EXCLUSIVE LICENSE AND ASSIGNMENT AGREEMENT
EXHIBIT 10.1
This Exclusive License and
Assignment Agreement (“Agreement”) is made in Jerusalem
this 1st
day of March 2019, by and between:
YISSUM RESEARCH DEVELOPMENT COMPANY OF THE HEBREW UNIVERSITY OF
JERUSALEM, LTD., of Hi Tech Park, ▇▇▇▇▇▇ ▇. ▇▇▇▇▇ ▇▇▇▇▇▇,
▇▇▇▇▇ ▇▇▇, ▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, Israel (“Yissum”) of the first part; and
WEED, INC., a company
incorporated under the laws of the State of Nevada and having a
business address at ▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇, ▇▇▇▇▇▇, ▇▇▇▇▇▇▇, ▇.▇.▇. ▇▇▇▇▇ (the
“Company”), of
the second part (each of Yissum, and the Company, a
“Party”, and
collectively the “Parties”)
WHEREAS:
Yissum is the sole
owner of certain platform technologies relating to different
formulations for administration and delivery of lipophilic
compositions, (including cannabinoids) (collectively, the
“Existing
Technology”) invented and/or developed by ▇▇▇▇. ▇▇▇▇
▇▇▇▇▇▇▇ (the “Researcher”) at the University (as
defined in Section 1 below) as more fully described in the patent
applications and/or patents listed in Appendix A hereto (collectively, the
“Existing
Patents”); and of the Know-How (as defined below);
and
WHEREAS:
the Researcher has
assigned all of her rights in the Technology (as defined in Section
1 below) to Yissum; and
WHEREAS:
the Company is a
public company operating in the field of cannabis and
cannabis-related products whose shares of common stock are traded
on the OTC Exchange; and
WHEREAS:
the Company wishes
to acquire, and Yissum wishes to sell to the Company, all right,
title and interest in and to the Technology and until the
fulfilment of certain conditions for the consummation of such sale
and assignment, the Company wishes to receive an exclusive license
to the Technology, and Yissum desires to grant to the Company an
exclusive license to use the Technology, all subject to, and in
accordance with, the terms and conditions of this
Agreement.
NOW THEREFORE THE PARTIES DO HEREBY AGREE AS FOLLOWS:
1.
Interpretation
and Definitions
1.1.
The preamble and
appendices to this Agreement constitute an integral part hereof and
shall be read jointly with its terms and conditions.
1.2.
In this Agreement,
unless otherwise required or indicated by the context, the singular
shall include the plural and vice-versa, the masculine gender shall
include the female gender, “including” or
“includes” shall mean including, without limiting the
generality of any description preceding such terms, the use of the
term “or” shall mean “and/or”; any
reference to any Laws herein will be construed as referring to such
Laws as from time to time enacted, repealed or amended, any
reference herein to any person will be construed to include the
person’s permitted successors and assigns and any reference
to the term “sale” of a product or service shall
include sale, lease, rental, or other disposal of the applicable
product or service.
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1.3.
The headings of the
Sections in this Agreement are for the sake of convenience only and
shall not serve in the interpretation of the
Agreement.
1.4.
In this Agreement,
the following capitalized terms shall have the meanings appearing
alongside them, unless provided otherwise:
1.4.1.
“Affiliate” of a Party shall mean
any Person which controls, or is controlled by, or is under common
control with, such Party, but only for so long as such control
exists. “Control” shall mean (i) the
holding of more than fifty percent (50%) of (a) the equity, or (b)
the voting rights of such entity, or (ii) the right to elect or
appoint more than fifty percent (50%) of the directors of such
entity.
1.4.2.
“Assignment” shall have the meaning
set forth in Section 2.2 below.
1.4.3.
“Assignment Date” shall have the
meaning set forth in Section 6.1 below.
1.4.4.
“Closing” shall have the meaning
set forth in Section 4.1 below.
1.4.5.
“Closing Date” shall have the
meaning set forth in Section 4.1 below.
1.4.6.
“Effective Date” shall mean the
date of the last signature by the Parties of this
Agreement.
1.4.7.
“First Commercial Sale” shall mean,
with respect to any Product, the first commercial sale of the
Product in any country in the world after the applicable Regulatory
Approval has been obtained or, when Regulatory Approval is not
required, the first commercial sale of the Product in any country
in the world. For clarity, it is agreed that the use of a Product
for testing purposes and/or a sale for experimental, promotional,
compassionate or test market purposes or for any other similar
non-commercial purposes shall not be considered a sale for the
purposes of this definition.
1.4.8.
“Know-How” shall mean any
non-public, proprietary, tangible or intangible information,
techniques, technology, practices, trade secrets, inventions,
methods, processes, procedures, assays, knowledge, materials,
substances, formulations, compositions, compounds, data, reports,
records, results or devices (whether patentable or not), and all
tangible embodiments of any of the foregoing in written, electronic
or other form or media), developed by the Researcher, prior to the
Effective Date, solely and directly or indirectly covered, in whole
or in part, by the subject matter claimed in the Patents, and
belonging to Yissum and described generally in Appendix B.
1.4.9.
“Governmental Authority”
shall mean any national, state, local, municipal or other
government, governmental or quasi-governmental authority of any
nature (including any governmental agency, branch, ministry,
department, Regulatory Authority, court or other
tribunal).
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1.4.10.
“Gross Revenue” shall mean the
total revenue and other monetary consideration received by the
Company or its Affiliates from the commercialization of the
Technology and/or Products, including from the sale of Products
and/or any right, license or sublicense granted by the Company or
its Affiliates to any Third Party to manufacture, market, sell or
distribute any Product and/or the Technology; including (i)
one-time, lump sum or other payments (including milestone payments,
license fees, and license option fees); and (ii) royalties on sales
of Products by any licensees or sublicensees except: (1) funds
specifically allocated for research or development at the Company
or its Affiliates of a Product, as can be shown by a documented
research or development program and budget; (2) amounts received by
the Company or its Affiliates from a sublicensee as reimbursement
of documented, out-of-pocket costs incurred by the Company or its
Affiliates (as applicable) for patent activities relating to the
Technology and/or patent activities related to other technology and
patents required for the production and sale of Products; (3)
equity investments in the Company or its Affiliates by licensees or
sublicensees made at arm’s length and at or below market
value (with any premium over fair market value being considered
Gross Revenues); and less the
following:
(a)
value added taxes (including sales taxes), customs, duties, import,
export, excise taxes and other similar governmental charges or
taxes, paid by or on behalf of the Company or its
Affiliates;
(b)
customary trade, quantity, or cash discounts to the extent actually
allowed and taken; and
(c)
amounts repaid or credited by reason of rejection or
return.
1.4.11.
“IP Assignment Fee” shall have the
meaning set forth in Section 3.2 below.
1.4.12.
“Law” or “Laws” shall mean any federal, state,
provincial, local, international or multinational law, statute,
standard, ordinance, code, rule, regulation, resolution or
promulgation, or any order, writ, judgment, injunction, decree,
stipulation, ruling, determination or award entered by or with any
Governmental Authority, or any license, franchise, permit or
similar right granted under any of the foregoing, or any similar
provision having the force or effect of law.
1.4.13.
“License” shall have the meaning
set forth in Section 2.1 below.
1.4.14.
“License Fee” shall have the
meaning set forth in Section 3.1 below.
1.4.15.
“Pharmaceutical Product(s)” shall
mean any Product comprising a medicine or drug (i) that is used for
prophylactic, curative, palliative or diagnostic purposes in
humans; and (ii) the sale or marketing of which in any jurisdiction
requires a Regulatory Approval.
1.4.16.
“Patents” shall mean (i)
the Existing Patents,
and any patent application that claims priority therefrom; as well
as (ii) all divisions, continuations, continuations-in-part,
re-examinations, reissues, renewals, registrations, confirmations,
substitutions, or extensions, including European Supplementary
Protection Certificates (“SPCs”) (within the meaning of
such term under Council Regulation (EU) No. 1768/92), and/or any
other similar statutory protection, and any provisional
applications, national, regional, PCT or similar applications and
any and all patents issuing from, and patentable inventions,
methods, processes, and other subject matter disclosed or claimed
in, any or all of the foregoing.
1.4.17.
“Person” shall mean any individual,
partnership, joint venture, limited liability company, corporation,
firm, trust, association, unincorporated organization, Governmental
Authority or any other entity.
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1.4.18.
“Product(s)” shall mean any
product, system, device, material, method, process or service, the
development, manufacture, provision or sale of which, in whole or
in part, (i) uses, exploits, comprises, contains, improves upon or
incorporates the Technology or any part thereof, or is otherwise
covered thereby, or falls within the scope thereof, in whole or in
part; or (ii) would infringe any claim of a Patent (but for the
License or the Assignment (as applicable)).
1.4.19.
“Regulatory Authority” shall mean
the United States Food and Drug Administration (FDA), the European
Medicines Agency (EMA), or its counterpart in any foreign
jurisdiction.
1.4.20.
“Regulatory
Approval” shall mean any and all approvals,
registrations, or authorizations of any Regulatory Authority that
are necessary for the marketing and/or sale of a particular Product
in the applicable jurisdiction.
1.4.21.
“Representatives” shall mean
employees, researchers, officers, agents, subcontractors, service
providers, consultants, and/or any other Person acting on a
Party’s behalf
.
1.4.22.
“Technology” shall mean the Patents
and the Know-How.
1.4.23.
“Term” shall have the meaning set
forth in Section 12.1 below.
1.4.24.
“Third Party” shall mean any Person other
than Yissum, the University, the Company or their respective
Affiliates.
1.4.25.
“University” shall mean the Hebrew
University of Jerusalem and each of its branches.
2.
The
Transactions
2.1.
License. In exchange for the
consideration set forth in Section 3.1 below, on the Closing,
Yissum shall grant to the Company, and the Company shall accept
from Yissum, a worldwide, perpetual (subject to the termination
sections in this Agreement), exclusive and sublicensable license to
commercialize or otherwise exploit the Technology to research,
develop, make, have made, use, sell, offer for sale, import, export
or distribute Products (the “License”).
For
clarity, subject to the Closing, Yissum and/or the University shall
not retain any rights to conduct any research (including internal
non-commercial research) with respect to the Technology or
otherwise use or exploit the Technology for any purposes
whatsoever.
In
addition, any liabilities incurred by Yissum with respect to the
Technology prior to the grant of the License and the Closing Date
shall remain liabilities of Yissum.
2.2.
Assignment. In exchange for the
consideration set forth in Section 3.2 below, on the Assignment
Date (as defined in Section 6.1 below), Yissum shall irrevocably
assign, convey and deliver to the Company, and the Company shall
acquire and accept all right, title and interest of Yissum in and
to and under the Technology (the “Assignment”) and such Assignment
shall replace and supersede the License granted to the Company
pursuant to Section 2.1.
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The
Parties agree that the Assignment shall include (i) all rights of
Yissum to perform research with respect to, and develop,
manufacture, market, distribute, sell and otherwise exploit and/or
commercialize the Technology and/or the Products; and (ii) all
rights of enforcement with respect to the Technology including any
and all rights worldwide to ▇▇▇ for the infringement or the past
infringement or unauthorized use thereof and the recovery of
damages or royalties related thereto.
2.3.
In order to
effectuate the Assignment of the Technology, on the Assignment
Date, the Parties shall, and if required Yissum shall cause the
Researcher and members of her team to, duly execute and deliver any
assignment agreements, bills of sale and other documents as
reasonably required by their respective counsel to carry out and
perfect the Assignment pursuant hereto.
3.
Consideration
3.1.
In full and final
consideration for the grant of the License, the Company shall pay
Yissum an irrevocable, non-creditable, and non-refundable one-time
fee in the amount of one million U.S. dollars (US $1,000,000) (the
“License Fee”),
payable according to the following schedule:
|
Date
|
Amount
|
|
|
Within three (3)
business days of the Effective Date
|
One
hundred thousand U.S. dollars (US $100,000)
|
First
installment
|
|
Closing
Date
|
Four
hundred thousand U.S. dollars (US $400,000)
|
Second
installment
|
|
Within the
earlier of (i) nine (9) months of the Closing Date or (ii) on or
before 31 December 2019
|
Five
hundred thousand U.S. dollars (US $500,000)
|
Third
installment
|
3.2.
In full and final
consideration for the performance in full by Yissum of the
Assignment and all of its undertakings hereunder:
(i)
the Company shall
pay or transfer to Yissum an irrevocable, non-creditable, and
non-refundable one-time fee of one million U.S. dollars (US
$1,000,000), in two installments as follows; (i) three hundred
thousand U.S. dollars (US $300,000) within fifteen (15) months of
the Closing Date; and (ii) seven hundred thousand U.S. dollars (US
$700,000), within eighteen (18) months of the Closing Date (the
“IP Assignment
Fee”), provided, however that the IP Assignment Fee
shall not be irrevocable, non-creditable and non-refundable until
the consummation of the Assignment pursuant to Section 6 below;
and
(ii)
the Company shall
pay a one-time fee to Yissum and the Researcher (through Yissum on
behalf of the Researcher) in the amount of one million five hundred
thousand U.S. dollars (US $1,500,000) (the “Milestone Payment”) upon the
occurrence of the earlier of the following events (the
“Milestone
Event”):
(a)
the First
Commercial Sale of any Pharmaceutical Product by the Company, or
any of its Affiliates, licensees or sublicensees; or
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(b)
the later of: (1)
the First Commercial Sale of any Product (other than a
Pharmaceutical Product) by the Company, or any of its Affiliates,
licensees or sublicensees; and (2) the Company or its Affiliates
receive Gross Revenue in an aggregate, cumulative amount of at
least one million five hundred thousand U.S. dollars (US
$1,500,000).
The
Company shall notify Yissum in writing as soon as practicable upon
becoming aware of the occurrence of the Milestone Event and shall
make payment of the Milestone Payment to Yissum (on its behalf and
on behalf of the Researcher, respectively) within forty-five (45)
days after the occurrence of the Milestone Event.
3.3.
Subject to Sections
3.4 and 3.5 below, each Party and the Researcher (as applicable)
shall be responsible for the payment of any and all of its or her
respective tax obligations or brokerage fees associated with the
payment of the License Fee, IP Assignment Fee and Milestone
Payment, as contemplated hereunder.
3.4.
The above
consideration excludes value added tax (“VAT”), if applicable. Any VAT (if
any) applicable to the payment of the License Fee, IP Transfer Fee
or the Milestone Payment as provided in this Section 3 above, shall
be borne by the Company and added to each payment, and/or paid to
Yissum, in accordance with the statutory rate in force at such
time, subject to provision of a proper invoice.
3.5.
If the Company is
required by applicable Law to make any tax deduction, tax
withholding or other similar payment from any amount paid or
payable by the Company hereunder, on account of income tax, tax on
profit or any other taxes of similar nature (“Withholding Tax”), then the
Company shall: (i) deduct such Withholding Tax from such payments,
as prescribed by applicable Law, or at the reduced rate under the
applicable double taxation treaty; (ii) pay such Withholding Tax to
the proper taxation authority; and furnish Yissum with a
certificate or other evidence of the deduction and payment thereof,
unless Yissum has provided the Company with a certificate of
exemption from such Withholding Tax.
4.
Closing
4.1.
The grant of the
License, the transfer to the Company of the responsibility for the
administration and control of patent activities and for the Patent
Expenses pursuant to Section 9.1 and the payment of the second
installment of the License Fee by electronic transfer (the
“Closing”),
shall take place, on 1 May, 2019 or such other time as the Parties
shall mutually agree upon in writing (the “Closing Date”).
4.2.
The obligation of
the Company to pay the second installment of the License Fee as
provided herein, shall be conditioned upon (a) the completion of
all of the transactions described in Section 4.4 below; (b) all of
the representations and warranties made by Yissum herein being true
and correct when made and being true and correct in all material
respects on and as of the Closing Date as though made on the
Closing Date, and (c) Yissum having performed all obligations
required of Yissum under this Agreement to be performed by it on or
before the Closing.
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4.3.
The obligation of
Yissum to grant the License as provided herein shall be conditioned
upon (a) the completion of all of the transactions described in
Section 4.4 below; (b) all of the representations and warranties
made by the Company herein being true and correct when made and
being true and correct in all material respects on and as of the
Closing Date as though made on the Closing Date; and (c) the
Company having performed all obligations required of the Company
under this Agreement to be performed by it on or before the Closing
Date, including payment of the first installment of the License
Fee.
4.4.
Deliveries and Transactions at the
Closing. At the Closing, the following transactions shall
occur simultaneously (no transaction shall be deemed to have been
completed or any document delivered until all such transactions
have been completed and all required documents
delivered):
4.4.1.
True and correct
copies of the resolution of the Board of Directors of the Company,
substantially in the form attached hereto as Appendix D, shall be delivered to
Yissum, approving, inter
alia, the execution, delivery and performance by the Company
of this Agreement, including the performance of the Company’s
obligations hereunder, to the extent such approval is
necessary.
4.4.2.
The Company shall
pay Yissum the second installment of the License Fee (US $400,000),
by a way of a bank transfer to Yissum’s bank account,
pursuant to the wiring instructions set forth in Section 7.1
below.
4.4.3.
Yissum shall grant
the License to the Company as provided in Section 2.1
above.
5.
Post-Closing
Technology Transfer
5.1.
Within thirty (30)
days of the Closing, Yissum shall complete the transfer and
conveyance to the Company of all information, documents, protocols,
or files (in written, electronic, or other form or media) and all
materials or formulations, comprising or containing the Technology
within the possession and/or control of Yissum, the University
and/or the Researcher, to the reasonable satisfaction of the
Company.
5.2.
In addition during
the six (6) month period following the Closing Date, the Company
and any of its Affiliates shall have reasonable access, at the
Company’s and/or its Affiliate’s request, to the
Researcher, members of her team by teleconference, electronic mail
and in-person meetings, during normal business hours, after
coordination in advance, in order to facilitate such transfer
and/or in the event of any questions or enquiries by the Company
and/or its Affiliate with respect to the Technology. Yissum shall
ensure that the foregoing persons shall reasonably co-operate with
and assist the Company for such purposes.
6.
Consummation
of Assignment
6.1.
The Assignment and
the payment of the IP Assignment Fee by electronic transfer, shall
take place, on a mutually agreed date within eighteen (18) months
of the Closing Date or such other time as the Parties shall
mutually agree upon in writing (the “Assignment Date”).
6.2.
The obligation of
the Company to pay the IP Assignment Fee as provided herein, shall
be conditioned upon (a) the completion of all of the transactions
described in Section 6.4 below; (b) all of the representations and
warranties made by Yissum herein being true and correct when made
and being true and correct in all material respects on and as of
the Assignment Date as though made on the Assignment Date, and (c)
Yissum having performed all obligations required of Yissum under
this Agreement to be performed by it on or before the Assignment
Date.
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6.3.
The obligation of
Yissum to perform the Assignment as provided herein shall be
conditioned upon (a) all of the representations and warranties made
by the Company herein being true and correct when made and being
true and correct in all material respects on and as of the
Assignment Date as though made on the Assignment Date; and (b) the
Company having performed all obligations required of the Company
under this Agreement to be performed by it on or before the
Assignment Date, including payment in full of the License
Fee.
6.4.
On the Assignment
Date, the following transactions shall occur simultaneously (no
transaction shall be deemed to have been completed or any document
delivered until all such transactions have been completed and all
required documents delivered):
6.4.1.
Yissum shall
execute and deliver (or procure the execution and delivery of) the
Deed of Assignment in the form attached hereto as Appendix C and all additional
instruments or documents of transfer, conveyance, assignment,
substitution and confirmation, which are required to give full
effect to the Assignment and to vest in the Company the full
benefit of the Technology being assigned pursuant to Section 2.2,
including registration of the Company as the applicant or owner of
the Patents.
6.4.2.
The Company shall
pay Yissum the IP Assignment Fee (US $1 million), by a way of a
bank transfer to Yissum’s bank account, pursuant to the
wiring instructions set forth in Section 7.1 below.
6.5.
For certainty, upon
the Company paying the IP Assignment Fee for the assignment of the
Technology pursuant to Section 2.2, the Technology shall be owned
exclusively by the Company and shall be freely assignable by the
Company.
7.
Payment
Terms
7.1.
All payments to
Yissum contemplated under this Agreement may be made by check or by
wire transfer to the following bank account of Yissum:
Name of
Bank: Hapoalim
Bank
Key: 12
Bank's
address: ▇ ▇▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇
Branch:
Jerusalem Business Branch - 436
Bank
account Number: 12-436-142-155001
Swift
Code: ▇▇▇▇▇▇▇▇
IBAN:
▇▇▇▇-▇▇▇▇-▇▇▇▇-▇▇▇▇-▇▇▇▇-▇▇▇ (for payment from Europe
only)
7.2.
Any sum of money
due to Yissum, which is not duly paid on time shall bear interest
from the due date of payment until the actual date of payment at
the rate of annual LIBOR applicable to a twelve (12) month deposit
plus two and one half percent (2.5%) per annum accumulated on a
monthly basis.
8.
Development
and Commercialization
8.1.
The Company shall
perform all its activities hereunder in accordance with all
applicable Laws, and shall procure the receipt of all approvals and
consents (including Regulatory Approvals) necessary for the
performance of its obligations hereunder.
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8.2.
Nothing herein
constitutes a warranty or covenant by the Company as to the
successful outcome of any of its development activities hereunder
or that it will succeed in the commercialization of any of the
Technology and/or any Products.
9.
Patent
Prosecution & Protection
9.1.
Subject to the
provisions of Section 9.3 below, with effect from the Closing Date,
the Company shall be responsible for the preparation, filing,
prosecution, maintenance and enforcement of the Patents, at its own
expense, using patent counsel of its choice reasonably acceptable
to Yissum, and shall handle all patent activities with respect
thereto. The Company shall instruct such patent counsel to copy
Yissum on all correspondence relating to material patent
activities, shall keep Yissum reasonably informed regarding
material matters related to such patent activities, shall provide
Yissum with a reasonable opportunity to review and comment on
material submissions to any patent office relating thereto and
shall take such comments under consideration in good faith. All
Patent applications to be filed in accordance with this Section 9.1
shall be filed in the name of Yissum.
9.2.
Without derogating
from the foregoing, Yissum shall assist the Company in all respects
relating to the preparation of documents for the registration of
any patent or any patent-related right comprising the Patents upon
the request of the Company, at no charge to the Company. Subject to
Section 9.3 below, both Parties shall take all appropriate action
in order to assist the other to extend the duration of a Patent or
obtain any other extension obtainable under Law, to maximize the
scope of the protection afforded by the Patents. Subject to Section
9.3 below, neither Party shall be entitled to abandon or cancel any
patent application or patent (as applicable) comprising the Patents
without the prior written consent of the other Party.
9.3.
Notwithstanding the
provisions of Sections 9.1 and 9.2 above, as of the Assignment
Date, the Company shall have the right, but not the obligation, to
pursue the filing, prosecution, maintenance and enforcement of the
Technology, in the Company’s (or its designee’s) name
and as the sole assignee, anywhere in the world, at the
Company’s sole expense and at its sole discretion, using
patent counsel selected by it. Without derogating from the
foregoing, as of the Assignment Date, the Company shall be entitled
to abandon or cancel any patent application or patent (as
applicable) comprising the Patents (the “Company Abandoned Patents”);
provided, however, that (A) the Company provides prior written
notice to Yissum of its decision to abandon or cancel Company
Abandoned Patents; and (B) in the event that (i) such decision is
with respect to Company Abandoned Patents on a worldwide basis (not
a particular country); and (ii) the Company Abandoned Patents cover
products and services that the Company, in its sole discretion,
decided not to exploit or commercialize or continue to exploit or
commercialize, then Yissum, at its sole discretion, can request
that the Company shall assign to Yissum all right, title and
interest in said Company Abandoned Patents, in which case the
Company shall take all action necessary to assign all its rights in
said Abandoned Company Patents to Yissum, at Yissum's expense. With
effect from such assignment the Company shall be relieved of its
payment and other obligations and/or liabilities with respect to
said Company Abandoned Patents, such Company Abandoned Patents
shall be excluded from the Technology for all purposes under this
Agreement and Yissum shall be entitled to commercialize or
otherwise grant third parties any right or title in and to said
Company Abandoned Patents (collectively, “Commercialization Activities”),
according to Yissum’s sole discretion, and at Yissum's
expense; provided that in the event that the Commercialization
Activities generate revenues to Yissum, Yissum shall pay the
Company twenty-five percent (25%) of the Net Proceeds (as defined
below) actually received by Yissum in respect of such
Commercialization Activities, until the Company receives an amount
equal to twice (2 times) the amount paid or invested by the Company
with respect to the Company Abandoned Patents (including payments
to Yissum and patent expenses). For clarity, and subject to the
foregoing, as of the Assignment Date, the Company’s reporting
and other obligations with respect to its patent activities
relating to the Patents as set forth in Section 9.1 shall cease.
For the purpose of this Section, “Net Proceeds” means any revenues
actually received by Yissum or Yissum’s designate or any
assignee in respect of Commercialization Activities (excluding
funds for research and/or development at the University, or
payments for the supply of services) after deduction of all
documented out-of-pocket costs, fees and expenses incurred by
Yissum in connection with such Commercialization Activities
(including, without limitation, unreimbursed patent costs, and all
attorney's fees and expenses and other costs and expenses in
connection with the negotiation and conclusion of such
Commercialization Activities).
9
9.4.
For clarity, all
fees and costs for the preparation, filing, prosecution,
maintenance and enforcement of the Patents (“Patent Expenses”) which accrued
prior to the Closing Date, shall be borne by Yissum and all Patent
Expenses accruing after the Closing Date shall be borne by the
Company.
9.5.
The foregoing does
not constitute an obligation, representation or warranty, express
or implied, on the part of either Party that any patent or patent
registration application will indeed be made or registered or be
registerable in respect of the Technology or any part thereof, nor
shall it constitute an obligation, representation, or warranty,
express or implied, on the part of either Party that a registered
patent will be valid or afford any protection. For the avoidance of
doubt, nothing in this Agreement constitutes an obligation,
representation or warranty, express or implied, on the part of
either Party regarding the validity of or the protection afforded
by any of the patents or patent registration applications detailed
in Appendix A or regarding
the commercial exploitability or any other value of the Technology
or that the Technology will not infringe the rights of any third
party.
9.6.
As of the Effective
Date, each Party shall inform the other Party in writing of any
alleged infringements by a third party of the Patents anywhere in
the world, as soon as practicable after becoming aware thereof,
together with any available written evidence of such alleged
infringement.
9.7.
As of the Closing
Date, the Company (or its Affiliate or sublicensee, as applicable)
shall have the right, in its sole discretion, in its own name and
at its own expense to initiate and pursue any legal action and
enforce the Patents against any infringement of such Patents
anywhere in the world, using legal counsel of its choice. Yissum
shall reasonably cooperate with the Company in connection with any
such action and if Yissum is a legally
indispensable party to such action (being the registered owner of
the infringed Patents until the Assignment), then Yissum agrees to
be joined as a co-plaintiff, at the Company’s
expense. Any amounts
recovered from any third party in any such action shall be retained
by the Company after reimbursement of the reasonable expenses of
Yissum (if any) related thereto.
10
10.
Confidentiality
10.1.
For the purposes of
this Agreement (i) “Yissum
Confidential Information” means this Agreement and the
terms hereof and any and all reports, details, data, formulations,
solutions, designs, and inventions and other information disclosed
to the Company or any of its Representatives by Yissum or any of
Yissum's Representatives in connection with the Technology, Yissum,
the University, the Researcher and other Representatives of Yissum
and/or the University, whether in written, oral, electronic or any
other form, except and to the extent that that any such
information: (a) was known to the Company at the time it was
disclosed, other than by previous disclosure by or on behalf of
Yissum, as evidenced by the Company’s written records at the
time of disclosure; (b) is in the public domain at the time of
disclosure or becomes part of the public domain thereafter other
than as a result of a violation by the Company or any of its
Representatives of the confidentiality obligations herein; (c) is
lawfully and in good faith made available to the Company by a third
party who is not subject to obligations of confidentiality with
respect to such information; or (d) is independently developed by
the Company without the use of Yissum Confidential Information, as
demonstrated by documentary evidence; and (ii) “Company Confidential Information”
means this Agreement and the terms hereof and any and all reports,
details, data, formulations, solutions, designs, and inventions and
other information disclosed by or on behalf of the Company under
this Agreement, whether in written, oral, electronic or any other
form, except and to the extent that any such information: (a) was
known to Yissum or the University at the time it was disclosed,
other than by previous disclosure by or on behalf of the Company,
as evidenced by Yissum's or the University’s written records
at the time of disclosure; (b) is in the public domain at the time
of disclosure or becomes part of the public domain thereafter other
than as a result of a violation by Yissum or its Representatives of
the confidentiality obligations herein; (c) is lawfully and in good
faith made available to Yissum or the University by a third party
who is not subject to obligations of confidentiality with respect
to such information; or (d) is independently developed by Yissum or
the University without the use of the Company Confidential
Information, as demonstrated by documentary evidence. The Parties
agree, however, that as of the Closing Date, the Technology and all
information and documents relating thereto shall no longer
constitute Yissum Confidential Information and shall be deemed to
be Company Confidential Information.
10.2.
The Company
undertakes that during the term of this Agreement and for a period
of five (5) years subsequent thereto, it shall maintain in
confidence and shall not use the Yissum Confidential Information
other than for the purposes of this Agreement. The Company
undertakes not to convey or disclose any of the Yissum Confidential
Information to any third party without the prior written permission
of Yissum. The Company shall be liable for its officers or
employees or other Representatives maintaining the confidentiality
of and not using or disclosing the Yissum Confidential Information
except as expressly provided herein. The Company shall treat such
Yissum Confidential Information with the same degree of care and
confidentiality that it maintains or protect its own confidential
information, but in any event, no less than a reasonable degree of
care and confidentiality.
10.3.
Notwithstanding the
foregoing, the Company may disclose the Yissum Confidential
Information:
(a)
to its Affiliates
and to those of its and its Affiliates’ Representatives who
have a “need to know” such information as necessary for
the exercise of its rights and/or performance of its obligations
hereunder, provided that such Representatives are legally bound by
similar confidentiality and non-use obligations to those set out in
this Agreement. The Company shall be responsible for ensuring that
its Representatives and the Representatives of its Affiliates abide
by such undertakings of confidentiality; and
11
(b)
to any actual or
potential third party investor, including, any government, public
foundation and/or private foundation, or any actual or potential
financial or business partners or collaborators, actual or
potential acquirers, licensees, sublicensees or distributors,
provided that each of the foregoing Persons is bound by customary
obligations of confidentiality and non-use which are at least as
restrictive as those set out in this Agreement; and
(c)
to any competent
authority for the purposes of obtaining any approvals or
permissions required for the implementation of the Assignment
and/or this Agreement, or in the fulfillment of a legal duty owed
to any competent authority (including a duty to make regulatory
filings or to comply with any other reporting requirements);
and
(d)
to the extent
required to be disclosed under any Law, including the regulations
of any securities exchange or other competent authority, court, or
order of any competent authority, provided that the Company
promptly notifies Yissum thereof in order to enable Yissum to seek
an appropriate protective order or other reliable assurance that
confidential treatment will be accorded to such information (with
the Company’s assistance, if necessary), and such disclosure
shall be made to the minimum extent required. Notwithstanding the
foregoing, with respect to any disclosure required by applicable
Law or the requirements of any securities exchange to which the
Company or its Affiliates may be subject, the Company shall (i)
provide Yissum with notice and a copy of such proposed disclosure
as far in advance of such filing or other disclosure as is
reasonably practicable under the circumstances in order to give
Yissum an opportunity to review and comment thereon, and (ii) in
good faith consider incorporating such comments, limit disclosure
or obtain confidential treatment to the extent reasonably requested
by Yissum and to the extent the Company determines such request is
consistent with applicable Law.
10.4.
Yissum undertakes
that during the term of this Agreement and for a period of five (5)
years subsequent thereto, it shall maintain in confidence, and
shall not use the Company Confidential Information other than for
the purposes of this Agreement. Yissum undertakes not to convey or
disclose any of the Company Confidential Information to any third
party without the prior written permission of the Company. Yissum
shall be liable for its officers or employees or other
Representatives and for the University and its researchers or
employees maintaining the confidentiality of and not using or
disclosing the Company Confidential Information except as expressly
provided herein. Yissum shall treat such Company Confidential
Information with the same degree of care and confidentiality that
each of them maintains and protects its own confidential
information, but in any event, no less than a reasonable degree of
care and confidentiality.
10.5.
Notwithstanding the
foregoing, Yissum may disclose the Company Confidential
Information:
12
(a)
to the University
and to those of the Representatives of Yissum and/or the University
who have a “need to know” such information as necessary
for the exercise of its rights and/or performance of its
obligations hereunder, provided that such Representatives are
legally bound by agreements which impose similar confidentiality
and non-use obligations to those set out in this Agreement. Yissum
shall be responsible for ensuring that its Representatives and the
Representatives of the University abide by such undertakings of
confidentiality; and
(b)
to any competent
authority in connection with the implementation of the Assignment
and/or this Agreement, or in the fulfillment of a legal duty owed
to any competent authority; and
(c)
to the extent
required to be disclosed under any law, rule, regulation, court, or
order of any competent authority, provided that Yissum promptly
notifies the Company thereof in order to enable the Company to seek
an appropriate protective order or other reliable assurance that
confidential treatment will be accorded to such information (with
Yissum’s assistance, if necessary), and such disclosure shall
be made to the minimum extent required.
10.6.
The Company shall
be responsible and liable to Yissum for any breach by its
Representatives, Affiliates, subcontractors, licensees,
sublicensees and investors of the undertakings of confidentiality
set forth in this Section 10 as if such breach were a breach by the
Company itself. Yissum shall be responsible and liable to the
Company for any breach by the University or its or the
University’s Representatives, of the undertakings of
confidentiality set forth in this Section 10 as if such breach were
a breach by Yissum itself.
10.7.
Without prejudice
to the foregoing, the Company shall not mention the names of
Yissum, the University, or the Researcher, without obtaining the
prior written consent of Yissum which consent shall not be withheld
unreasonably and Yissum's response to a request for such consent
shall be provided no later than three (3) business days from such
request as aforesaid. Yissum shall not use the name of the Company
or its Affiliates, and/or their respective Representatives without
the Company’s prior written consent, which consent shall not
be withheld unreasonably and the Company’s response to a
request for such consent shall be provided no later than three (3)
business days from such request as aforesaid. Notwithstanding the
foregoing, the Company need not obtain the prior written consent of
Yissum: (i) to use the names of Yissum, the University, or the
Researcher in connection with discussions with any actual or
potential investor, financial or business partners or
collaborators, acquirers, subcontractors, licensees, sublicensees
or distributors; or (ii) for so long as the Researcher acts as a
consultant of the Company or has any other position with the
Company, to mention the fact that the Researcher acts as consultant
or holds such other position.
10.8.
Neither Party shall issue any press release or
other public media statement regarding the execution, existence or
terms of this Agreement or the License and/or the Assignment
without the prior written approval of the other Party
which shall not be withheld,
conditioned or delayed unreasonably. In the event that a Party does
not respond to the written request by the other Party for the
approval of the text of any press release or public media statement
within three (3) business days of such request, such press release
or public media statement shall be deemed to have been
approved.
11.
Representations,
Warranties and Covenants; Liability and Indemnity
13
11.1.
Representations and Warranties. (a) The
Company represents and warrants to Yissum, and (b) Yissum
represents to the Company, in each case as of the Effective
Date:
11.1.1.
such Party is a
corporation duly organized and validly existing under the Laws of
the jurisdiction of its incorporation;
11.1.2.
such Party has all
right, power and authority to enter into this Agreement, and to
perform its obligations under this Agreement;
11.1.3.
such Party has
taken all action necessary to authorize the execution and delivery
of this Agreement and the performance of its obligations under this
Agreement. This Agreement is a legal and valid obligation of such
Party, binding upon such Party and enforceable against such Party
in accordance with the terms of this Agreement, except as
enforcement may be limited by applicable bankruptcy, fraudulent
conveyance, insolvency, reorganization, moratorium and other Laws
relating to or affecting creditors’ rights generally and by
general equitable principles;
11.1.4.
the execution,
delivery and performance of this Agreement by such Party does not
conflict with, breach or create in any Third Party the right to
accelerate, terminate or modify any agreement or instrument to
which such Party is a party or by which such Party is
bound;
11.1.5.
all consents,
approvals and authorizations from all Governmental Authorities or
other Third Parties required to be obtained by such Party in
connection with the execution and delivery of this Agreement have
been obtained; and the execution, delivery and performance of this
Agreement by such Party does not violate any Law of any
Governmental Authority having authority over such
Party;
11.1.6.
no person or entity
has or shall have, as a result of the execution and delivery of or
as a result of the transactions contemplated by this Agreement, any
right, interest or valid claim against or upon such Party for any
commission, fee or other compensation as a finder or broker because
of any act by such Party or its Affiliates, agents or licensees;
and
11.1.7.
no agreement
between it and any Third Party is in conflict with the rights
granted to the other Party pursuant to this Agreement.
11.2.
Additional Representations and Warranties by
the Company. The Company represents and warrants to Yissum
as of the Effective Date that:
11.2.1.
to the Company's
knowledge (after due enquiry), it has complied with all applicable
federal and state securities and other laws, rules and regulations,
including, without limitation, the ▇▇▇▇▇▇▇▇-▇▇▇▇▇ Act, and shall
use commercially reasonable efforts to cause the Company’s
directors and officers, in their capacities as such, to comply with
such laws, rules and regulations, including, without limitation,
the provisions of the ▇▇▇▇▇▇▇▇-▇▇▇▇▇ Act; and
11.2.2.
to the Company's
knowledge (after due enquiry), no action, claim, proceeding or
inquiry or investigation is pending or, threatened by any
Governmental Authority against the Company with respect to
violation of any state or federal securities law.
14
11.3.
Additional Representations and Warranties of
Yissum. Yissum represents and warrants to the Company as of
the Effective Date that:
11.3.1.
no notice
requirement or consent by any Third Party or any Governmental
Authority is required with respect to the execution and delivery of
this Agreement by Yissum or the consummation by Yissum of the
transactions contemplated hereby, except the notification and
registration (as applicable) of the Assignment of the Patents upon
or following the Assignment Date;
11.3.2.
Yissum exclusively
owns all right, title and interest in and to the Technology, free
and clear of all mortgages, pledges, liens, security interests,
encumbrances, charges or claims;
11.3.3.
the Patents and the
Know-How have been independently developed by the Researcher and/or
members of her team at the University without any Third Party
grants or the support of any Governmental Authority or any other
Third Party;
11.3.4.
neither Yissum nor
the University is obligated under any liability whatsoever to make
any payments by way of royalties, fees or otherwise to any Third
Party with respect to the Technology;
11.3.5.
Yissum has no
knowledge of any Third Party (including any employee or former
employee of Yissum or its Affiliates) interfering with, infringing
upon, misappropriating, violating or using without authorization
any of the Technology;
11.3.6.
to the best of
Yissum's knowledge each Person who has or has had any rights in or
to any Technology, has assigned and has executed an agreement
assigning such Person’s entire right, title and interest in
and to such Technology to Yissum and no current or former officer,
researcher, employee, agent, consultant or service provider of
Yissum or the University is in violation of any term of any
assignment or other agreement regarding the protection of the
Technology;
11.3.7.
no action, claim,
proceeding or inquiry or investigation is pending or, to the
knowledge of Yissum, threatened by any Third Party with respect to
any of the Technology (including the exploitation or
commercialization thereof) or the patentability or validity of any
claims of any of the Patents;
11.3.8.
Yissum has not
received any written notice or threat from any Third Party
asserting or alleging that any research, manufacture or development
of any Products infringed or misappropriated the intellectual
property rights of such Third Party;
11.3.9.
Yissum has not
sold, transferred or assigned any of its rights to the Technology
to any Third Party; and
11.3.10.
none of the
Technology has lapsed or been abandoned or cancelled as of the
Effective Date or pursuant to Section 4.2, as of the Closing
Date.
15
11.4.
Disclaimer by the Company.
Notwithstanding the representations and warranties set forth in
this Section 11 above, the Company acknowledges and accepts that
there is no implied representation that any Products can be
successfully developed or commercialized.
11.5.
EXCEPT AS EXPRESSLY
PROVIDED IN THIS AGREEMENT AND TO THE EXTENT PERMITTED BY THE
APPLICABLE LAW, NEITHER PARTY MAKES ANY REPRESENTATIONS OR
WARRANTIES OF ANY KIND, EXPRESS OR IMPLIED, WITH RESPECT TO THE
TECHNOLOGY AND/OR ANY PRODUCTS. IN PARTICULAR, NEITHER PARTY MAKES
ANY EXPRESS OR IMPLIED WARRANTIES OF MERCHANTABILITY OR FITNESS FOR
A PARTICULAR PURPOSE, OR THAT THE USE OF THE TECHNOLOGY WILL NOT
INFRINGE ANY PATENT, COPYRIGHT, TRADEMARK OR OTHER RIGHTS OF ANY
THIRD PARTY.
IN
ADDITION, NOTHING IN THIS AGREEMENT MAY BE DEEMED A REPRESENTATION
OR WARRANTY BY YISSUM AS TO THE VALIDITY OF ANY OF THE PATENTS OR
THEIR REGISTRABILITY OR OF THE ACCURACY, SAFETY, EFFICACY, OR
USEFULNESS, FOR ANY PURPOSE, OF THE TECHNOLOGY.
YISSUM
HAS NO OBLIGATION, EXPRESS OR IMPLIED, TO SUPERVISE, MONITOR,
REVIEW OR OTHERWISE ASSUME RESPONSIBILITY FOR THE PRODUCTION,
MANUFACTURE, TESTING, MARKETING OR SALE OF ANY
PRODUCT.
TO THE
EXTENT PERMITTED BY APPLICABLE LAW, NEITHER YISSUM NOR THE
UNIVERSITY, NOR THE RESEARCHER NOR ANY OF THE THEIR RESPECTIVE
REPRESENTATIVES SHALL HAVE ANY LIABILITY WHATSOEVER TO THE COMPANY
OR TO ANY THIRD PARTY FOR OR ON ACCOUNT OF ANY INJURY, LOSS, OR
DAMAGE, OF ANY KIND OR NATURE WHETHER DIRECT OR INDIRECT, SUSTAINED
BY THE COMPANY OR BY ANY THIRD PARTY, FOR ANY DAMAGE ASSESSED OR
ASSERTED AGAINST THE COMPANY, OR FOR ANY OTHER LIABILITY INCURRED
BY OR IMPOSED UPON THE COMPANY OR ANY OTHER PERSON OR ENTITY,
DIRECTLY OR INDIRECTLY ARISING OUT OF OR RESULTING FROM (i) THE
PRODUCTION, MANUFACTURE, USE, PRACTICE, LEASE, OR SALE OF ANY
PRODUCT; (ii) THE USE OF THE TECHNOLOGY MADE BY THE COMPANY, ITS
AFFILIATES, THEIR RESPECTIVE REPRESENTATIVES AND/OR BUSINESS
ASSOCIATES AND CUSTOMERS, AND LICENSEES; OR (iii) ANY ADVERTISING
OR OTHER PROMOTIONAL ACTIVITIES WITH RESPECT TO ANY OF THE
FOREGOING, EXCEPT TO THE EXTENT ARISING FROM THE BREACH BY YISSUM
OF ANY OF ITS REPRESENTATIONS AND WARRANTIES, OR FROM THE GROSS
NEGLIGENCE OR WILLFUL MISCONDUCT OF YISSUM, THE UNIVERSITY OR ANY
OF THEIR RESPECTIVE REPRESENTATIVES, OR IN THE CASE OF ANY INJURY,
LOSS OR DAMAGE ASSERTED AGAINST THE COMPANY BY THE UNIVERSITY, THE
RESEARCHER OR ANY REPRESENTATIVES OF YISSUM OR THE UNIVERSITY
– EXCEPT TO THE EXTENT ARISING FROM THE BREACH BY YISSUM OR
ANY OF ITS REPRESENTATIVES OF THE OBLIGATIONS AND UNDERTAKINGS BY
YISSUM HEREUNDER.
16
11.6.
IN NO EVENT SHALL
YISSUM, THE UNIVERSITY, THE RESEARCHER OR THE REPRESENTATIVES OF
YISSUM AND/OR OF THE UNIVERSITY, BE LIABLE TO THE COMPANY OR ANY OF
ITS AFFILIATES FOR ANY CONSEQUENTIAL, INCIDENTAL, INDIRECT,
SPECIAL, PUNITIVE OR EXEMPLARY DAMAGES (INCLUDING, LOST PROFITS,
BUSINESS OR GOODWILL) SUFFERED OR INCURRED BY THE COMPANY OR ITS
AFFILIATES OR ANY THIRD PARTY, WHETHER BASED UPON A CLAIM OR ACTION
OF CONTRACT, WARRANTY, NEGLIGENCE OR TORT, OR OTHERWISE, ARISING
OUT OF THIS AGREEMENT, EXCEPT TO THE EXTENT ARISING FROM THE BREACH
BY YISSUM OF ANY OF ITS REPRESENTATIONS AND WARRANTIES SET FORTH IN
SECTIONS 11.1 AND 11.3 ABOVE OR FROM THE GROSS NEGLIGENCE OR
WILLFUL MISCONDUCT OF YISSUM, THE UNIVERSITY, OR ANY OF THEIR
RESPECTIVE REPRESENTATIVES.
IN NO
EVENT SHALL THE COMPANY, ITS AFFILIATES OR THEIR RESPECTIVE
REPRESENTATIVES, BE LIABLE TO YISSUM OR THE UNIVERSITY FOR ANY
CONSEQUENTIAL, INCIDENTAL, INDIRECT, SPECIAL, PUNITIVE OR EXEMPLARY
DAMAGES (INCLUDING, LOST PROFITS, BUSINESS OR GOODWILL) SUFFERED OR
INCURRED BY YISSUM OR THE UNIVERSITY, WHETHER BASED UPON A CLAIM OR
ACTION OF CONTRACT, WARRANTY, NEGLIGENCE OR TORT, OR OTHERWISE,
ARISING OUT OF THIS AGREEMENT, EXCEPT TO THE EXTENT ARISING FROM
THE BREACH BY THE COMPANY OF ANY OF ITS REPRESENTATIONS AND
WARRANTIES SET FORTH IN SECTIONS 11.1 AND 11.2 ABOVE OR FROM THE
GROSS NEGLIGENCE OR WILLFUL MISCONDUCT OF THE COMPANY OR ITS
AFFILIATES OR ANY OF THEIR RESPECTIVE REPRESENTATIVES.
11.7.
The Company shall
be liable for any loss, injury or damage whatsoever caused directly
or indirectly to or suffered by its employees or any
Representatives of Yissum (including the Researcher and her team),
or to any third party by reason of the Company's acts or omissions
pursuant to this Agreement or by reason of any use made by the
Company, its Representatives, Affiliates, licensees, and
sublicensees and their respective business associates and customers
of the Technology, or of any Product, except to the extent arising
from the breach by Yissum of any of its representations and
warranties as aforesaid, or from the gross negligence or willful
misconduct of Yissum, the University or any of their respective
Representatives, or in the case of any injury, loss or damage
caused to the University, the Researcher or any Representatives of
Yissum or the University – except to the extent arising from
the breach by Yissum or any of its Representatives of the
obligations and undertakings by Yissum hereunder.
11.8.
The Company
undertakes to compensate, indemnify, defend and hold harmless
Yissum, the University, and all of their respective Representatives
(including the Researcher and her team) (herein referred to jointly
and severally as “Indemnitees”) from and against any
claim, investigation or liability including, product liability,
damage, loss, costs and expenses, including reasonable legal costs,
attorneys’ fees and litigation expenses (collectively
“Liabilities”),
incurred by or imposed upon the Indemnitees by reason of any acts
or omissions of the Company, its Representatives, its Affiliates,
licensees and sublicensees, or which derive from the development,
manufacture, marketing, sale, use or other exploitation, licensing
or sublicensing (as applicable) of any Product, or the Technology,
except to the extent that such Liabilities arise from the breach by
Yissum of any of its representations and warranties as aforesaid,
and/or any of its obligations or undertakings set forth in this
Agreement, or from the gross negligence or willful misconduct of
any of the Indemnitees. Notwithstanding the foregoing and the
remainder of this Section 11, and to the extent permitted by
applicable Law, the Company’s entire liability under this
Agreement shall not exceed the total amount paid by the Company to
Yissum prior to the event that gave rise to the Liabilities,
excluding any Liabilities resulting from bodily injury or death, or
due to the gross negligence or willful misconduct of the Company,
or violation of applicable state and federal laws, including but
not limited to any misrepresentation under applicable state and
federal securities law.
17
11.9.
To be eligible to
be indemnified hereunder, if any claim or lawsuit (including a copy
thereof) is served upon Yissum with respect to which Yissum intends
to claim indemnification pursuant to Section 11.8 above (a
“Claim”), Yissum
shall (i) promptly give the Company written notice of any such
Claim; (ii) give the Company sole control of the defense and/or
settlement thereof; and (iii) reasonably cooperate with the Company
and its legal representatives in the investigation and defense of
such Claim. The Company shall not settle any Claim that admits
fault or wrongdoing on the part of any of the Indemnitees without
the express written consent of Yissum, which consent will not be
unreasonably withheld, conditioned or delayed. Notwithstanding the
foregoing, the Company will have no obligations with respect to any
Claim if Yissum or any other Indemnitee makes any admission,
concessions or settlement regarding such Claim, without the prior
written consent of the Company. Yissum shall have the right to
participate, at its own expense and with counsel of its choice, in
the defense of any Claim that has been assumed by the
Company.
11.10.
As of the Closing
Date, the Company shall procure and maintain, at its (or any
licensee’s) sole cost and expense, policies of insurance,
including product liability insurance (as appropriate), in amounts
and with terms reflecting the industry standard for the type of
Product and stage of activity (development, testing, marketing or
sale). General liability and product liability insurance policies
shall name the Indemnitees as additional insureds. The policy or
policies so issued shall include a “cross-liability”
provision pursuant to which the insurance is deemed to be separate
insurance for each named insured (without right of subrogation as
against any of the insured under the policy, or any of their
representatives, employees, officers, directors or anyone in their
name). Such comprehensive general liability insurance shall provide
(i) product liability coverage (if applicable taking account the
stage of the Company’s activities) and (ii) broad form
contractual liability coverage for the Company's indemnification
obligations under this Section 11 to the extent that such coverage
is available. Notwithstanding the foregoing, the Company may
satisfy the foregoing requirement through
self-insurance.
The
minimum amounts of insurance coverage required above shall not be
construed to create a limit of the Company's liability with respect
to its indemnification obligations under this Section
11.
11.11.
The Company shall
provide Yissum with written evidence of such insurance upon
request. The Company shall provide Yissum with written notice at
least fifteen (15) days prior to the cancellation, non-renewal or
material change in such insurance.
11.12.
The Company shall
maintain, at its own expense, liability insurance as set forth in
this Section 11 above, beyond the expiration or termination of this
Agreement as long as a Product relating to or developed pursuant to
this Agreement is being commercially distributed or sold by the
Company, an Affiliate, a licensee or sublicensee, and thereafter as
required by applicable Laws.
18
12.
Term;
Effect of Termination
12.1.
The term of this
Agreement shall commence on the Effective Date and shall remain in
effect unless terminated earlier pursuant to Section 12.2 below
(the “Term”).
12.2.
This Agreement
shall terminate:
12.2.1.
if all of the
Parties, in writing, consent to terminate this Agreement;
or
12.2.2.
at the discretion
of Yissum, upon written notice to the Company, effective
immediately, if the Company is in material breach of this
Agreement, and fails to remedy such breach within forty-five (45)
days of its receipt of written notice to cure; or
12.2.3.
if the Company
passes a resolution for voluntary winding up or a winding up
application is made against it and not set aside within sixty (60)
days, or if a receiver or liquidator is appointed for the Company,
or if the Company enters into winding up, insolvency or bankruptcy
proceedings, and such appointment or proceedings shall not be
withdrawn, dismissed or vacated, as the case may be, within sixty
(60) days after the appointment or filing, if applicable (each of
the foregoing: a “Bankruptcy
Event”). The Company shall notify Yissum in writing
within three (3) business days of the occurrence of any Bankruptcy
Event: or
12.2.4.
if the Company
gives Yissum sixty (60) days prior written notice of termination
for any reason or for convenience (“Termination for
Convenience”).
12.3.
Without derogating from any other rights or
remedies to which either Party may be entitled hereunder or at Law,
if at any time prior to the Assignment and payment of the IP
Assignment Fee, this Agreement is terminated for any reason,
including Termination for Convenience, but excluding termination by
the Company due to an uncured breach by Yissum, then
the License shall terminate, the
Technology and all rights included therein shall revert to Yissum,
and Yissum shall be free to enter into agreements with any other
third parties for the granting of a license or to deal in any other
manner with such right as it shall see fit at its sole
discretion.
12.4.
The termination of
this Agreement for any reason shall be without prejudice to any
other rights or remedies to which a Party (or Yissum, in the case
of Termination for Convenience by the Company) may be entitled
hereunder or at Law.
12.5.
Notwithstanding the
foregoing, the termination of this Agreement for any reason shall
not release the Company from its obligation to carry out any
financial or other obligation which it was liable to perform prior
to such termination.
In
addition, Sections 10, 11.3 through 11.12, 14, 15, 16 and any other
provision of this Agreement that expressly or by implication is
intended to come into force or continue in force on or after the
termination or expiration of this Agreement shall survive the
termination or expiration of this Agreement to the extent required
to effectuate the intent of the Parties as reflected in this
Agreement.
13.
Related
Invention
19
13.1.
During the Term,
Yissum shall notify the Company in writing as soon as practicable
after receiving an invention disclosure with respect to any Related
Invention (as such term is defined below), and of the filing of any
patent application disclosing or claiming any Related Invention
(each, a “Related Invention
Notice”) and shall provide the Company with a copy of
the relevant patent application as well as data or other
information relating to the subject matter claimed in the said
patent application in the possession of the Researcher and/or any
members of her team at the University and which has been provided
to Yissum. The Company shall be entitled to request that such
Related Invention be sold and assigned, or exclusively licensed (at
the Company’s election) to the Company, upon mutually agreed
terms and conditions, by written notice to Yissum within thirty
(30) days from the date of its receipt of a Related Invention
Notice (the “Notice
Period”). If, by the end of the Notice Period, the
Company notifies Yissum in writing that it wishes to purchase or
exclusively license (as applicable) such Related Invention (the
“Company’s
Notice”), then the
Parties shall enter into negotiations in good faith regarding the
main commercial terms (including the consideration) and shall enter
into a binding term sheet with respect thereto within thirty (30)
days after receipt of the Company’s Notice (the
“Initial Negotiation
Period”). Thereafter, the
Parties shall negotiate in good faith the additional terms and
conditions of a definitive agreement based on the said binding term
sheet and shall enter into a final definitive agreement with
respect thereto within thirty (30) days of the expiration of the
Initial Negotiation Period (the “Final Negotiation
Period”).
The Initial Negotiation Period and
the Final Negotiation Period may be extended by mutual written
consent of the Parties. From the date of receipt of an
invention disclosure and during the Notice Period and, during the
Initial Negotiation Period - if the Company delivers the
Company’s Notice as aforesaid, and also during the Final
Negotiation Period - if the Parties reach a binding term sheet,
Yissum agrees not to offer to sell, assign or license the
particular Related Invention to any third party or to enter into
any sale, assignment or license agreement with respect to the
particular Related Invention with any third party. In the event that the Parties fail to reach a
binding term sheet within the Initial Negotiation Period or enter
into a final definitive agreement with respect to such terms and
conditions within the Final Negotiation Period, notwithstanding
their good faith efforts as aforesaid, Yissum shall be free
to offer the particular Related Invention to any third
party, and/or to sell, or grant a
license to the Related Invention to any third party, according to
Yissum’s sole discretion, without any further obligations to
the Company.
For the
purposes of this Section 13, “Related Invention” means any
patentable invention in the field of Cannabinoids and hemp
(including high dosage THC, THC or Cannabidiols (CBD)) that is
created, generated or reduced to practice by the Researcher alone
or with a member of the Researcher’s research team at the
University after the Effective Date, arising from research
conducted at the University (but excluding any services or other
activities performed by the Researcher for or on behalf of the
Company pursuant to a separate agreement with the Company),
including research that commenced prior to the Effective
Date.
14.
Law
The
provisions of this Agreement and everything concerning the
relationship between the Parties in accordance with this Agreement
shall be governed exclusively by Israeli law without application of any
conflict of law principles that direct that the laws of another
jurisdiction apply and jurisdiction shall be granted to the
competent court in Jerusalem exclusively, except that Yissum may bring suit
against the Company in any other jurisdiction outside the State of
Israel in which the Company has assets or a place of business. Each
Party undertakes not to object to the enforcement against it of
writs and decisions issued by any other jurisdiction outside the
State of Israel under such circumstances. Each Party hereby waives
any immunity it may have against enforcement of any judgment so
obtained against it by the other Party and waives any rights or
claims that it may have with respect to forum
non-conveniens.
20
15.
Miscellaneous
15.1.
Relationship of the Parties. It
is hereby agreed and declared between the Parties that they shall
act in all respects relating to this Agreement as independent
contractors and there neither is nor shall there be any
employer-employee or principal-agent relationship or partnership
relationship between any of the Parties. Each Party will be
responsible for payment of all salaries and taxes and social
welfare benefits and any other payments of any kind in respect of
its employees and officers, regardless of the location of the
performance of their duties, or the source of the directions for
the performance thereof.
15.2.
Performance by Affiliates. The
Company may exercise any right hereunder or discharge any
obligations hereunder through any of its Affiliates. The Company
shall be responsible for the compliance by its Affiliates with the
provisions of this Agreement in connection with the exercise of any
such right or performance of any obligations by its Affiliates. Any
breach by the Company’s Affiliate of any of the
Company’s obligations under this Agreement shall be deemed a
breach by the Company.
15.3.
Compliance with Applicable
Laws. Each Party undertakes to comply with applicable Laws
in the implementation of this Agreement, including, anti-bribery
and anti-corruption Laws.
15.4.
Dispute Resolution. Each Party
hereby agrees that it will first attempt in good faith to resolve
any dispute arising out of or relating to this Agreement (each a
“Dispute”). If
the Dispute is not resolved by the Parties in good faith, then the
matter will then immediately be referred to the respective chief
executive officers of the Parties (or their respective designees)
for resolution within twenty-one (21) days. If, after such efforts,
the Parties are unable to resolve such Dispute, either Party may
take any other action pursuant to Section 14 above.
15.5.
Assignment. Neither Party may
transfer or assign or endorse its rights, duties or obligations
pursuant to this Agreement to another, without the prior written
consent of the other Party, which consent shall not be unreasonably
denied, conditioned or delayed. Notwithstanding the foregoing, the
Company shall be entitled to freely assign this Agreement (in whole
or in part) or its rights and obligations hereunder to an Affiliate
or to a Third Party that acquires or succeeds to all or
substantially all of the business or assets of the Company relating
to this Agreement, whether by sale, merger, operation of law or
otherwise, provided in each case that such assignee agrees to be
bound in writing by this Agreement.
In the
event of a Further Assignment of the Technology (or part thereof)
by the Company or its Affiliate after the Assignment Date, the
Company shall ensure that the Further Assignee is bound by and
subject to the terms of this Agreement, including the payment
obligations of the Company hereunder (which shall apply,
mutatis mutandis to such
Further Assignee).
21
For the
purposes of this Section 15.5, “Further Assignee” shall mean the
Third Party receiving the Technology, in whole in part, via a sale
or assignment by the Company or by any Affiliate; and
“Further
Assignment” shall mean the assignment of title, or any
sale, of the Technology (in whole or in part) or this Agreement by
the Company to a Third Party in a transaction. “Further Assignment” expressly
excludes the sale or transfer (or any similar transaction of any
kind) of any ownership and/or equity interest in the Company to any
Third Party, whether in whole or in part.
15.6.
No waiver. No waiver by any
Party, whether express or implied, of its rights under any
provision of this Agreement shall constitute a waiver of such
Party’s rights under such provisions at any other time or a
waiver of such Party’s rights under any other provision of
this Agreement. The failure or delay of a Party to claim the
performance of an obligation of another Party shall not be deemed a
waiver of the performance of such obligation or of any future
obligations of a similar nature.
15.7.
Representation by Legal
Counsel. Each
Party represents that it has been represented by legal counsel in
connection with this Agreement and acknowledges that it has
participated in drafting this Agreement. In interpreting and
applying the terms and provisions of this Agreement, the Parties
agree that no presumption shall exist or be implied against the
Party which drafted such terms and provisions.
15.8.
Expenses. Each Party shall pay
all costs and expenses that it incurs with respect to the
negotiation, due diligence investigation, execution, delivery and
performance of the Agreement.
15.9.
Disclosure of Agreements with a
University researcher. The Company shall disclose to Yissum
any existing or future agreement or arrangement of any kind with a
University researcher (for so long as such researcher is employed
by the University) and or any representative of such researcher,
and shall not enter into any such agreement or arrangement without
the prior written consent of Yissum.
15.10.
Severability. The provisions of
this Agreement are severable and, in the event that any one or more
of the provisions or part of a provision contained in this
Agreement shall, for any reason, be held by any court of competent
jurisdiction to be invalid, illegal or unenforceable in any
respect, such invalidity, illegality or unenforceability shall not
affect any other provision or part of a provision of this
Agreement; but such provision shall be modified as set out below
and the balance of this Agreement shall be interpreted as if such
provision were so modified. The Parties shall negotiate in good
faith in order to agree on the terms of an alternative provision
which complies with applicable law and achieves, to the greatest
extent possible, the same effect as would have been achieved by the
invalid, illegal or unenforceable provision.
15.11.
Force Majeure. No Party shall be held liable or responsible to the
other Party nor be deemed to have defaulted under or breached the
Agreement for failure or delay in fulfilling or performing any term
of this Agreement to the extent, and for so long as, such failure
or delay is caused by or results from causes beyond the reasonable
control of the affected Party and without fault of such Party,
including fires, earthquakes, floods, embargoes, wars, acts of war
(whether war is declared or not), insurrections, riots, civil
commotions, strikes, lockouts or other labor disturbances (except
of such Party's personnel), acts of God or acts, omissions or
delays in acting by any governmental authority provided that the
nonperforming Party uses commercially reasonable efforts to avoid
or remove such causes of nonperformance and continues performance
under this Agreement with reasonable dispatch whenever such causes
are removed. The Party affected by such circumstances shall
promptly notify the other Parties in writing when such
circumstances cause a delay or failure in performance and when they
cease to do so.
22
15.12.
Counterparts. This Agreement
may be executed in any number of counterparts (including
counterparts transmitted by facsimile and by electronic mail), each
of which shall be deemed an original, but all of which taken
together shall be deemed to constitute one and the same
instrument.
15.13.
Binding Effect. This Agreement
shall be binding upon the Parties once executed by both Parties and
shall enter into force and become effective as of the Effective
Date.
15.14.
Entire Agreement. This
Agreement constitutes the full and complete agreement between the
Parties and supersedes any and all agreements or understandings,
whether written or oral, concerning the subject matter of this
Agreement, and may only be amended by a document signed by both
Parties.
15.15.
Further Actions. Each Party
agrees to execute, acknowledge and deliver and shall cause its
employees or ex-employees to execute, acknowledge and deliver such
further instruments and to do all such other acts as may be
necessary or appropriate to perfect the rights of the other Party
hereunder and otherwise in order to carry out the purposes and
intent of this Agreement.
15.16.
Equitable Relief. Each Party
agrees that any breach or threatened breach of the terms and
conditions of this Agreement may cause irreparable harm, that may
be difficult to ascertain and that monetary damages may not afford
an adequate remedy. Accordingly, in addition to all other rights
and remedies that may be available to the non-breaching Party under
this Agreement or by Law, such Party shall be entitled to seek
specific performance, an order restraining any breach, injunctive
relief and any other equitable relief in any court of competent
jurisdiction.
16.
Notices
All
notices and communications pursuant to this Agreement shall be made
in writing and sent by facsimile, electronic mail or by registered
mail or served personally at the following addresses:
To
Yissum at:
Yissum
Research Development Company
of the
Hebrew University of Jerusalem Ltd.
▇.▇.
▇▇▇ ▇▇▇▇▇,
▇▇▇▇▇▇▇▇▇
▇▇▇▇▇
Israel
Facsimile:
▇▇▇-▇-▇▇▇▇▇▇▇
Email:
▇▇▇.▇▇▇▇▇▇▇▇▇▇▇▇@▇▇▇▇▇▇.▇▇.▇▇
To the
Company at:
▇▇▇▇
▇▇▇▇ ▇▇▇▇▇
▇▇▇▇▇▇,
▇▇▇▇▇▇▇, ▇.▇.▇. ▇▇▇▇▇
Email:
▇▇▇▇▇▇▇▇▇▇@▇▇▇.▇▇▇
23
or such
other address furnished in writing by one Party to the other. Any
notice served personally shall be deemed to have been received on
the day of service, any notice sent by registered mail as aforesaid
shall be deemed to have been received seven (7) days after being
posted by prepaid registered mail. Any notice sent by facsimile or
electronic mail shall be deemed to have been received by the next
business day after receipt of confirmation of transmission
(provided that any notice terminating this Agreement which is sent
by electronic mail shall be followed by a notice sent in any other
manner provided herein).
[signature
page follows]
24
IN
WITNESS WHEREOF THE PARTIES HAVE SET THEIR HANDS AS OF THE DATE SET
OUT ABOVE
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YISSUM
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THE COMPANY
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|||
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|
|
|
|
|
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By:
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/signed/
|
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By:
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/signed/
|
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Name:
|
|
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Name:
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|
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Title:
|
|
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Title:
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|
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Date:
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Date:
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I the undersigned, ▇▇▇▇. ▇▇▇▇ ▇▇▇▇▇▇▇, have reviewed, am familiar
with and agree to all of the above terms and conditions. I hereby
undertake to cooperate fully with Yissum in order to ensure its
ability to fulfill its obligations hereunder, as set forth
herein.
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▇▇▇▇. ▇▇▇▇ ▇▇▇▇▇▇▇
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Date signed
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25
Appendix
A
ASSIGNED
PATENTS
(1) Patent family – Yissum ref. # 3481
|
Family:
|
3481
|
Title:
|
Compositions for Nail and Skin Treatment (web like)
|
|
Inventor
|
University
|
Faculty
|
Department
|
|
Touitou Elka
|
HUJI
|
Institute of Drug Research
|
School of Pharmacy- Institute for Drug Research
|
|
Application
|
Publication
|
Patent
|
||||||
|
Patent ID
|
Status
|
Country
|
Date
|
Number
|
Date
|
Number
|
Date
|
Number
|
|
3481-00
|
Expired
|
US
|
30/01/2009
|
61/148,799
|
|
|
|
|
|
3481-01
|
Exhausted
|
PCT
|
29/01/2010
|
PCT/IB2010/000171
|
05/08/2010
|
WO 2010/086726
|
|
|
|
3481-02
|
Exhausted
|
PCT
|
29/01/2010
|
PCT/IB2010/000170
|
05/08/2018
|
WO 2010/086725
|
|
|
|
3481-03
|
Granted
|
US
|
01/08/2011
|
13/137,259
|
10/05/2012
|
US 2012/0114574
|
06/06/2017
|
9,668,987
|
|
3481-05
|
Granted
|
Europe
|
29/01/2010
|
10735529.9
|
30/01/2009
|
|
12/07/2017
|
2391344
|
|
3481-06
|
Released to Researcher
|
Europe
|
29/01/2010
|
10735528.1
|
07/12/2011
|
EP2391208
|
|
|
|
3481-07
|
Released to Researcher
|
US
|
|
15/413,987
|
10/08/2017
|
US2017/0224629
|
|
|
(2) Patent family – Yissum ref. # 4300
|
Family:
|
4300
|
Title:
|
Compositions and Methods for Drug Administration of Cannabinoids to
Humans and Animals
|
|
Inventor
|
University
|
Faculty
|
Department
|
|
Touitou Elka
|
HUJI
|
Institute of drug research
|
School of Pharmacy- Institute for Drug Research
|
|
Application
|
Publication
|
Patent
|
||||
|
Patent ID
|
Status
|
Country
|
Date
|
Number
|
Date
|
Number
|
|
4300-00
|
Expired
|
US
|
07/12/2015
|
62/263,868
|
|
|
|
4300-01
|
NP-Entry
|
PCT
|
06/12/2016
|
PCT/IL2016/051303
|
15/06/2017
|
WO 2017/098502
|
|
4300-02
|
Published
|
China
|
06/12/2016
|
2016800718207
|
03/08/2018
|
CN108366962
|
|
4300-03
|
Filed
|
Europe
|
06/12/2016
|
16820362.8
|
17/10/2018
|
EP3386480
|
|
4300-04
|
Filed
|
Australia (Oceania)
|
06/12/2016
|
2016367543
|
15/06/2017
|
|
|
4300-05
|
Filed
|
US
|
06/12/2016
|
15/781,639
|
|
|
|
4300-06
|
Filed
|
Canada
|
06/12/2016
|
3,007,438
|
05/06/2018
|
|
|
4300-07
|
Filed
|
Israel
|
06/12/2016
|
259246
|
31/07/2018
|
|
26
(3) Patent family – Yissum ref. # 6214
|
Family:
|
6214
|
Title:
|
compositions and methods of Lipophilic drugs
(transdermal)
|
|
Inventor
|
University
|
Faculty
|
Department
|
|
Touitou Elka
|
HUJI
|
Institute of Drug research
|
School of Pharmacy- Institute for Drug Research
|
|
Application
|
Publication
|
Patent
|
||
|
Patent ID
|
Status
|
Country
|
Date
|
Number
|
|
6214-00
|
Expired
|
US
|
20/07/2017
|
62/534,701
|
|
6214-01
|
Filed
|
PCT
|
19/07/2018
|
PCT/IL2018/050801
|
(4) Patent family – Yissum ref. # 6496
|
Family:
|
6496
|
Title:
|
Therapeutically beneficial oils-containing
formulations
|
|
Inventor
|
University
|
Faculty
|
Department
|
|
Touitou Elka
|
HUJI
|
Institute of Drug Research
|
School of Pharmacy
|
|
▇▇▇▇▇▇▇ ▇▇▇▇ (student)
|
HUJI
|
Institute of Drug Research
|
School of Pharmacy
|
|
Application
|
Publication
|
Patent
|
||
|
Patent ID
|
Status
|
Country
|
Date
|
Number
|
|
6496-00
|
Expired
|
US
|
29/11/2017
|
62/591,782
|
|
6496-01
|
Filed
|
PCT
|
04/11/2018
|
PCT/IL2018/051175
|
(5) Patent family – Yissum ref. # 6534
|
Family:
|
6534
|
Title:
|
Orally administrable cannabinoids-containing
compositions
|
|
Inventor
|
University
|
Faculty
|
Department
|
|
Touitou Elka
|
HUJI
|
Institute of Drug Research
|
School of Pharmacy
|
|
▇▇▇▇▇▇▇ ▇▇▇▇ (student)
|
HUJI
|
Institute of Drug Research
|
School of Pharmacy
|
|
Application
|
Publication
|
Patent
|
||
|
Patent ID
|
Status
|
Country
|
Date
|
Number
|
|
6534-00
|
Filed
|
US
|
04/11/2018
|
62/755,483
|
▇▇
▇▇▇▇▇▇▇▇
▇
KNOW-HOW
1.
Methods for
preparation and packaging of rectal and vaginal formulations for
cannabinoids.
2.
Use of animal
models for analgesic properties of cannabinoids.
3.
Choice of apparatus
for cannabinoid compositions described in the patents.
4.
Use of antioxidants
for the stability of cannabinoids preparation.
5.
Use of the oral
patent application for design of sustained release vitamin
products.
6.
Use of the oral
patent application for design of a combination formulation of a
cannabinoid and vitamin product.
7.
Use of specially
designed device for dermal/transdermal delivery of
cannabinoids.
|
YISSUM
|
THE COMPANY
|
|||
|
|
|
|
|
|
|
By:
|
|
|
By:
|
|
|
Name:
|
|
|
Name:
|
|
|
Title:
|
|
|
Title:
|
|
|
Date:
|
|
|
Date:
|
|
28
Appendix
C
DEED
OF ASSIGNMENT
29
Appendix
D
FORM
OF RESOLUTION OF THE BOARD OF DIRECTORS OF THE COMPANY
30