Exhibit 10.12
AGREEMENT
THIS AGREEMENT IS MADE AT PUNE ON THIS 7TH DAY OF APRIL 1995.
BETWEEN
XX. XXXXXXX XXXXXXXXXX of Pune, Indian Inhabitant, residing at 0000,
Xxxxxxxxx Xxxx, Xxxxxxxxx Xxxxx, Xxxx - 000000, (hereinafter referred to as
"Xx. XXXXXXXXXX" which expression shall unless repugnant to the context or
meaning thereof be deemed to mean and include his heirs, legal
representatives, executors and administrators) of the FIRST PART.
AND
BIO-VED, INC., a company incorporated under the laws of U.S.A. and having its
office at 000 Xxxx Xxxxx # 000, Xxx Xxxx XX 00000, X.X.X. (hereinafter
referred to as "the Company" which expression shall unless repugnant to the
context or meaning thereof be deemed to mean can include its successors and
assigns) of the SECOND PART.
WHEREAS Xx. Xxxxxxxxxx had developed a pharmaceutical preparation (named by
him as RA-1 and hereinafter referred to as "RA-1"). Xx. Xxxxxxxxxx is the
absolute owner of RA-1 and process for extraction and manufacture of RA-1.
According to him, the said formulation RA-1 is useful in the method of
treating musculoskeletal disease;
AND WHEREAS Xx. Xxxxxxxxxx has filed two Applications for patents in the
United States of America for and in respect of RA-1 and the proprietary and
ownership in RA-1 and its uses and applications on 11th July, 1994 under No.
08/273,189 Patent and Trademark Office, Washington DC. USA and the said
Application is pending for registration.
AND WHEREAS by the Agreement dated 28th September 1994, made between the
Company and Xx. XXXXXXXXXX, the latter agreed to grant to the Company the
exclusive right, title and interest in the formulation RA-1 and its uses,
extraction, and machinery to the Company on the terms and conditions stated
therein;
AND WHEREAS Xx. Xxxxxxxxxx has agreed to grant to the Company the exclusive
right for the use, manufacture and sales of formulation RA-1 and patents
thereof with all future improvements and additions thereto to the Company.
NOW THIS INDENTURE WITNESSETH AND IT IS HEREBY AGREED BY AND BETWEEN THE
PARTIES HERETO AS FOLLOWS:
1. Xx. Xxxxxxxxxx hereby agrees for the consideration hereinafter mentioned
to grant to the Company the exclusive license and rights to make use,
development, extraction, manufacture, sale and commercial exploitation of
formulation RA-1, either as sole formulation or in combination with other
products or formulation or formulations throughout the world including
India. (This rights
are hereinafter referred to as "Rights in RA-1").
2. The entire rights in respect of the said formulation RA-1, its method of
extraction and manufacture and commercial exploitation of the said
formulation and all the rights, title and interest in RA-1 shall vest in
the Company and Xx. Xxxxxxxxxx shall not be entitled to interfere in it in
any manner.
3. a) Xx. Xxxxxxxxxx declares that he has received the Examination Reports
from the Patent Office in respect of the said Patent Applications. Xx.
Xxxxxxxxxx will furnish the Company with the complete file of the
above referred Applications and copies of all the papers filed in and
received from the Patent Office in India and keep the Company informed
of the progress of the Applications.
It is hereby agreed by and between the parties hereto that the
following its review of the Applications, the Company will prosecute
the said Patent Applications and Xx. Xxxxxxxxxx agrees to furnish all
information, cooperation and render all assistance to the Company and
its advocates for prosecution of the said Patent Applications till the
patents are sealed and issued in his favour.
Xx. Xxxxxxxxxx agrees to sign Form of Authorization in favour of the
Advocates and Patent Attorney of the Company. Xx. Xxxxxxxxxx also
agrees to sign and execute all applications, letters and other papers,
as may be required by the Company or its Advocates from time to time.
b) The Company shall pay to Xx. Xxxxxxxxxx, a sum of US [*****] only
(inclusive of all costs, expenses, fees and charges) for one patent in
respect of RA-1 including the patent for the said formulation and its
true use, extraction and method of manufacturing. A further sum of US
[*****] will be placed into an interest bearing escrow account in Pune
payable to Xx. Xxxxxxxxxx upon the granting of the US patent
application. In case the patent is not granted by the Patent Office
within three years from February 1, 1995, Xx. Xxxxxxxxxx will return
to the Company within 60 days thereafter, US [*****] plus interest at
the rate of 10% per annum upto the date of payment. All monies in the
escrow account will also be returned to the company at that time. The
period of three years and continuance of the escrow account may be
extended by the Company at its sole discretion. The Company intends to
bring in the market (outside India), the said formulation within a
period of seven years of the granting of the patent. In the event of
the Company failing to commence marketing in respect to said product,
outside India, within the aforesaid period of seven years, Xx.
Xxxxxxxxxx shall have all rights to the said product outside India.
4. Xx. Xxxxxxxxxx shall in regard to the above referred application if and
when patent has been granted, and in regard to the patent, execute a formal
license or
* Confidential provisions omitted and filed separately with the Commission.
several licenses as the case may require, and the parties shall register
with the Patent and Trademark Office, Washington DC., USA. Any such formal
license shall operate subject to the terms of this agreement
and the terms of such formal license shall be deemed to be incorporated
into this agreement. The license hereinafter agreed to be granted is
exclusive both of Xx. Xxxxxxxxxx and those claiming through him, and
others.
5. Xx. Xxxxxxxxxx warrants that there are no subsisting licenses in respect of
formulation RA-1 and he covenants that no further licenses will be granted
to any other person. Xx. Xxxxxxxxxx also confirms that no other person
other than himself has any right, title, interest or claim in the
development of the formulation RA-1 and its uses, extraction and
manufacture and that the ownership and/or intellectual property in RA-1 and
the development, manufacture and extraction of RA-1 belong exclusively to
him.
6. Pending the grant of patents on the applications, payments made by the
Company under this Agreement expressed to be or implied by way of royalty
on sales of the formulation RA-1 shall not operate as an estoppel so as to
prevent the Company from contending that the formulation RA-1 does not
infringe the claims allowed on such applications or any of them.
7. Any or all of the formulation RA-1 manufactured by the Company may be
exported for use or sale to any country of the world notwithstanding that
Xx. Xxxxxxxxxx may be in possession of intellectual property rights in
respect thereof and the rate of payment in respect thereof by the Company
to Xx. Xxxxxxxxxx shall be same as for formulation RA-1 manufactured and
sold in United States of America.
8. The company is hereby granted the right to grant sublicenses to its
affiliated and/or associated companies to use, manufacture and/or sales of
the said formulation RA-1. Sublicenses hereunder shall be non-exclusive and
non-assignable. In the event of sublicensing, the Company shall pay to Xx.
Xxxxxxxxxx, 1% of the royalty received by the said Sublicensing.
9. Nothing in this agreement shall restrict the right of the Company to enter
into sub-contracts for the manufacture of the said formulation RA-1.
10. a) The Company shall pay to Xx. Xxxxxxxxxx for the license and other
rights hereby secured as from the first day of sale outside India, a
royalty calculated at the rate of [*****] of the gross revenue (defined
as sales proceeds received by BIO-VED before any operating expense or
tax liability has been deducted) earned by it by marketing and sale of
the said formulation RA-1. The royalty shall be paid after the accounts
are settled by the Company at the end of each accounting year.
* Confidential provisions omitted and filed separately with the Commission.
b) The Company shall at its decision, elect to market RA-1 outside India,
in advance of the granting of the said patents. The royalty, as
defined in Clause 10a above, shall be calculated at the same rate. If
the patents are not granted during which time the Company, has
commenced marketing outside India, the rights of the company, as
defined in Clause 3-b shall nonetheless apply. Xx. Xxxxxxxxxx and the
Company agree to abide by all other clauses of this Agreement
even in the event that the Patents are not granted.
c) Xx. Xxxxxxxxxx shall do all such acts and things as may be necessary
to maintain and keep on foot the patents.
d) Xx. Xxxxxxxxxx agrees and undertakes not to abandon or allow to lapse
any such patents and not to amend the specification of any of them or
the specification accompanying any application for patent within the
scope of this Agreement without the consent of the Company.
e) Xx. Xxxxxxxxxx shall defend every proceeding or application in the
Patent Office for opposition to the grant of or for revocation of the
patents or the Applications or any of them or in respect of
Applications for improvement inventions by Xx. Xxxxxxxxxx.
f) The Company shall pay for all patent registration fees and all costs
and fees payable in respect of the Applications. In respect of
Applications for patent based on improvement inventions within the
terms of the Agreement, BIO-VED will decide when and if to apply for
patent(s) in respect thereof, and shall bear the costs and fees
thereof.
g) The Company may render all assistance which it may reasonably be
required to render to Xx. Xxxxxxxxxx in the prosecution of the above
referred patent Application. Xx. Xxxxxxxxxx will furnish the company
with a complete file of the above referred Application and copies of
all papers filed in and received from the Patent Office in the USA and
keep the Company informed of the progress of the Application.
h) The Company will pay for all renewal fees and other obligations in
this clause and the Company shall do all things in its power towards
the maintenance of the validity and enforceability of the patent in
the USA and for the prevention of the infringement thereof.
11. a) If any infringement or threatened infringement of any patents comes to
the notice of the Company, it shall, forthwith, notify to Xx.
Xxxxxxxxxx giving particulars thereof.
b) If Xx. Xxxxxxxxxx fails to take any action against the infringers
within a period of 10 days from the date of the notice, in that event
the Company is at liberty, at its own costs, to take an action against
the infringers at the cost and consequence of Xx. Xxxxxxxxxx.
12. a) If any proceedings are threatened or commenced by a third party
against either the Company or sublicensee or any of their customers or
Xx. Xxxxxxxxxx on the ground that the said formulation RA-1 infringe
any patent monopoly rights vested in such third party, the party so
threatened or sued shall inform the other forthwith and the matter
shall be referred to leading patent counsel for the purpose of
obtaining his advice on whether a defense or a threat action will have
a reasonable chance of successful outcome and whether there any
circumstances making it imprudent to defend or commence the
proceedings.
b) If both Xx. Xxxxxxxxxx and the Company decide that any such
proceedings shall be defended, the Company shall bear the whole legal
costs. Damages and costs awarded against Xx. Xxxxxxxxxx in favour of
such third party, shall be borne by Xx. Xxxxxxxxxx.
13. Subject to the provisions for termination hereinafter contained, this
agreement shall operate as from 28 day of September, 1994 and shall
continue in force for the entire terms of the patents.
14. Xx. Xxxxxxxxxx may terminate this Agreement if the Company fails to perform
any of the terms hereof and fails to remedy such breach within 30 days of a
written notice from Xx. Xxxxxxxxxx to remedy the same.
15. The Company shall pay the legal costs incurred in respect of the
preparation of all drafts and engrossment's of this Agreement and of any
formal license hereunder.
16. This Agreement shall enure to the benefit of and be binding upon the
parties hereto and their successors-in-title or assigns as the case may be.
17. Xx. Xxxxxxxxxx hereby agrees that he shall, at the request of the company,
sign and execute all such licenses, deeds, documents, applications,
instruments and writings as may hereinafter be required by the Company for
the purpose of vesting in the Company the Rights in RA-1.
IN WITNESS WHEREOF THE PARTIES HERETO HAVE EXECUTED THESE PRESENTS THE DAY
AND YEAR FIRST HEREIN ABOVE WRITTEN.
Signed and Delivered by
/s/ Xxxxxxx Xxxxxxxxxx /s/ Xxxxx Xxxx
--------------------- ---------------------
Xx. XXXXXXX XXXXXXXXXX XXXXX XXXX
Pune 411 030. President,
BIO-VED, INC. USA.
In the presence of
1) 1) /s/ Xxxx X. Xxxxxx
---------------------
XXXX X. XXXXXX
00, Xxxxxxxxxx Xxxxxxx,
Xxxx 000 000. INDIA.
2) 2)
