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EXHIBIT 6.4
6.4 ASSIGNMENT OF PATENT AND TECHNOLOGY - ▇▇▇▇▇▇ ▇▇▇▇▇
Palo Alto, CA
USA
June 1, 1998
AGREEMENT ON ASSIGNMENT OF PATENT AND TECHNOLOGY
IN CONSIDERATION OF RECEIVING 219,375 COMMON STOCK SHARES ISSUED ON
FEBRUARY 26, 1998 and other good and valuable consideration, the receipt of
which is hereby acknowledged, I hereby assign to HYPERBARIC SYSTEMS, a
California corporation, whose address is ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇,
▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇, its attorneys, successors, legal representatives and assigns,
and to the extent permitted under Russian Law, the entire worldwide right, title
and interest in and to my invention of technology for preserving and
transporting biologic and non-biologic material including but not limited to
platelets (a blood component), red blood cells, heart valves, tissue and organs
and in and to all of the discoveries, concepts and ideas whether patentable or
not, as products, techniques, processes, methods, designs, product ideas or
designs, formulas, drawings, data and improvements thereof and know-how related
thereto ("Technology"), and in and to any continuation, continuation-in-part,
divisional and substitution application related thereto, and in and to any
application for said Technology which may be filed in any other country, and in
and to any Letters Patent that may be granted upon such applications, and any
reissue or extension thereof, and all rights under the International Convention
for the protection of Intellectual Property or any other treaty.
I hereby agree upon the request of HYPERBARIC SYSTEMS, its successors,
legal representatives and assigns, as deemed by it as necessary or expedient,
and at no expense to myself to do the following in connection with any rights
above assigned:
1. Execute any additional or supplementary assignment or
assignments, to take all rightful oaths, and to execute any and
all of the aforesaid applications for said Technology and any
and all documents that shall be required to be executed in
connection therewith, including without limitation the
prosecution thereof, and to vest title in said applications and
Letters Patent in HYPERBARIC SYSTEMS, its successors, legal
representatives and assigns.
2. In the event any of the aforesaid applications or Letters Patent
issued thereon (or any reissue of application for reissue
thereof) becomes involved in interference, to cooperate to the
best of my ability in the matters of preparing and executing the
preliminary statement and giving and producing evidence in
support thereof; and
3. To perform any and all lawful affirmative acts to obtain said
Letters Patent and vest all rights therein in HYPERBARIC
SYSTEMS, its successors, legal representatives and assigns, as
fully and entirely as the same would have been held and enjoyed
by me if this Assignment had not been made.
This document is executed in 2 originals, in English (one original for
each party). Both originals shall have equal validity and force.
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SIGNED:
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▇▇▇▇▇ ▇▇▇▇▇▇, PRESIDENT ▇▇▇▇▇▇ ▇▇▇▇▇
HYPERBARIC SYSTEMS ▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇ ▇▇
▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇▇▇▇▇▇, ▇▇▇▇▇▇ ▇▇▇▇▇▇
6.5 CONSULTANT AGREEMENT WITH ▇▇. ▇▇▇▇ ▇▇▇▇▇▇
CONSULTANT AGREEMENT
THIS AGREEMENT is made effective on May 28, 1998 between HYPERBARIC
SYSTEMS, whose address is ▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇, ▇▇▇▇ ▇▇▇▇, ▇▇ ▇▇▇▇▇, incorporated
under the laws of the State of California, hereinafter called "COMPANY" and ▇▇▇▇
▇▇▇▇▇▇, MD, Ph.D. whose address is ▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇,
hereinafter called "CONSULTANT".
WITNESSETH:
1. PURPOSE OF AGREEMENT. HYPERBARIC SYSTEMS is a duly
established California corporation engaged in the business of designing,
manufacturing and marketing products for the medical, food and semiconductor
industries, and CONSULTANT represents that he has expertise in the area of Organ
transplantation, and preservation technology including the human heart, kidney
and liver. This agreement between COMPANY and CONSULTANT is entered into for the
purpose of defining the relationship, responsibilities, and agreement between
COMPANY and CONSULTANT.
2. CONSULTANT AND ADVISORY BOARD MEMBER: COMPANY hereby
appoints ▇▇▇▇ ▇▇▇▇▇▇ as a consultant and advisory board member to the COMPANY.
3. CONSULTANT AND ADVISORY BOARD DUTIES AND
RESPONSIBILITIES: CONSULTANT shall be engaged as a Consultant and Advisory Board
member with the following tasks:
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a. Advise and recommend applications of the Company's
Technology in the organ transplant, preservation and
transportation market.
b. Advise the Company in the design and specifications
of the container used to preserve and transport organs.
c. Advise the Company in establishing organizational
contacts for marketing the Company's products.
d. Advise the Company in securing test sites for
securing FDA approval.
e. Advise the Company in establishing a credible beta
test facility after FDA approval is granted.
f. Advise the Company in securing international market
and test site contacts.
4. CONSULTANT'S PERFORMANCE. CONSULTANT agrees to devote a
reasonable amount of time to meet the objectives outlined in Paragraph 3 above.
The Company acknowledges that Consultant is not an employee of the Company.
5. TERM. The term of this Agreement shall be effective for
a minimum term of one year from the date of this Agreement and continue until
thirty days' written notice of termination by either party. It is the intent of
the parties that this contract shall continue indefinitely until terminated by
either party.
6. COMPENSATION. For the services rendered by CONSULTANT
hereunder, CONSULTANT shall be compensated at an amount to be determined by the
following formula, but may be adjusted as agreed to by the parties.
a. 5% of all sales within the organ transplant
market for the next three years as long as CONSULTANT is a member of the
Advisory Board and Consultant to the COMPANY. This commission is limited to a
total of $1,000,000.
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7. STOCK OPTION. For the purpose of further motivating
CONSULTANT, the following NON-STATUTORY STOCK OPTIONS are hereby granted under
the Non-Statutory Stock Option Plan of the Company, and issued under the Notice
of Grant of Non-Statutory Stock Option, and the Non-Statutory Stock Option
Agreement, which are included as part of this Agreement. The Stock Option Plan
is pending and subject to approval by the Board of Directors.
a. 50,000 shares @$0.10 per share, vested over
three years, exercisable yearly at the rate of 30%, 30% and 40% respectively.
8. BONUS. After the first year of tenure as CONSULTANT and
Advisory Board Member of the COMPANY, and up to the expiration of the options,
COMPANY agrees to grant a bonus of up to $5,000 to CONSULTANT for the sole
purpose of exercising any vested stock options that CONSULTANT elects to
exercise.
9. TERMINATION UPON BREACH. This Agreement shall be
terminated upon material breach of any of the provisions herein, or breach of
the material provisions of any and all supplemental agreements which the
CONSULTANT and COMPANY may mutually execute.
10. CONFIDENTIALITY AGREEMENT. CONSULTANT agrees that all
information made available to CONSULTANT regarding the products, clients and
software systems of COMPANY are confidential and require a high degree of
confidentiality so as not to violate the rights of others and to prevent the use
thereof for purposes detrimental to the interests of COMPANY and its clients.
Such information in any form shall be hereinafter referred to as "INFORMATION."
For purposes of this Agreement:
a. CONFIDENTIAL INFORMATION means INFORMATION
disclosed to or acquired by CONSULTANT while employed by COMPANY, and includes
but is
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not limited to, INVENTIONS, Patent Applications, TRADE SECRETS, any other
information of value relating to the business and/or field of interest of
COMPANY including information with respect to which COMPANY is under an
obligation of confidentiality with any third party. CONFIDENTIAL INFORMATION
does not include information that is generally known in the relevant trade or
industry or any information known to and freely usable by CONSULTANT before
CONSULTANT'S association with COMPANY, provided, however, information for
purposes of this Agreement shall be considered CONFIDENTIAL INFORMATION if not
known by the trade generally, even though such information has been disclosed to
one or more third parties pursuant to distribution agreements, joint research
agreements, or other agreements entered into by COMPANY;
b. TRADE SECRET(S) means all information, know-how,
concepts, data, knowledge, ideas and materials however embodied, relating to the
business of COMPANY'S customers which have not been released publicly by an
authorized representative of COMPANY or have not otherwise lawfully entered the
public domain. TRADE SECRETS shall include but are not limited to information,
know-how, concepts, data, knowledge, computer programs, ideas and materials
relating to COMPANY'S existing and future products, processes, research and
development, technology, production costs, contract forms, drawings, designs,
plans, proposals, marketing and sales plans and strategies, cost or pricing
information, financial information, promotional methods, volume of sales, names
or classes of customers and vendors, management procedures, organization charts,
and CONSULTANT directories.
11. PROPRIETARY INFORMATION OF OTHERS. CONSULTANT shall not
use or disclose to COMPANY, or induce COMPANY to use, any information, know-how,
concepts, data, knowledge, computer programs, ideas or materials, however
embodied, with respect to which CONSULTANT is under an obligation of
confidentiality to any third party
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imposed, by law or agreement prior to the date hereof. COMPANY represents and
covenants that it will not require CONSULTANT to violate any obligation to, or
confidence with, another.
12. SECRECY AGREEMENT. CONSULTANT acknowledges that he
understands the requirement for CONFIDENTIAL INFORMATION to be kept secret and
used only as authorized herein. CONSULTANT shall at all times during the period
of his association with COMPANY under this agreement and thereafter keep in
confidence and trust all CONFIDENTIAL INFORMATION. CONSULTANT shall use
CONFIDENTIAL INFORMATION only in the course of performing duties as Consultant
and Advisory Board Member for the Company and other duties as assigned by the
Company President, and not for unrelated personal gain. CONSULTANT shall not,
directly or indirectly, disclose any CONFIDENTIAL INFORMATION to any person,
organization or entity, except in the course of performing duties as a
CONSULTANT of COMPANY and only in the manner prescribed by COMPANY. CONSULTANT
shall abide by those COMPANY policies and regulations established from time to
time for the protection of CONFIDENTIAL INFORMATION. During CONSULTANT'S
association with COMPANY under this Agreement, and after termination thereof,
CONSULTANT shall not directly, or indirectly, either as an CONSULTANT, COMPANY,
agent, principal, partner, stockholder, corporate officer, director, or in any
other individual or representative capacity, engage or participate in any
activity of any nature whatsoever, the performance of which would have a
reasonable likelihood of placing CONSULTANT in conflict with the obligations of
confidence and trust regarding CONFIDENTIAL INFORMATION imposed herein.
13. RETURN OF DOCUMENTS AND MATERIALS. CONSULTANT agrees
that all documents, reports, drawings, materials, designs, plans, computer
programs, proposals, marketing and sales plans, reproductions, and other
documents or things made by
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CONSULTANT or that come into CONSULTANT'S possession in the course of employment
with COMPANY are the property of COMPANY and will not be used by CONSULTANT for
any purpose other than the business of COMPANY. CONSULTANT will not deliver,
reproduce or in any way allow such documents or things to be delivered or be
used by any third parties without specific direction or consent of COMPANY. Upon
termination of this Agreement, CONSULTANT will promptly deliver to COMPANY the
above documents and materials together with any copies thereof.
14. NO DISCLOSURE. CONSULTANT agrees not to divulge,
disclose, convey or make known to others or any other entity, any such
information without the express written consent of the President of HyperBaric
Systems first obtained. CONSULTANT further agrees to take all necessary steps to
safeguard such information to prevent the unauthorized disclosure thereof.
15. INJUNCTION. Recognizing that irreparable damage will
result to the business of COMPANY in the event of the breach of any of these
covenants and assurances by CONSULTANT, the parties hereto agree that if
CONSULTANT shall violate the terms of this Agreement, COMPANY shall be entitled
to an injunction to be issued by any court of competent jurisdiction enjoining
and restraining CONSULTANT and each and every person, firm, association,
partnership, company, or corporation concerned therewith, from the continuance
of such violation of the terms of this Agreement, and in addition thereto,
CONSULTANT shall pay to COMPANY all damages, including reasonable attorneys'
fees sustained by COMPANY by reason of the violation of this Agreement.
16. NO ASSIGNMENT. Neither the CONSULTANT nor COMPANY may
transfer or assign this Agreement, or any right or obligation hereunder, without
the prior written consent of the other party. No right or obligation under this
Agreement may be
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waived, modified, or in any respect altered except by written agreement of the
parties executed in writing by both parties.
17. SUCCESSORS AND ASSIGNS. This agreement shall be binding
on the heirs, executors, successors and assigns of the parties.
18. ATTORNEYS FEES. If any action is brought to enforce any
obligation created under this Agreement, the Court shall award to the prevailing
party, such reasonable fees, costs, and expenses as may have been incurred by
such party in enforcing its rights under this Agreement, including without
limitation, the fees, costs, and expenses of its attorney for services both
before or after litigation is instituted.
19. ENTIRE AGREEMENT. This Agreement may not be changed
except in writing signed by the President of the Company and the CONSULTANT. The
validity, performance, construction, and effect of this Agreement shall be
governed by the laws of the State of California
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IN WITNESS WHEREOF, the parties hereto have executed this
Agreement as of the day and year first above written.
"COMPANY" "CONSULTANT"
HYPERBARIC SYSTEMS. ▇▇▇▇ ▇▇▇▇▇▇
▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇▇▇ ▇▇▇▇ ▇▇▇▇▇▇▇▇▇ ▇▇▇▇
▇▇▇▇ ▇▇▇▇, ▇▇▇▇▇▇▇▇▇▇ ▇▇▇▇▇ ▇▇▇▇▇▇▇, ▇▇ ▇▇▇▇▇
By:
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▇▇▇▇▇ ▇▇▇▇▇▇, PRESIDENT ▇▇▇▇ ▇▇▇▇▇▇, MD, Ph.D.