ASSIGNMENT OF INTELLECTUAL PROPERTY
CONDITIONAL ON PAYMENT
THIS AGREEMENT is made and entered into as of this 31st day of May,
1999, by and between MOLECULAR BIOLOGY RESOURCES, INC., a corporation
organized under the laws of the State of Delaware ("MBR") and INVITROGEN
CORP., a corporation organized under the laws of the State of Delaware
("INVITROGEN").
RECITALS
A. MBR owns certain rights and title to the Patents (defined
below) and has licensed its interest in the Patents to INVITROGEN pursuant to
a license agreement dated May 10, 1990 (the "License Agreement").
B. INVITROGEN desires to acquire the entire interest in the
Patents and MBR desires to assign its entire interest in the Patents upon
full payment of the obligations set forth below.
AGREEMENTS
In consideration of the recitals and the mutual promises contained
in this Agreement, and other good and valuable consideration the receipt of
which is hereby acknowledged, the parties agree as follows:
1. Definitions.
(a) "Patents" means the patents referenced on Schedule A to
Exhibit B to this Agreement.
(b) "Invention" means all claimed or disclosed features in
the Patents.
(c) "Product" means all devices, methods, compositions of
matter of manufacture embodying the Invention.
(d) "Patent Rights" means (i) the right to make, use and
sell the Inventions and/or Products.
2. Assignment of Invention. MBR agrees to transfer and assign to
INVITROGEN all of its rights in the Patents for one million five hundred
thousand dollars ($1,500,000.00)(the "Purchase Price") as provided in this
Agreement. MBR will execute and deliver to INVITROGEN an assignment of the
Patents in the form attached as Exhibit B contemporaneously with INVITROGEN
delivering to MBR:
(a) $500,000 in cash by wire transfer;
(b) a duly executed promissory note in the amount of $1
million in the form attached as Exhibit A (the "Note"); and
(c) a letter of credit issued by Union Bank in favor of MBR
in the form attached as Exhibit C and in an amount sufficient to cover
principal and interest payments due under the Note.
3. License Agreement Termination. The License Agreement shall
terminate upon MBR's receipt of the documents referred to in section 2(a),
(b) and (c) above and no royalties accruing thereunder will respect to
Products sold after December 31, 1998 shall be payable.
4. Representations and Warranties by MBR.
(a) MBR represents and warrants that it has full and
complete authority to enter into this Agreement and the right to assign the
Patents as provided herein.
(b) MBR represents and warrants that it has taken no actions
which adversely affect the rights of INVITROGEN under this Agreement. MBR
further represents and warrants that it owns all rights, title and interest
in and to the Patents (excluding rights of INVITROGEN or its assignees) free
and clear of any and all liens, security interests and/or third party
encumbrances.
(c) MBR represents and warrants that no licenses, covenants
or agreements have been granted or entered into by MBR relating to the
Patents, except those entered into with the INVITROGEN, and no licenses,
covenants or agreements will be granted or entered into by the MBR relating
to the Patents subsequent to the date of this Agreement.
(d) INVITROGEN possesses the necessary expertise and skill
in the technical areas in which the Invention is involved to make, and has
made, its own evaluation of the capabilities, safety, utility, and commercial
application of the Invention. Accordingly, MBR EXPRESSLY DISCLAIMS ANY
WARRANTIES OF MERCHANTABILITY OR FITNESS FOR A
2
PARTICULAR PURPOSE AND ANY OTHER IMPLIED WARRANTIES WITH RESPECT TO THE
CAPABILITIES, SAFETY, UTILITY, OR COMMERCIAL APPLICATION OF THE INVENTION.
(e) To MBR's knowledge, without investigation, the Patents
are not being infringed by any third party.
5. REPRESENTATIONS AND WARRANTIES BY INVITROGEN.
(a) INVITROGEN represents and warrants that it has full and
complete authority to enter into this Agreement and to transfer payments to
MBR.
(b) INVITROGEN acknowledges that an inducement for MBR to
enter into this Agreement is full payment of all past royalties owed to MBR
by INVITROGEN. Accordingly, INVITROGEN represents and warrants that all
royalties under the License Agreements payable with respect to Products sold
on or before December 31, 1998, have been paid in full.
6. NOTICES. Any notice, correspondence or other communication
required or permitted by this Agreement, unless otherwise specified, shall be
in writing and shall be deemed properly given when sent by first class mail,
certified or registered postage prepaid, or by facsimile transmission and
addressed as provided below.
(a) If to MBR:
Xxxxx X. Xxxxxxx, President
Molecular Biology Resources, Inc.
0000 Xxxx Xxxxxxxx Xxxxxx
Xxxxxxxxx, XX 00000
(b) If to INVITROGEN:
LAW DEPARTMENT
INVITROGEN CORP.
0000 XXXXXXX XXXXXX
XXXXXXXX, XX 00000
7. GOVERNING LAW. This Agreement shall be exclusively construed,
applied, performed and enforced according to federal law of the United
3
State of America and/or the law of the State of Wisconsin, USA, and each
party to this Agreement hereby consents to the exclusive jurisdiction of any
competent United States federal court and/or court of law in the State of
Wisconsin.
8. ENTIRE AGREEMENT. This Agreement constitutes and contains the
entire transaction of the parties with respect to the subject matter hereof.
This Agreement supersedes any and all prior understandings and agreements
between the parties. Any modification of this Agreement shall be in writing
and executed in the same manner as this Agreement.
IN WITNESS WHEREOF, the parties have executed this Agreement or
cause this Agreement to be executed of the day, month and year first above
written.
MOLECULAR BIOLOGY INVITROGEN CORP.
RESOURCES, INC.
By: /s/ Xxxxx X. Xxxxxxx By: [illegible]
------------------------------ -----------------------------
Xxxxx X. Xxxxxxx, President
Date: May 28, 1999 Date: May 28, 1999
---------------------------- ---------------------------
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EXHIBIT A
TERM NOTE
$1,000,000.00 Milwaukee, Wisconsin
May 31, 1999
FOR VALUE RECEIVED, the undersigned, INVITROGEN CORP. ("Maker"),
promises to pay to the order of MOLECULAR BIOLOGY RESOURCES, INC. ("MBR") at
0000 Xxxx Xxxxxxxx Xxxxxx, Xxxxxxxxx, XX 00000 or at such other address as
the holder may designate to the Maker in writing, the principal sum of One
Million Dollars ($1,000,000) payable as follows: a $400,000 principal payment
on June 1, 2000, a $300,000 principal payment on June 1, 2001, a $200,000
principal payment on June 1, 2002, and a $100,000 principal payment on June
1, 2003, plus interest payable as set forth below. All payments shall be made
by wire transfer as directed by MBR.
This Note bears interest on the outstanding principal balance at the
rate of 6% per annum, compounded annually, payable with each installment and
at maturity, by acceleration or otherwise. Unpaid principal and interest
shall bear interest from the time due (whether by acceleration or lapse of
time) until paid at the rate of 12.5% per annum. All principal and interest
shall be payable in lawful money of the United States of America.
The unpaid balance hereunder shall mature and become immediately payable
if any installment of principal or interest is not paid when due under this
Note or the Maker or any surety, endorser, or guarantor becomes the subject
of bankruptcy or other insolvency proceedings. The holder's receipt of any
payment on this Note after the occurrence of a default shall not constitute a
waiver of the default or the holder's rights and remedies upon such default.
This Note may be prepaid in whole or in part at any time, without
penalty or interest.
Maker agrees to pay all costs of collection before and after judgment,
including reasonable attorneys' fees. Maker, for itself, its legal
representatives, successors and assigns, hereby waives presentment, protest,
demand and notice of acceleration, nonpayment and dishonor. This Note is
secured by all existing and future security agreements and mortgages between
the holder and Maker.
This Note is executed in and is governed by the laws of the State of
Wisconsin. To the extent not prohibited by law, Maker consents that venue for
any legal proceeding relating to collection of this Note shall be, at the
holder's option, the county in which the holder maintains its principal place
of business, the county in which Maker maintains its principal place of
business, or the county in which this Note was executed.
This Note shall be freely transferable and assignable by the holder and
may be modified or discharged only by an agreement in writing executed by
the party against whom enforcement of any modification or discharge is sought.
INVITROGEN CORP.
BY_____________________________
Its__________________________
EXHIBIT B
ASSIGNMENT OF INTELLECTUAL PROPERTIES
THIS ASSIGNMENT OF INTELLECTUAL PROPERTIES, effective May 31, 1999, is
between MOLECULAR BIOLOGY RESOURCES, INC., a Delaware corporation
("Assignor") and INVITROGEN CORP., a Delaware corporation ("Assignee").
RECITALS
A. Assignor is the owner of certain rights, title and interest in and to
certain intellectual properties, as specified below.
B. Assignor desires to assign all its rights, title and interest in such
properties to Assignee, and Assignee desires to accept such assignment.
AGREEMENTS
In consideration of the recitals and mutual agreements which follow and
other good and valuable consideration, the receipt and sufficiency of which
is hereby acknowledged, Assignee and Assignor agree as follows:
1. ASSIGNMENT OF PATENTS, PATENT APPLICATIONS AND INVENTIONS. Assignor,
irrevocably and forever, assigns and transfers to Assignee, its successors
and assigns, Assignor's entire rights, title and interest in and to the
patents, together with the inventions and improvements covered thereby,
listed in Schedule A attached hereto. Assignor also assigns and transfers its
entire rights, title, and interest in and to any extension, reissue or
reexamination patent or the equivalent thereof that may result from any such
patent. Assignor also hereby assigns and transfers its entire rights, title,
and interest in and to any other protectable interest or invention underlying
any said patent, and in and to any patent rights relating to or depending
from any said invention or patent, including all rights to claim priority on
and to any and all improvements and inventions part of and underlying the
patents listed in Schedule A.
2. ASSIGNMENT OF ACCRUED ENFORCEMENT RIGHTS. Assignor assigns and
contributes to Assignee any and all claims or causes of action for
infringement or unauthorized use of any of the intellectual properties listed
on Schedule A that may have accrued prior to the effective date of this
Agreement, together with the right to bring suit for and/or initiate any
proceeding to collect any and all damages arising from any such claim or
cause of action.
3. FURTHER ASSURANCES. Assignor shall provide Assignee, its successors,
assigns or other legal representatives, cooperation and assistance at
Assignee's reasonable request and expense, such assistance including (a)
making available technical information and know-how relating to any patent or
patent application listed in Schedule A; and (b) the execution and delivery
of any and all affidavits, declarations, oaths exhibits, assignments, powers
of attorney or other documentation as may be reasonably required: in the
preparation, prosecution and/or maintenance of any applications for patents or
registration of intellectual property assigned pursuant to this Assignment;
in the prosecution or defense of any interference, opposition, infringement
or other proceedings that may arise in connection with any of the
intellectual property assigned pursuant to this Assignment; and in the
implementation or perfection of this Assignment.
For Assignor, MOLECULAR BIOLOGY RESOURCES, INC.:
BY:____________________________
Printed Name:
Title:
Subscribed and sworn to before me
this ____ day of ____________, 19__.
____________________________________
Notary Public, State of Wisconsin
My commission expires:______________
For Assignee, INVITROGEN CORP.:
BY:____________________________
Printed Name:
Title:
Subscribed and sworn to before me
this ____ day of ____________, 19__.
____________________________________
Notary Public, State of Wisconsin
My commission expires:______________
SCHEDULE A
PATENTS AND PATENT APPLICATIONS
United States Patent No. 5,827,657 for "Direct cloning of PCR amplified
nucleaic acids" filed July 18, 1996.
United States Patent No. 5,487,993 for "Direct cloning of PCR amplified
nucleaic acids" filed September 9, 1993.
European Patent No. 0550693 and corresponding national patents.
European Patent Application No. 96250006.2 pending.
TERM NOTE
$1,000,000.00 Milwaukee, Wisconsin
May 31, 1999
FOR VALUE RECEIVED, the undersigned, INVITROGEN CORP. ("Maker"),
promises to pay to the order of MOLECULAR BIOLOGY RESOURCES, INC. ("MBR") at
0000 Xxxx Xxxxxxxx Xxxxxx, Xxxxxxxxx, XX 00000 or at such other address as
the holder may designate to the Maker in writing, the principal sum of One
Million Dollars ($1,000,000) payable as follows: a $400,000 principal payment
on June 1, 2000, a $300,000 principal payment on June 1, 2001, a $200,000
principal payment on June 1, 2002, and a $100,000 principal payment on
June 1, 2003, plus interest payable as set forth below. All payments shall be
made by wire transfer as directed by MBR.
This Note bears interest on the outstanding principal balance at the
rate of 6% per annum, compounded annually, payable with each installment and
at maturity, by acceleration or otherwise. Unpaid principal and interest
shall bear interest from the time due (whether by acceleration or lapse of
time) until paid at the rate of 12.5% per annum. All principal and interest
shall be payable in lawful money of the Unites States of America.
The unpaid balance hereunder shall mature and become immediately
payable if any installment of principal or interest is not paid when due
under this Note or the Maker or any surety, endorses, or guarantor becomes
the subject of bankruptcy or other insolvency proceedings. The holder's
receipt of any payment on this Note after the occurrence of a default shall
not constitute a waiver of the default or the holder's rights and remedies
upon such default.
This Note may be prepaid in whole or in part at any time, without
penalty or interest.
Maker agrees to pay all costs of collection before and after judgment,
including reasonable attorneys' fees. Maker, for itself, its legal
representatives, successors and assigns, hereby waives presentment, protest,
demand and notice of acceleration, nonpayment and dishonor. This Note is
secured by all existing and future security agreements and mortgages between
the holder and Maker.
This Note is executed in and is governed by the laws of the State of
Wisconsin. To the extent not prohibited by law, Maker consents that venue for
any legal proceeding relating to collection of this Note shall be, at the
holder's option, the county in which the holder maintains its principal place
of business, the county in which Maker maintains its principal place of
business, or the county in which this Note was executed.
This Note shall be freely transferable and assignable by the holder
and may be modified or discharged only by an agreement in writing executed by
the party against whom enforcement of any modification or discharge is sought.
INVITROGEN CORP.
BY (illegible)
----------------------
Its Sr. VP & CFO
----------------------
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ASSIGNMENT OF INTELLECTUAL PROPERTIES
THIS ASSIGNMENT OF INTELLECTUAL PROPERTIES, effective May 31, 1999, is
between MOLECULAR BIOLOGY RESOURCES, INC., a Delaware corporation
("Assignor") and INVITROGEN CORP., a Delaware corporation ("Assignee").
RECITALS
A. Assignor is the owner of certain rights, title and interest in
and to certain intellectual properties, as specified below.
B. Assignor desires to assign all its rights, title and interest in
such properties to Assignee, and Assignee desires to accept such assignment.
AGREEMENTS
In consideration of the recitals and mutual agreements which follow
and other good and valuable consideration, the receipt and sufficiency of
which is hereby acknowledged, Assignee and Assignor agree as follows:
1. ASSIGNMENT OF PATENTS, PATENT APPLICATIONS AND INVENTIONS.
Assignor, irrevocably and forever, assigns and transfers to Assignee, its
successors and assigns, Assignor's entire rights, title and interest in and
to the patents, together with the inventions and improvements covered
thereby, listed in Schedule A attached hereto. Assignor also assigns and
transfers its entire rights, title, and interest in and to any extension,
reissue or reexamination patent or the equivalent thereof that may result
from any said patent. Assignor also hereby assigns and transfers its entire
rights, title, and interest in and to any other protectable interest or
invention underlying from any said patent, and in and to any patent rights
relating to or depending from any said invention or patent, including all
rights to claim priority on and to any and all improvements and inventions
part of and underlying the patents listed in Schedule A.
2. ASSIGNMENT OF ACCRUED ENFORCEMENT RIGHTS. Assignor assigns and
contributes to Assignee any and all claims or causes of action for
infringement or unauthorized use of any of the intellectual properties listed
on Schedule A that may have accrued prior to the effective date of this
Agreement, together with the right to bring suit for and/or initiate any
proceeding to collect any and all damages arising from any such claim or
cause of action.
3. FURTHER ASSURANCES. Assignor shall provide Assignee, its
successors, assigns or other legal representatives, cooperation and
assistance at Assignee's reasonable request and expense, such assistance
including (a) making available technical information and know-how relating to
any patent or patent application listed in Schedule A; and (b) the execution
and delivery of any and all affidavits, declarations, oaths, exhibits,
assignments, powers of attorney or other documentation as may be reasonably
required: in the preparation, prosecution and/or maintenance of any
applications for patents or registration of the intellectual property
assigned pursuant to this Assignment; in the prosecution or defense of any
interference, opposition, infringement or other proceedings that may arise in
connection with any of the intellectual property assigned pursuant to this
Assignment; and in the implementation or perfection of this Assignment.
For Assignor, MOLECULAR BIOLOGY RESOURCES, INC.:
BY /s/ Xxxxx X. Xxxxxxx
------------------------------
Printed Name: Xxxxx X. Xxxxxxx
Title: President
Subscribed and sworn to before me
this 28th day of May, 1999
/s/ Xxxx X. Xxxxxx
-----------------------------------
Notary Public, State of Wisconsin
My commission expires: 1-26, 2003
-------------
For Assignee, INVITROGEN CORP.
BY /s/ Xxxxxx Xxxxxxxx
------------------------------
Printed Name: Xxxxxx Xxxxxxxx
Title: Gen. Counsel &
Secretary
Subscribed and sworn to before me
this 2 day of June, 1999
/s/ Xxxxxxx Xxxxxxx
-----------------------------------
Notary Public, State of California [SEAL]
My commission expires: 6/11/99
-------------
SCHEDULE A
PATENTS AND PATENT APPLICATIONS
United States Patent No. 5,827,657 for "Direct cloning of PCR amplified
nucleaic acids" filed July 18, 1996.
United States Patent No. 5,487,993 for "Direct cloning of PCR amplified
nucleaic acids" filed September 9, 1993.
European Patent No. 0550693 and corresponding national patents.
European Patent Application No. 96250006.2 pending.
