corporation, subsidiary, affiliate, partnership,
association, business, organization or other entity that, directly or indirectly
through one or more intermediaries, controls, or is controlled by, or is under
common control with, a Party and/or such entities. The term “control” (including
the terms “controlling,” “controlled by” and “under common control with”) means
the possession, direct or indirect, of the power to direct or cause the
direction of the management or policies of an individual or entity, whether
through the ownership of voting shares, by contract or otherwise.
1.2 “Assigned
Patents”
shall
mean the patents, including inventions and registrations and applications
assigned by Assignor to Assignee for sole use limited to the Field of Use
identified in Exhibit
A
hereto.
1.3
“Assignee’s
Field of Use”
or
“Field
of Use”
with
regard to Assignee’s use of the Assigned Patents and use of the technology and
intellectual property associated with the Assigned Patents shall mean only
the
uses within the areas of health described herein; specifically, the detection
and identification of human and veterinary identification of Atypical
Mycobacteria, Tuberculosis, Mycobacterium Avium Intracellulare (MAI),
Mycobacteria, Paratuberculosis, Nocardia and Pseudomonas for disease
identification, and antibiotic assaying (but
such
assaying does not include antibiotic assaying when those antibiotics or
compounds are derived from by-products obtained through growing microorganisms
using Assignor's IP) for determining the antimicrobial agent sensitivity of
microorganisms to ascertain which antibiotics are efficacious against
microorganisms in the field of health which may lead to drug discoveries;
and
excludes
any other uses, including any use reserved for the Assignor as specified in
the
Realm
of Use
or
Assignor’s
Use,
and
excludes kits for any other uses, which uses or kits are reserved to Assignor,
including but not limited to uses, kits, or bioreactors pertaining to
bioremediation, apoptosis, nanotechnology, biomems, microfluidic devices, the
production of hydrogen and the identification and growing of over 32 different
paraffin-eating and non-paraffin eating microorganisms to collect any microbial
by-products of any kind, including antibiotics (all of which fall under the
Realm of Use of the Assignor). Further, the Assignee’s Field of Use does not
include any industrial use of the Assigned Patents. Whereas
the Assignee’s Field of Use and the Assignor’s Use both provide for certain uses
within the area of health, the Assignee, with regard to Assignee’s
use of the Assigned Patents and use of the technology and intellectual property
associated with the Assigned Patents
is
limited to only the uses within the areas of health that are specified in the
Assignee’s Field of Use.
2
1.4 “Assignor
Indemnified Parties”
shall
have the meaning set forth in Section 12.1.
1.5 “Breach”
shall
mean any breach of, or any inaccuracy in, any representation or warranty or
any
breach of, or failure to perform or comply with, any covenant or obligation,
in
or of this Agreement or any other Contract, or any event which with the passing
of time or the giving of notice, or both, would constitute such a breach,
inaccuracy or failure.
1.6 “Buffer
Products”
shall
mean
certain of Assignor's
products utilizing Assignor's trade secrets, including "AFZ", the "Adaptor
Buffer" and other formulas.
1.7 “Calendar
Quarter”
shall
mean each of the three-month periods ending March 31, June 30, September 30
and
December 31 in any given calendar year.
1.8 "Calendar
Year"
shall
mean the 12-month period beginning January 1 and ending on December 31 in any
given calendar year.
1.9 “Contract”
shall
mean any written agreement, contract, lease, which is legally
binding.
1.10 “Encumbrance”
shall
mean any charge, claim, community or other marital property interest, condition,
equitable interest, lien, option, pledge, security interest, mortgage, right
of
way, easement, encroachment, servitude, right of first option, right of first
refusal or similar restriction, including any restriction on use, voting (in
the
case of any security or equity interest), transfer, receipt of income or
exercise of any other attribute of ownership.
1.11 “Force
Majeure Event”
shall
have the meaning set forth in Section 17.8.
3
1.12 “Governmental
Body”
shall
mean any:
(a) nation,
state, county, city, town, borough, village, district or other
jurisdiction;
(b) federal,
state, local, municipal, foreign or other government;
(c) governmental
or quasi-governmental authority of any nature (including any agency, branch,
department, board, commission, court, tribunal or other entity exercising
governmental or quasi-governmental powers);
(d) multinational
organization or body;
(e) body
exercising, or entitled or purporting to exercise, any administrative,
executive, judicial, legislative, police, regulatory or taxing authority or
power; or
(f) official
of any of the foregoing.
1.13 “Gross
Sales Price”
means
the greater of the gross sales price actually invoiced or collected by Assignee
for Products sold by Assignee or any Affiliate of Assignee, less all returns
and
credits, of such gross sales price.
1.14 “Intellectual
Property” or “IP”
shall
mean any and all copyrights, patents, patent applications, trademarks, or trade
secrets protectable by law from which the party asserting ownership has the
right to prevent others in its use, or require payment for its use.
1.15
“Licensee”
-
an
entity to whom a license has been granted
1.16 “Party”
and
“Parties”
shall
have the meaning set forth in the preface to this Agreement.
1.17 “Person”
-
an
individual, partnership, corporation, business trust, limited liability company,
limited liability partnership, joint stock company, trust, unincorporated
association, joint venture or other entity or a Governmental Body.
1.18 “Realm
of Use”
or
“Assignor’s
Use”
with
regard to the Assignor’s use of the Assigned Patents means the Assigned Patents
and use of the technology and intellectual property associated with the Assigned
Patents for all uses, including but not limited to (a) hydrogen
production applications (b) augmenting growth of microorganisms to collect
any
microbial by-products, including but not limited to hydrogen, antibiotics,
or
any chemical synthesis (c) bioremediation (d) apoptosis (e) nanotechnology,
(f)
biomems for all uses, including but not limited to medical uses, (g)
microfluidic devices for all uses, including but not limited to medical uses,
and (h) identification
and detection of over 32 different paraffin-eating and non-paraffin-eating
microorganisms, other than for the identification of Atypical Mycobacteria,
Tuberculosis, Mycobacterium Avium Intracellulare (MAI), Mycobacteria,
Paratuberculosis, Nocardia and Pseudomonas for disease diagnosis (unless
associated with biomems, microfluidic devices, or nanotechnology), (i) testing
for antimicrobial agent sensitivity of microorganisms including but not limited
to using such technology for controlling growth of undesirable microorganisms
in
a bioreactor and using such technology to test the efficacy of antibiotic
compounds or other compounds which may be collected as by-products from using
the Assigned Patents to identify and grow microorganisms, (j) any industrial
use
whatsoever; but excludes using the Assigned Patents and associated technology
and intellectual property for (1) the detection and identification of human
and
veterinary identification of Atypical Mycobacteria, Tuberculosis, Mycobacterium
Avium Intracellulare (MAI), Mycobacteria, Paratuberculosis, Nocardia and
Pseudomonas for disease identification test kits (unless associated with
biomems, microfluidic devices, or nanotechnology) and (2) selling test kits
or
providing diagnostic services in the field of health for determining the
antimicrobial agent sensitivity of microorganisms to ascertain which antibiotics
are efficacious against microorganisms in the field of health (unless associated
with biomems, microfluidic devices, or nanotechnology). Whereas the Field of
Use
and the Realm of Use both provide for certain uses within the area of health,
the Assignee, with regard to the Assigned Patents and all technology and
intellectual property associated with the Assigned Patents is limited to only
the uses within the areas of health that are specified in the Field of
Use.
4
1.19 “Representative”
-
with
respect to a particular Person, any director, officer, manager, employee, agent,
consultant, advisor, accountant, financial advisor, legal counsel or other
representative of that Person.
1.20 “Sublicense”
means
a
license giving rights of production or marketing of products or services, given
by the Licensee to a person or company that is not the primary holder of such
rights, which comprise rights to licensed patents, licensed technology and/or
licensed products and a “Sublicensee” shall mean any person, company or other
legal entity other than Licensee who has been granted by Licensee the rights
to
licensed patents, licensed technology and/or licensed products to make, use
or
sell the licensed product or licensed technology.
2.
Commencement
Date and Term.
2.1 This
Agreement shall be effective when all of the requirements and conditions
provided under Section 17.15
Closing
of Agreement and Conditions Thereto
are met
in which event, this Agreement shall be effective as of the date recited on
page
one as
the
Commencement Date of the Agreement as long as the Agreement has been agreed
upon
and executed by the Parties.
3.
Sale and
Transfer of Patents
3.1
Assignor shall transfer and assign to Assignee all of Assignor’s right, title
and interest to and any and all patent ownership interest Assignor may have
throughout the world, limited to the United States and those countries for
which
Assignor has obtained patent protection, which is further limited to unexpired
letters patent which have not been held invalid or unenforceable by a court
of
competent jurisdiction from which no appeal can be taken or has been taken
within the required time period, in and to the eleven Assigned Patents
identified in Exhibit A limited to use by Assignee within Assignee’s
Field of Use herein
referred to collectively as the “Assets.”
5
3.2 Assignee
shall be solely responsible for all actions and all costs whatsoever, including
attorney’s fees, arising after the Commencement Date and associated with the
perfection of rights, title, and interest in and to the Assigned Patents.
3.3 Assignee
shall be solely responsible for all actions and all costs whatsoever, including
attorney’s fees, arising after the Commencement Date and associated with the
continuous prosecution and the maintenance and enforcement of the Assigned
Patents, and Assignor shall have no obligation to pay any maintenance fees
which
become due for the Assigned Patents after the Commencement Date.
3.4 At
the
request and cost of the Assignee the Assignor shall assist the prosecution
of
any pending Assigned Patents application (“Application”) to grant and will
execute all such documents and do all such acts as may be necessary or proper
to
obtain the acceptance of the Application and for procuring the grant of a Patent
pursuant to Application. In the event that a foreign patent office or any other
competent government or administrative authority sends to either party an
objection, a query, or a request demanding further information, clarification
or
explanation, the Assignor shall render to the Assignee all information and
assistance within its power with a view to satisfying the State Intellectual
Property Office or any other competent authority that a patent shall issue
substantially in the form applied for.
3.5 In
the
event that the validity of the Assigned Patents and/or any patent granted
pursuant to the Application is challenged on any point upon which the Assignor
has or can procure information or advice which may assist in meeting and
defeating or reducing the effect of such challenge, the Assignor agrees and/or
undertakes to supply or procure the supply of such information and/or advice
without unreasonable delay but subject to the right to charge the Assignee
out-of-pocket expenses properly and reasonably incurred in pursuance of this
provision.
3.6 Upon
Assignee’s request, Assignor shall provide to Assignee copies of all reasonably
related research, documents, and notes possessed by Assignor, including, but
not
limited to, the findings of ▇▇. ▇▇▇▇ ▇▇▇▇▇ of Ohio State University. Assignee
shall keep such information confidential as provided in Article 16 and elsewhere
in this agreement.
6
4.
License
4.1 Subject
to the terms and conditions set forth in this Agreement, Assignee hereby grants
to Assignor an irrevocable, royalty-free, worldwide, exclusive license to the
Assigned Patents solely within the Realm of Use, to practice, make and use
the
inventions, ideas and information embodied therein, and to make, use, offer
to
sell, sell, sublease, lease or import products, services, processes, methods
and
materials embodying or deriving from the inventions, ideas and information
from
the Assigned Patents solely in the Realm of Use subsequent to the Closing Date.
As to any particular Assigned Patents, the term of such license shall continue
for the period of validity for such Assigned Patents.
4.2 All
improvements and enhancements to the Assigned Patents outside of the Field
of
Use or within the Realm of Use made, developed, created, invented or discovered
by Assignee, Assignor, Assignor Affiliates, Assignee Affiliates, and/or any
Licensee or Sublicensee shall belong to Assignor and/or Assignor
designates.
4.3. Assignee
hereby acknowledges and agrees that it shall, and shall cause its Affiliates
to,
execute or deliver any further instruments, information, explanations or
documents and take all such further action as may be necessary to grant to
Assignor the royalty-free licenses hereunder, to enable Assignor to practice,
make and use the invention, technology or ideas covered by the Assigned Patents,
limited to the Realm of Use, under the license in this Agreement, and for
Assignor to fully enjoy all of the rights and benefits to, the Assigned Patents
as provided in Article 4 of this Agreement, subject in each case to the
limitations herein described.
5. Consideration.
5.1 Assignee
agrees that at the closing of this Agreement, Assignee will pay the following
to
the Assignor in consideration for the transfer to Assignee of the Assets
outlined in Exhibit A as stated in the Patent Assignment Agreement:
(a)
4,593,170 shares of capital stock of Nanologix, Inc./Infectech,
Inc.
(b)
options on 1,000,000 shares of Nutra Pharma common stock as described in
5.2.
5.2 The
options granted by Assignee to Assignor in Section 5.1(b) shall grant Assignor
the right to purchase 1,000,000 shares of Nanologix common stock at a price
of
$0.20 per share and shall expire five (5) years from the date of this agreement.
Assignee shall, for a period of eighteen (18) months following this agreement,
have the right to buy back any unexercised options from Assignor at a price
of
$1.00 per share.
5.3 Assignee
further agrees to pay Assignor a Royalty Fee which shall be equal to the greater
of (a) the Minimum Royalty Fee, as described in Section 5.4, or (b) six percent
(6%) of the Gross Sales Price of all products and/or services sold by Assignee
or any of its Affiliates based upon, directly or indirectly, the Assigned
Patents, and/or any direct or indirect utilization of the Assets, or Assignor’s
IP within the Field of Use during the Term, and upon any products or services
sold by the Assignee within the Field of Use that are the result of the
improvement on or development of additional Intellectual Property developed
by
the Assignee based upon the Assigned Patents, the Assets, or Assignor’s IP,
within the Field of Use, including all products sold within the Field of Use
that include modifications, additions, enhancements and improvements to the
Assigned Patents, the Assets, or Assignor’s IP.
7
5.4 Assignee
shall pay to Assignor a Minimum Royalty Fee of $20,000 in the first calendar
year, $20,000 in the second calendar year, $40,000 in the third calendar year,
$80,000 in the fourth calendar year, and $160,000 in each calendar year after
that, through the termination of this Agreement.
5.5 The
Royalty Fee for payments actually received (or discounted in the case of
conditional contract sales and rentals) during each Calendar Quarter based
upon
invoiced sales will be paid to Assignor within sixty (60) days after the end
of
each Calendar Quarter, provided, however, that all Royalty Fees based upon
any
sales by a Licensee of Assignee or subcontractor (which also manufactures and
assembles) shall accrue in the Calendar Quarter the licensing or sublicensing
fees are received by Assignee, but shall accrue no later than the Calendar
Quarter immediately subsequent to the Calendar Quarter in which the relevant
sales were originally invoiced, regardless of whether Assignee has or has not
received payments from its licensee or subcontractor.
5.6 Royalty
Fee payments will be accompanied by account statements certified as accurate
and
complete by Assignee for each Calendar Quarter setting forth the amount of
invoiced sales, payments received and credits in the aggregate and separately
for each product by serial number to the extent possible. If Assignor has not
received any Royalty Fees payment within thirty (30) days of the date it is
due
and payable, Assignor may serve Assignee notice providing Assignee thirty (30)
days to correct such payment deficiency, with interest, or be considered in
breach of this Agreement.
5.7 Information
regarding the
gross
revenues for all projects, uses and applications of Assignee shall be made
available to the Assignor, with an indication made as to which utilized the
Assigned Patents, the Assets, or Assignor’s IP. Assignor shall be entitled to,
on reasonable notice to Assignee, examine the books and records of any and
all
sales of Assignee from time to time, and shall be entitled to an annual audit
of
said books and records, at the option and expense of Assignee. Assignor shall
be
provided with all information reasonably requested in order to verify the
indication as to whether the Assigned Patents, the Assets, or Assignor’s IP was
utilized or not as to all projects and all information regarding the details
and
supporting documentation of the revenues, projects, uses and applications.
Assignee shall make a written certification in form and substance acceptable
to
Assignor, delivered on a monthly basis to the parties by the 15th
day of
each month for the prior month’s uses, application and work of Assignor,
summarizing the information, validating its accuracy and stating the amount
of
royalties due to Assignor.
8
5.8
Royalties
to be Paid For License and Sublicenses. Assignee
shall pay Assignor an amount equal to six percent (6%) of the Gross Sales Price
of all products and/or services sold by anyone operating under a license or
sublicense from Assignee based upon, directly or indirectly, the
Assigned
Patents, the Assets, or
Assignor’s IP within the Field of Use. Assignee shall provide to Assignor the
same information and access to all records, reports and data regarding sales
resulting from Sublicenses as that set forth in Sections 5.6 and 5.7 and
otherwise in this Agreement. Assignee shall make payment and written
certification relating to all licenses, sublicenses and Royalty Fees in similar
form and substance to the certification required in Sections 5.5, 5.6, and
5.7.
6. Intellectual
Property Assets.
6.1 The
term
“Intellectual Property Assets” means the Intellectual Property owned by
Assignor solely
associated with the Assigned Patents listed in the attached Exhibit
A and
to be
used by the Assignee, solely and limited to uses specified in Assignee’s Field
of Use, including but not limited to the following:
| (i) |
the
name “IdentiKit”;
|
| (ii) |
all
know-how, trade secrets, confidential or proprietary information,
customer
lists, technical information, solely associated with the Assigned
Patents listed in the attached Exhibit A limited to within the Field
of
Use.
|
6.2 Intellectual
Property owned by Assignor to be excluded from use under the Agreement by the
Assignee, and to remain the property of Assignor after the closing includes
but
is not limited to the following:
|
(i)
|
any
use of the Assigned Patents within the Realm of Use.
|
| (ii) |
all
intellectual property described in the International License Agreement
to
be executed jointly with this Patent Transfer Agreement, including
all
intellectual property associated with Assignor’s Buffer
Products.
|
|
(iii)
|
all
rights of Assignor under this
Agreement
|
7. Intellectual
Property Rights.
7.1 Assignee
shall have the first right to file patent application(s) for any application
of
the patent(s) solely within the Field of Use in the United States or in
countries other than the United States (including, without limitation, through
the Patent Cooperation Treaty and/or the European Patent Office) and may, in
its
sole discretion, do so at Assignee’s sole cost and expense, for any applications
of the patents, within the Field of Use. Assignee
is
excluded from filing patent application(s), provisional, pending patent(s),
and
continuation patent(s) for patents utilizing Assignor’s IP, unless solely
limited to the Field of Use. Even if the aforementioned patent application(s)
use Assignee’s IP and any of Assignee’s patents obtained through execution of
the Patent Assignment Agreement, Assignee understands that Assignee cannot
file
the aforementioned patent application(s), claiming that they are based upon
the
assigned patent(s), unless the aforementioned application(s) are solely limited
to the Field of Use.
9
7.2 Assignor
will have the right to use any patent(s) issued therefrom, royalty-free, under
the same conditions as set forth in Section 4.1 of this Agreement, for uses
within the Realm of Use and Assignee is limited to uses within the Field of
Use.
Assignor shall cooperate with Assignee and timely provide to Assignee all
reasonably necessary assistance requested by Assignee in connection with any
such applications. Assignee, upon request by Assignor from time to time, shall
keep Assignor apprised of the status of all such applications, any pending
patent applications and patents issued therefrom.
8. Maintenance
Costs of Assigned Patents.
8.1
Assignee
shall diligently prosecute and maintain the United States and foreign patents
and patent applications comprising the Assigned Patents as listed in Exhibit
A.
Control over the prosecution of any patent application for the Assigned Patents
shall remain vested with Assignee. Assignee shall promptly pay all patent
maintenance fees, including attorney’s fees, on all patents assigned to Assignee
under this Agreement. Assignee shall continue to pay such expenses for so long
as and in the countries where the Assigned Patents remain in effect. Assignee
shall pay all such expenses in full within thirty days of invoice.
8.2
Under
the provisions of Section 8.1, Assignee shall promptly provide Assignor with
a
copy of all related invoices and notices of pending patent maintenance and/or
patent prosecution fees due within fifteen days of Assignee’s receipt of such
invoice or notice.
8.3
Assignee’s obligation to underwrite and to pay patent costs for the Assigned
Patents herein as specified in Section 8.1 of this Agreement shall continue
for
as long as specified in Section 8.1, provided, however, that Assignee may
terminate its obligations with respect to any given patent application or patent
assigned herein upon three (3) months written notice to Assignor. Assignor will
use its best efforts during the three (3) month period to minimize any
additional patent costs when such a notice is received from Assignee. Assignor
may continue prosecution and/or maintenance of such application(s) or patent(s)
at its sole discretion and expense; provided, however, that Assignee shall
have
no further right regarding such patent application or maintenance and the
Assigned Patent(s) which will revert to Assignor, including the inventions
or
discoveries disclosed therein, even within the Field of Use, which will also
revert to Assignor. In such an event of termination of Assignee’s obligations
stipulated in Sections
8.1 and 8.2,
Assignee
will expeditiously transfer the Patent Assignment(s) of the Assigned Patent(s)
back to Assignor at time of notice of nonpayment by Assignee.
10
9.
Closing
Location.
9.1 Subject
to the provisions of Section 17.15, Closing
of Agreement and Conditions Thereto,
the
patent assignment in this Agreement (the “Closing”) will take place at the Law
Offices of ▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ & Associates at ▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇, commencing at 10:00 a.m. (local time) on _______________, 2006.
10.
No
Representations or Warranties.
10.1 Except
for the warranty of title to the patents issued by the United States Patent
Office, Assignor makes no other representations or warranties, expressed or
implied, with respect to the Assignor IP. Among
other things, Assignor disclaims any express or implied warranty:
(a)
of
merchantability, of fitness for a particular purpose,
(b)
of non-infringement or
(c)
arising out of any course of dealing
Further,
with respect to the Assigned Patents, Assignor makes no representations or
warranties, expressed or implied, that such products and technology derived
from
the Assigned Patents can be used for other than Research Use Only by Assignee.
“Research Use Only” means research that is not-for profit, internal research, or
research that is for the purposes of evaluating use of the Products for
commercial purposes.
11. No
Joint Venture.
11.1 The
parties hereto acknowledge that nothing set forth in this Agreement nor the
transactions contemplated herein shall constitute a joint venture, partnership,
agency or any relationship other than Assignee as an assignee and Assignor
as an
assignor entitled to consideration as provided herein.
12. Indemnification.
12.1
Assignee
agrees to indemnify, and hold harmless Assignor, its officers, directors,
employees, agents, successors and permitted assigns (singularly or collectively,
the “Assignor Indemnified Parties”) from and against all liability, damage,
loss, or expense (including reasonable attorneys’ fees and expenses of
litigation) incurred by or imposed upon the Assignor Indemnified Parties or
any
one of them in connection with any claims, suits, actions, demands, or judgments
arising out of or connected with this Agreement. Assignor will promptly notify
Assignee of any claim and will cooperate with Assignee in the defense of the
claim. Assignee will, at its own expense, provide attorneys reasonably
acceptable to Assignor to defend against any claim with respect to which
Assignee has agreed to indemnify Assignor. This indemnity will not be
deemed excess coverage to any insurance or self-insurance Assignor may have
covering a claim. Assignee’s indemnity will not be limited by the amount
of Assignor’s insurance.
11
12.2 Survival.
The provisions of this clause will survive termination of this
Agreement.
13.
Documents.
13.1 Assignor
shall have caused the following documents to be delivered (or tendered subject
only to Closing) to Assignee subject to Section
17.15:
(a) Title
to
the Assigned Patents.
(b)
Such
other documents as Assignee may reasonably request for the purpose
of:
(i)
evidencing the accuracy of any of Assignor’s representations and warranties
subject to Article
10;
(ii)
otherwise facilitating the consummation of this Agreement.
13.2 Assignee
shall have caused the documents and instruments required by this Agreement
and
the following documents to be delivered (or tendered subject only to Closing)
to
Assignor:
| (a) |
the
certificates representing the
Shares;
|
| (b) |
duly
executed stock transfer powers, with signatures thereon guaranteed
in
a form satisfactory to Assignor’s transfer agent, to transfer the Shares
to Assignor’s
Treasury;
|
| (c) |
such
other documents as Assignor may reasonably request for the purpose
of
|
| (i) |
evidencing
the accuracy of any representation or warranty of Assignee,
|
|
(ii)
|
evidencing
the performance by Assignee of, or the compliance by Assignee with,
any
covenant or obligation required to be performed or complied with
by
Assignee.
|
12
14. Termination
Events.
14.1
By
notice
given prior to or at the Closing, this Agreement may be terminated as
follows:
(a) by
Assignee if a material Breach of any provision of this Agreement or the
International Licensing Agreement, executed concurrently with this Agreement,
has been committed by Assignor and such Breach has not been waived by
Assignee;
(b) by
Assignor if a material Breach of any provision of this Agreement or the
International Licensing Agreement, executed concurrently with this Agreement,
has been committed by Assignee and such Breach has not been waived by
Assignor;
(c) by
Assignor if any condition in Article 13 has not been satisfied as of the date
specified for Closing or if satisfaction of such a condition by such date is
or
becomes impossible (other than through the failure of Assignee to comply with
its obligations under this Agreement), and Assignor has not waived such
condition on or before such date;
(d) by
Assignee if any condition in Article 13 has not been satisfied as of the date
specified for Closing or if satisfaction of such a condition by such date is
or
becomes impossible (other than through the failure of Assignor to comply with
its obligations under this Agreement), and Assignee has not waived such
condition on or before such date;
(e) by
mutual
consent of Assignor and Assignee.
14.2 Assignor
may terminate this Agreement upon Assignee’s material breach of this Agreement
or the International Licensing
Agreement, executed concurrently with this Agreement, that
is
not remedied within thirty (30) days after receipt of Assignor’s written notice
of such breach;
14.3 Assignee
may terminate this Agreement upon Assignor’s material breach of this Agreement
or the International Licensing
Agreement, executed concurrently with this Agreement,
that is
not remedied within thirty (30) days after Assignor’s receipt of written notice
of such breach.
13
15.
Effect
of Termination.
15.1 Each
party’s right of termination is in addition to any other rights it may have
under this Agreement or otherwise, and the exercise of such right of termination
will not be an election of remedies. If this Agreement is terminated pursuant
to
Article
14,
all
obligations of the parties under this Agreement will terminate, except that
the
obligations of the parties in Article
15, Effect of Termination; and Article 12, Indemnification;
will
survive, provided, however, that, if this Agreement is terminated because of
a
Breach of this Agreement by the nonterminating party or because one or more
of
the conditions to the terminating party’s obligations under this Agreement is
not satisfied as a result of the party’s failure to comply with its obligations
under this Agreement, the terminating party’s right to pursue all legal remedies
will survive such termination unimpaired.
15.2 Upon
termination of this Agreement, all Assigned Patents and rights granted to
Assignee under this Agreement will revert to Assignor free and clear of any
lien, security interest or other encumbrance, and at
Assignor's request to Assignee, Assignee and its Affiliates and Sublicensees
must immediately comply with Assignor's request to cease the manufacture,
assembly, distribution, sale, promotion, advertising and marketing of products
utilizing the IP associated with the Assigned Patents, and further, if so
requested by Assignor, provide a smooth transfer to Assignor of the
manufacture, assembly, distribution, contracts, sale, promotion, advertising
and
marketing of products utilizing the IP associated with the Assigned
Patents.
15.3 If
this
Agreement is rightfully terminated under Section 14.3, Assignee
shall receive any unexercised options of Nutra Pharma common stock granted
to
Assignor in Section 5.2 as well as the number of shares of capital stock of
Nanologix Inc./Infectech calculated
as follows: the number of restricted shares equal in value as of the date of
termination to the dollar value of the 4,593,170 shares as of the Commencement
Date, reduced by the product of 1/10th of that total value times the number
of
whole years between the Commencement Date and the date of termination, but
not
to exceed 4,593,170 total restricted shares.
16.
Confidentiality.
16.1 Except
as
otherwise agreed in writing, Assignee shall not appropriate, use or disclose,
directly or indirectly, for its own benefit or otherwise, any information,
materials, trade secrets, documents, correspondence, or other tangible or
intangible property ( the “Confidential Information”) of Assignor, to which it
shall have obtained access hereunder or in contemplation of this Agreement,
or
which shall otherwise in any way shall relate to the Assignor IP or the subject
matter of this Agreement, which has not been publicly disclosed prior thereto.
Any of the aforesaid which is or comes into the possession of Assignee shall
be
held IN TRUST for Assignor and remain the sole and exclusive property of
Assignor, subject to the rights of Assignee as provided herein.
14
16.2 Unless
and until this Agreement is terminated, Assignor shall maintain as confidential
any Confidential Information of the Assignor relating to any of the Assigned
Patents solely in the Field of Use, but this stipulation expires upon expiration
of the International License Agreement to be executed jointly with this
Agreement.
16.3 The
provisions of this Article 16
shall
survive the termination of this Agreement. Further, the parties agree that
there
do no exist adequate remedies at law for a violation of this Paragraph and
therefore, in addition to monetary and other damages, which may be recovered
for
a breach hereof that Assignor shall be entitled to and may obtain injunctive
and
other equitable and extraordinary relief and remedies for any such
breach.
16.4 Each
Party acknowledges the confidential and proprietary nature of the Confidential
Information of the disclosing Party and agrees that such Confidential
Information (i) shall be kept confidential by the receiving Party; (ii) shall
not be used for any reason or purpose other than to evaluate and consummate
the
Contemplated Transactions; and (iii) without limiting the foregoing, shall
not
be disclosed by the receiving Party to any Person, except in each case as
otherwise expressly permitted by the terms of this Agreement or with the prior
written consent of an authorized Representative of Assignor with respect to
Confidential Information of Assignor or an authorized Representative of Assignee
with respect to Confidential Information of Assignee.
16.5 If
a
Party becomes compelled in any Proceeding or is requested by a Governmental
Body
having regulatory jurisdiction over the Contemplated Transactions to make any
disclosure that is prohibited or otherwise constrained by this Article, that
Party shall provide the disclosing Party with prompt notice of such compulsion
or request and compliance with the provisions of this Article
16
will be
waived for this purpose.
17.
General
Provisions.
17.1 Notices.
Any
notices or other communications required or permitted to be given or delivered
under this Agreement shall be provided by email (provided that (i) the sender’s
computer system is capable of retaining and does retain a record establishing
that the email message was actually delivered to the recipient’s email server,
and (ii) that such email is accompanied by a facsimile communication (not
requiring telephonic voice confirmation)), or in writing (including facsimile
communication), which shall be sufficiently given if delivered personally,
mailed by certified first-class United States mail, postage prepaid, or sent
via
reputable overnight delivery courier or any other means for which a proof of
delivery is provided. Notices shall be sent to a Party at its address as set
forth below, or to such other address as has been designated by the other Party
in accordance with this
Section 17.1.
Any
notice by fax shall be deemed given when telephonic (voice) confirmation of
receipt is received, and any other notices shall be deemed given on the date
delivered or five (5) days after being placed in the mails as
specified.
15
For
Assignee:
▇▇▇▇
▇▇▇▇
▇▇▇▇▇ ▇▇▇▇
▇▇▇▇▇▇▇
▇▇▇▇▇, ▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention:
President
and
c/▇
▇▇▇▇▇▇▇ & Company
▇▇▇▇▇
▇▇▇▇▇▇▇ ▇▇▇▇., ▇▇▇▇▇ ▇▇▇ ▇▇▇▇
▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention:
▇▇▇▇▇▇▇ ▇▇▇▇▇▇▇
with
a
copy to:
▇▇▇▇
▇▇▇▇▇▇▇ LLP
1999
Avenue of the Stars, ▇▇▇▇▇ ▇▇▇▇
▇▇▇
▇▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention:
▇▇▇▇▇ ▇. ▇▇▇▇▇▇
For
Assignor:
NanoLogix,
Inc.
▇▇
▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇ ▇
▇▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇
Attention:
▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
with
a
copy to:
Atty
▇▇▇▇▇▇▇ ▇. ▇▇▇▇▇▇▇▇ and Associates
▇▇▇▇
▇▇▇▇▇▇▇▇▇▇
▇▇▇▇▇▇▇▇▇▇,
▇▇ ▇▇▇▇▇
Phone:
▇▇▇.▇▇▇.▇▇▇▇
Fax:
▇▇▇.▇▇▇.▇▇▇▇
17.2 Successors
and Assigns.
This
Agreement shall be binding on and enure to the benefit of the successors and
assigns of both parties hereto and all persons or corporations succeeding to
or
acquiring the business now carried on by Assignor or Assignee.
16
17.3 Waiver.
The
waiver by either Party to insist upon strict compliance with this Agreement
or
to exercise any right or remedy hereunder shall not constitute a waiver of
the
right of said party to insist upon strict compliance with this Agreement or
to
exercise any rights or remedies provided herein at any other time or under
the
same or similar circumstances.
17.4
Severability.
Should
any term or provision of this Agreement be declared invalid or unenforceable
in
whole or in part by a court of competent jurisdiction, then this Agreement
shall
be construed and interpreted as if said term or provision were not included
herein, however all other terms and provisions hereof shall remain valid and
enforceable and the application of such invalid or unenforceable terms and
provisions to parties unaffected by such determination to the fullest extent
permitted by law.
17.5 Governing
Law; Jurisdiction and Venue.
The
parties agree that this Agreement will be construed and enforced pursuant to
the
laws of the Commonwealth of Pennsylvania, and venue and jurisdiction will lie
within said Commonwealth, subject to the arbitration provisions set forth
herein, notwithstanding the principles of conflicts of laws.
17.6 Arbitration.
The
parties hereby agree that any dispute, claim or controversy arising out of
the
construction, interpretation or application of this Agreement and its provisions
shall be decided by mandatory arbitration conducted under the Rules of the
American Arbitration Association to be decided in Pittsburgh, Pennsylvania.
Enforcement and collection of any award made hereunder, however, shall be
available to the prevailing party in any court of competent jurisdiction.
17.7 Counterparts.
This
Agreement may be executed in one or more counterparts as the parties shall
deem
desirable, each of which shall be deemed an original, but all of which shall
constitute the same instrument, however, in any action to enforce or with regard
to this Agreement, it shall not be necessary to produce all such
counterparts.
17.8 Force
Majeure.
Neither
Party shall be liable for any default or delay in the performance of its
obligations hereunder to the extent such default or delay is caused, directly
or
indirectly, by fire, flood, earthquake, elements of nature, or Acts of God;
acts
of war, terrorism, riots, civil disorders, rebellions, or revolutions; strikes,
lockouts, or labor difficulties; or any other similar cause beyond the
reasonable control of such Party (a “Force
Majeure Event”).
These
delays shall not constitute a breach of this Agreement and the non-performing
Party will be excused from any further performance or observance to the
obligations so affected by the Force Majeure Event for as long as the Force
Majeure Event exists and such Party continues to use its best efforts to
recommence performance or observance whenever and to whatever extent possible
without delay. Any Party so delayed in its performance will immediately notify
the other Party by telephone (confirmed in writing within two (2) business
days
of the inception of such delay).
17.9 Further
Assurances.
Each
Party hereto agrees to cooperate with the other to execute any and all documents
or instruments, or to obtain any consents, in order to assign, transfer,
perfect, record, maintain, enforce or otherwise carry out the intent and
purposes of the terms of this Agreement.
17
17.10 Entire
Agreement; Headings.
This
Agreement, including
all exhibits and/or schedules attached hereto,
together with the International License Agreement completely and exclusively
states the agreement of the Parties regarding its subject matter. It supersedes,
and its terms govern, all prior or contemporaneous proposals, agreements or
other communications between the Parties, oral or written, regarding such
subject matter. Titles and captions are used for convenience of reference only
and do not constitute a part of the Agreement or limit, expand or construe
its
terms. This Agreement will not be modified except by a subsequently dated
written amendment signed on behalf of each Party by its duly authorized
Representatives.
17.11 Principles
of Construction.
All
references to this Agreement shall be deemed to include the exhibits, schedules
and other attachments. All references to sections are to the sections herein
and
all references to exhibits and/or schedules, are to the exhibits and/or
schedules which are attached hereto and made a part hereof, as if fully set
forth herein. The words “hereof,”
“herein”
and
“hereunder”
and
words of similar import when used in this Agreement shall refer to this
Agreement as a whole and not to any particular provision of this
Agreement.
17.12 Negotiation
and Drafting.
The
Parties have participated jointly in the negotiation and drafting of this
Agreement. In the event an ambiguity or question of intent or interpretation
arises, this Agreement (and any applicable or relevant provision) shall be
construed as if jointly drafted by the Parties, and no presumption or burden
of
proof shall arise favoring or disfavoring any one Party by virtue of the
authorship of any of the provisions of this Agreement.
17.13 Use
of Marks.
Assignor may not use any trademarks of Assignee or its Affiliates without the
prior express written permission of Assignee. Assignee may not use any
trademarks of Assignor without the prior express written permission of Assignor
or unless usage of such specific trademark is granted in this Agreement or
in
the International License Agreement which must be jointly executed with this
Agreement.
17.14 Assignee
Due Diligence.
Assignee has had full disclosure and had opportunity to do due diligence to
the
extent it determined to be necessary and reasonable in regard to the Assignor’s
patent base, products, technology, and business. Assignee is familiar with
Assignor’s efforts and difficulties concerning said business and Assignee
acknowledged that Assignor had made no representation as to the operation of
said business other than is contained herein.
Assignee
acknowledges that Assignor shall have no liability in regard to Assignee's
success or failure of the anticipated sales contemplated by Assignee in
utilizing the Assigned Patents under the Agreement.
18
17.15 Closing
of Agreement and Conditions Thereto.
This
Agreement becoming binding and effective by the Parties is subject to final
approval by a majority vote by the Assignor’s Board of Directors. At
the
option of either party, this Agreement may be declared null and void if not
ratified by a majority of shareholders within ninety after closing.
Further, this Agreement will not be binding upon the Parties until it has been
signed below on behalf of each Party, the corresponding International License
Agreement has also been signed on behalf of each Party and is effective, and
transfer of ownership shall have been made by Assignee of
4,593,170 shares of capital stock of Nanologix, Inc./Infectech, Inc to the
Assignor. These aforementioned provisions in accordance
with Section 17.15
being
met, this Agreement shall be effective as of the date recited on page one.
However, if any of the stipulations specified herein in Section
17.15
are not
met within 60 (sixty) days of the Parties signing this Agreement, this Agreement
will be declared null and void without penalty to either Party. Signatures
of the parties transmitted by facsimile shall be deemed to be their original
signatures for all purposes.
17.16 Amendment
of Agreement.
None of
the terms, conditions or provisions of this Agreement shall be held to have
been
changed, waived, varied, modified or altered by any act or knowledge of either
party hereto, their respective agents servants or employees unless done so
in
writing signed by both parties hereto.
17.17 Bankruptcy.
All rights granted to Assignee and Assignor under or pursuant to this Agreement,
under any section of this Agreement, are and shall otherwise be deemed to
be rights to “intellectual property” as defined in the Bankruptcy Code. The
Parties agree that Assignee, as the purchaser of such rights under this
Agreement, shall retain and may fully exercise all of its rights limited to
the
Field of Use, as defined in this Agreement, under the Bankruptcy Code, and
that
Assignor shall retain all of its rights limited to the Realm of Use under the
Bankruptcy Code. Further, the Parties agree that, in the event of the
commencement of bankruptcy proceedings by or against Assignor or Assignee under
the Bankruptcy Code, Assignee shall be entitled to retain all of its rights
under Section 3.1 of this Agreement and Assignor shall be entitled to retain
all
of its rights granted under Article 4 of this Agreement.
17.18 Public
Statements. The
Parties shall, in good faith, coordinate with each other before issuing any
press release or otherwise making any public statements with respect to this
Agreement or the transactions contemplated by this Agreement. Said
coordination shall consist of 24 hours prior notice to all Parties of all press
releases or public statements related, directly or indirectly, to this
Agreement, or
which
mentions the other Party, except where the time period includes a Saturday
or
Sunday, in which case the time period shall be extended to 48 hours.
Further, the Parties agree to work in mutual cooperation, and to consider,
in
good faith, the responses of the other Party, with respect to the language
and timing of the statements.
17.19 Expenses.
Except
as
otherwise provided in this Agreement, each party to this Agreement will bear
its
respective fees and expenses incurred in connection with the preparation,
negotiation, execution and performance of this Agreement and the Contemplated
Transactions, including all fees and expense of its Representatives.
19
17.20 Waiver;
Remedies Cumulative.
The
rights
and remedies of the parties to this Agreement are cumulative and not
alternative. Neither any failure nor any delay by any party in exercising any
right, power or privilege under this Agreement or any of the documents referred
to in this Agreement will operate as a waiver of such right, power or privilege,
and no single or partial exercise of any such right, power or privilege will
preclude any other or further exercise of such right, power or privilege or
the
exercise of any other right, power or privilege. To the maximum extent permitted
by applicable law, (a) no claim or right arising out of this Agreement or any
of
the documents referred to in this Agreement can be discharged by one party,
in
whole or in part, by a waiver or renunciation of the claim or right unless
in
writing signed by the other party; (b) no waiver that may be given by a party
will be applicable except in the specific instance for which it is given; and
(c) no notice to or demand on one party will be deemed to be a waiver of any
obligation of that party or of the right of the party giving such notice or
demand to take further action without notice or demand as provided in this
Agreement or the documents referred to in this Agreement.
17.21 Entire
Understanding.
This
Agreement embodies the entire understanding of the parties and shall supersede
all previous communications, representations or understandings, either oral
or
written, between the parties relating to the subject matter
hereof
IN
WITNESS WHEREOF, the parties have executed this Agreement as of the date first
written above.
|
Assignee:
By:
Name:
Title:
|
||
|
Assignor:
NANOLOGIX,
INC.
By:
Name:
Title:
|
20
EXHIBIT
A
Assigned
Patents
Assigned
Patents.
|
Patent
#
|
Patent
Description
|
|
|
#5,989,902
|
Method
for determining the antimicrobial agent sensitivity of a
nonparaffinophilic hydrophobic microorganism and an associated apparatus
|
|
|
#5,981,210
|
Method
for determining a presence or absence of a nonparaffinophilic hydrophobic
microorganism in a body specimen by using a DNA extraction procedure
and a
novel DNA extraction procedure
|
|
|
#5,935,806
|
Method
and apparatus for speciating and identifying MAI (Mycobacterium Avium
Intracellulare) and testing the same for antibiotic sensitivity
|
|
|
#5,882,920
|
Apparatus
for determining the presence or absence of a paraffinophilic microorganism
|
|
|
#5,854,014
|
Apparatus
for testing paraffinophilic microorganisms for antimicrobial sensitivity
|
|
|
#5,846,760
|
Method
for determining a presence or absence of a nonparaffinophilic hydrophobic
microorganism in a body specimen and an associated kit
|
|
|
#5,776,722
|
Method
of testing a body specimen taken from a patient for the presence
or
absence of a microorganism a further associated method and associated
apparatus
|
|
|
#5,569,592
|
Apparatus
for testing MAI (Mycobacterium Avium Intracellulare) for antimicrobial
agent sensitivity
|
|
|
#5,472,877
|
Apparatus
for determining the presence or absence of MAI (Mycobacterium Avium
Intracellulare)
|
|
|
#5,316,918
|
Method
and apparatus for testing MAI (Mycobacterium Avium Intracellulare)
for
antimicrobial agent sensitivity
|
|
|
#5,153,119
|
Method
for speciating and identifying MAI (Mycobacterium Avium Intracellulare)
|
21