INTELLECTUAL PROPERTY AGREEMENT
Exhibit 10.2
This
Intellectual Property Agreement (this “Agreement”) is
entered into on May 12, 2020 (“Effective Date”),
concerning the pursuits set forth herein for the collective
development, implementation and commercialization of a potential
treatment for the COVID-19 virus and its effects on the human body
(collectively referred to herein as the “Joint
Venture”) by and between:
Xxxx
Enterprises, LLC, a Limited Liability Company organized under the
laws of the Commonwealth of Pennsylvania
(“Xxxx”),
Premier
Biomedical, Inc. (OTC Pink: BIEI), a Nevada corporation
(“Premier”),
Technology
Health, Inc. (OTC Pink: HALB), a Colorado corporation f/k/a Halberd
Corporation (“THI”),
Each shall be referred to as a “Party” and collectively
as the “Parties.”
RECITALS:
WHEREAS, Xxxx is a single member LLC with Xx. Xxxxxxxx Xxxxxx as
the sole member.
WHEREAS,
Premier is publicly traded on the Pink Sheets, trading symbol
BIEI.
WHEREAS,
THI is publicly traded on the Pink Sheets, trading symbol
HALB.
WHEREAS,
Xxxx is owner of U.S. Patent 9,216,386 and U.S. Patent 8,758,287
collectively referred to as the “Issued
Patents”.
WHEREAS,
Premier has an Exclusive License to the Issued Patents via an
Agreement executed by Xxxx and Premier on May 12, 2010 (“2010
Agreement”).
WHEREAS, Xxxx has subsequently filed numerous
patent applications on subject matter related to the Issued Patents
which are listed in Appendix
A.
WHEREAS, Xxxx and Premier expanded Premier’s
Exclusive License to include all the Applications listed in
Appendix
A via a Third Addendum to the
2010 Agreement executed by Xxxx and Premier on the Effective Date
(“2020 Agreement”).
WHEREAS, Xxxx has filed US provisional patent
applications specifically related to methods of treatment for
Covid-19 as starred in Appendix A
(Covid-19 Applications) to which
Premier has an exclusive license via the 2020
Agreement.
WHEREAS, this
Agreement contemplates the development of a methodology for the
extracorporeal treatment of a patient’s body fluid to treat
Covid-19 (Field of Covid-19 Treatment).
WHEREAS, the
Parties are desirous of collaborating for the creation and
distribution of products designed in the Field of Covid-19
Treatment (Covid-19 Licensed Products)
WHEREAS, THI is
desirous of exclusively licensing the Applications listed in
Appendix
A;
WHEREAS, Premier is
willing to assign its rights in the 2010 Agreement/2020
Agreement;
WHEREAS, Xxxx in
this Agreement gives its written consent for Premier to assign its
rights in the 2010 Agreement/2020 Agreement to
THI;
NOW, THEREFORE, for good and adequate consideration, the receipt of
which is hereby acknowledged, the Parties covenant, promise and
agree as follows:
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AGREEMENT
1. RECITALS. The
Recitals are hereby incorporated herein by this reference, as if
fully restated herein.
2. LICENSING. To the extent that terms in the 2010
Agreement/2020 Agreement are not contradicted or revised here, the
terms as stated in 2010 Agreement/2020 Agreement remain in full
effect, are controlling, and apply to THI licensing of the
Applications in Appendix
A and the Licensed Products derived therefrom.
(a) License - THI is granted the following rights
to the Applications in Appendix A and the Licensed
Products derived therefrom:
Scope.
The licenses granted herein are exclusive worldwide licenses
to:
1.
make, have made, use, lease, sell and import Licensed Products for
the legal purposes of researching, developing, manufacturing,
assembling, distributing, and selling the Licensed
Products;
2.
make, have made, use and import machines, tools, materials and
other instrumentalities, insofar as such machines, tools, materials
and other instrumentalities are involved in or incidental to the
research, development, manufacture, testing or repair of Licensed
Products which are or have been made, used, leased, owned, sold or
imported by the Licensee; and
3.
convey to any customer of the Licensee, with respect to any
Licensed Product which is sold or leased to such customer, rights
to use and resell such Licensed Product as sold or leased by
Licensee (whether or not as part of a larger combination);
provided, however, that no rights may be conveyed to customers with
respect to any Invention which is directed to (i) a combination of
such Licensed Product (as sold or leased) with any other product,
(ii) a method or process which is other than the inherent use of
such Licensed Product itself (as sold or leased), or (iii) a method
or process involving the use of a Licensed Product to manufacture
(including associated testing) any other product.
4.
Licenses granted herein are solely for products in the form sold by
the Licensee and are not to be construed either (i) as consent by
the Xxxx to any act which may be performed by the Licensee, except
to the extent impacted by a patent licensed herein to the Licensee,
or (ii) to include licenses to contributorily infringe or induce
infringement under U.S. law or a foreign equivalent
thereof.
5. The grant of each
license hereunder includes the right to grant sublicenses to
Related Companies for so long as it remains a Related Companies.
Any such sublicense may be made effective retroactively, but not
prior to the effective date hereof, nor prior to the sublicensee's
becoming a Related Company.
(b) Reports and Payments – For the
above exclusive licensing rights, THI will pay for various costs
associated with this Agreement. The costs listed below are to be
hereinafter referred to as the “License Fee”, to be
paid by and through THI. The use of the License Fee is further
broken down below:
1. $20,000, payable to Xxxx Enterprises, LLC or as it
directs, which has already been
paid into the account of Xxxx Enterprises, LLC at the Xxxxx Law
Group
2. The
total sum of non-paid invoices (estimated to be approximately
$80,000) payable to Xxxx Enterprises, LLC,
previously owed by Premier to Xxxx up until the effective date of
this Agreement, payable in
total by no later than
July 20, 2020.
3. Reports.
a
.. Within thirty (30) days after the end of each quarterly period
ending on March
31st,
June 30th, September 30th, or December 31st, commencing with the
one-year anniversary of the effective date of this Agreement, THI
shall furnish to Xxxx a statement certified by a responsible
official of the Licensee showing in a manner acceptable to
Xxxx:
i. all
Licensed Products which were sold, leased or put into use during
such
quarterly period by
THI or any of its Related Companies, the
gross
sales received for the Licensed Products, and the Fair Market
Values
of such
Licensed Products;
ii. all
services performed by THI or any of its Related
Companies that
directly or
indirectly used Licensed Product, the gross sales received
by
the
services, and the Fair Market Value of such services;
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iii.
the amount of royalty payable thereon, and
iv. if
no Licensed Product has been so sold, leased or put into use or if
no
services have been
performed, the statement shall show that fact.
b. Within
such thirty (30) days, THI shall pay in United States dollars to
Xxxx at XX Xxx 0000, Xxxxxxxxx, XX 00000, or other address provided
by Xxxx, the royalties payable in accordance with such statement.
Any conversion to United States dollars shall be at the prevailing
rate for bank cable transfers as quoted for the last day of such
quarterly period by leading United States banks in New York City
dealing in the foreign exchange market.
c.
Overdue payments hereunder shall be subject to a late payment
charge calculated at an annual rate of three percent (3%) over the
prime rate or successive prime rates (as posted in New York City)
during delinquency. If the amount of such charge exceeds the
maximum permitted by law, such charge shall be reduced to such
maximum.
(c) THI further agrees to pay Intellectual
Property Prosecution and Costs Applications in Appendix A directly to Xxxx.
1. Costs. THI shall reimburse Xxxx for all IP Costs
incurred on behalf of THI, as well as pre-paid IP Costs incurred
prior to the Effective Date of this Agreement, including the costs
of provisional and non-provisional applications that are filed to
preserve Intellectual Property. Reimbursement for pre-paid IP Costs
shall be in accordance with 2 (b) 2
above.
2. Extension of Application. By written notice to
Xxxx and at least ninety (90) days before the non-extendable due
date for the filing of a national phase application of an
Application, THI shall elect those countries or authorities in
which it desires to file a patent application based on the
Application. Intellectual Property rights in an unelected
country shall revert to Xxxx.
3. Notice to
Licensee. Before payment of any IP
Cost, Xxxx shall notify THI for a time period being the lesser of
(i) at least sixty (60) days before the IP Cost is due or (ii) as
soon as is practicable after receiving knowledge of the IP Cost.
The notice will identify (i) the Application or Patent, (ii) the
country, (iii) the reason for the IP Cost, and (iv) the Due Date
for payment. THI shall then affirm or deny payment. Affirmation of
payment must be received by Xxxx within fourteen (14) days of the
mailing date of the notice or the THI shall be deemed to have
denied payment.
a. If THI affirms a payment, THI shall reimburse Xxxx
for all IP Costs arising from the payment and shall then retain its
license for the Application or Patent in that
country.
b. If THI denies payment, THI shall have no
obligation to pay IP Costs associated with the Application or
Patent in that country, but the
license and all associated rights for that Application or Patent
shall revert to Xxxx.
4. Reimbursement by Licensee. THI shall prepay Xxxx
for any affirmed IP Cost before payment is to be made by Xxxx. Xxxx
shall have no duty to pay an IP Cost, whether affirmed or not
affirmed, for which Xxxx does not receive prepayment. If THI does
not pay Xxxx by the Due Date, the Application or Patent
shall revert to Xxxx as if THI
had denied payment under section 2(c)3.
5. Reversion of License. If a reversion occurs
under this Article, the license in that country in which reversion
has occurred will be terminated, and
THI shall have no further right in the Application or Patent
for that country. The right shall revert to Xxxx who will then have the right to pursue protection
for the reverted Application or Patent. Xxxx has no further duty to
THI for a reverted Application
or Patent.
6. Applications. Defines as all applications of the
United States and foreign countries, including Patent Cooperation
Treaty applications that claim priority to the Applications listed
in Appendix
A, including any
non-provisional applications, continuations, continuations-in-part,
divisions, reissues, re-examinations or extensions thereof; and all
applications including those applications filed in the United
States or applications filed under the Patent Cooperation Treaty on
subject matter directly related to the Applications in
Appendix
A whether or not priority to
said applications was claimed.
(d)
Royalty Payments.
1.
Royalty payments are payable from THI to Xxxx Enterprises, LLC and
will be in the amount of 5% of the Fair Market Value
of:
a. Licensed Product that is sold, leased or put into
use by the THI or any Related Companies in the preceding calendar quarter;
and
b. any service performed by THI or any Related
Companies that directly or indirectly uses Licensed
Product.
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2. This
License does not include a minimum annual royalty payable by THI to
Xxxx.
3. Fair
Market Value” means, with respect to any Licensed Product
sold, leased or put into use, the Selling Price actually obtained
in an arm’s length transaction for a product comprising a
Licensed Product in the form in which the product is sold, whether
or not assembled and without excluding any components or
subassemblies thereof which are included in such Selling
Price.
“Selling
price” shall exclude: usual trade discounts actually allowed
to unaffiliated persons or entities such as packing costs, costs of
transportation and transportation insurance, and import, export,
excise, sales and value added taxes, and custom
duties.
4. In addition to the 5% amount calculated pursuant
to the preceding paragraph, there shall be an identical 5% amount
to be paid from THI, per Premier’s consideration,
to certain shareholders of Premier, as
identified by Premier, as of a record date to be determined in the
future, on an annual basis, commencing on the one-year anniversary
of this Agreement until a total amount of $40,000,000 has
been paid to Premier. This royalty is separate and distinct from
the royalty obligation to Xxxx as stated in 2(d)1.
(e)
If THI does not make the obligatory payments as
stated in 2(b) by the dates stated, the Exclusive License will
revert back to Premier.
3. JOINT
VENTURE
(a)
Premier and THI will jointly cooperate in developing
Covid-19 Licensed Products, to be memorialized by them in a
Technology Acquisition and Financing Agreement. For the joint
venture the following payments will be made by and through
THI:
1.
$750,000, payable to THI in total by no later than June 20 ,
2020. The payment will be
for developing fluorescently-conjugated antibodies in the Field of
Covid-19 Treatments.
2.
$1,150,000, payable to THI in total by no
later than July 30, 2020. The payment
will be for development of laser technology in the Field of
Covid-19 Treatments.
3. $500,000
payable to a subsidiary of THI to be formed in the United Kingdom,
for research and development to be performed in the United Kingdom,
by and at the direction of Xxxxxxxx Xxxxxxxxx and/or Datatechnics
Inc. as invoiced by Xxxxxxxx Xxxxxxxxx and/or Datatechnics Inc.,
for expenses and at an hourly rate to Xxxxxxxx Xxxxxxxxx and his
designees.
(b).
Premier may partner with other
organizations as needed to effectuate the development of technology
in the Field of Covid-19 Treatments.
(c)
Xxxx will have no direct role in the development of technology in
the Field of Covid-19 Treatment or in the Joint Venture. Xxxx,
through its sole member Xx. Xxxxxxxx Xxxxxx, may from time to time
be consulted regarding the development of technology in the Field
of Covid-19 Treatment. This consultation will be done solely at
Marv’s discretion.
(d)
Premier and THI may execute separate agreements further
outlining the conditions of the Joint Venture to effectuate the
development of technology in the Field of Covid-19
Treatment.
(e)
If THI does not make the obligatory payments as
stated in 3(a) by the dates stated, the Exclusive License will
revert back to Premier, provided, however, that in such event, THI
would still be entitled to a proportionate interest in any Covid-19
Licensed Products, such portion being equal to a fraction, the
numerator of which shall be the actual amount paid and the
denominator of which shall be $2,000,000.
4.
NO BROKERAGE FEE. Each Party hereby represents and warrants that
there has been no agreement which might cause any other person to
become entitled to a finder’s fee, a broker’s fee or a
commission as a result of the transactions contemplated
hereunder.
5.
REQUIREMENT. The Parties agree that Xxxx and/or Xxxxxxxx X.
Xxxxxx shall have no obligation
and/or involvement in any capital raising activities for THI or
Premier at any time and for any reason. Further, the 150,000,000
(one hundred and fifty million) stock warrants previously ceded to
Xxxxxxxx X. Xxxxxx by Halberd/THI shall not be eliminated,
cancelled, or altered in any way, and for any reason, unless
specifically directed at the request of Xxxxxxxx X.
Xxxxxx.
6. NONEXCLUSIVE ENGAGEMENT; EXTENT OF
SERVICES. The Parties agree that the relationship contemplated by
this Agreement is a nonexclusive engagement/venture and that each
Party now renders and may continue to render consulting services
and/or sell or provide products to other companies that may or may
not conduct activities similar to those of each other
Party.
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7.
CONFIDENTIALITY.
Each Party agrees to hold in confidence confidential information
acquired in the course of this relationship with the other Parties
and their associates. Each Party agrees to refrain from, either
during period of this Agreement or at any other time thereafter,
disclosing, using or disseminating such confidential information,
for its or another’s benefit, in any way acquired in the
course of any association arising out of this Agreement. For
purposes of this Agreement, confidential information shall include
contacts and introductions to third parties and information
relating thereto. Confidential information, knowledge or data of a
Party and/or its affiliates shall not include any information which
is or becomes generally available to the public other than as a
result of a disclosure by such Party or its
representatives.
Confidential information should further include:
all information (in whatever form and whether or not marked or
otherwise identified as confidential), including financial
statements, business plans or records, concepts, marketing studies,
projections, sales or pricing information, customer or supplier
information, agreements with third parties, Intellectual Property
(as defined below) or other data provided by or on behalf of the
Disclosing Party to the Recipient and (ii) all notes,
analyses, compilations, studies, interpretations or other material
prepared by the Recipient or its Representatives which contain or
reflect or are based upon, in whole or in part, information
furnished by the Disclosing Party pursuant to this Agreement.
“Confidential Information” does not include information
which (a) is obtained by the Recipient from a third party who
is not known to Recipient to be prohibited from transmitting such
information to the Recipient, or (b) was already in the
Recipient’s possession prior to its entry into this Agreement
and which is not subject to any restrictions which would prohibit
its disclosure to the Recipient in connection with the
parties’ evaluation of the Transaction or (c) is or
becomes generally available to the public other than as a result of
a breach of any confidentiality restrictions to the
Recipient.
“Intellectual
Property” shall mean any Confidential Information proprietary
to the Disclosing Party and any trademark, service xxxx, trade
name, invention, improvement, discovery, patent, patent
application, trade secret, copyright, copyrightable work, trade
dress, mask work, computer program or any other type of proprietary
intellectual property to which the Disclosing party claims any
rights, including any registrations or applications for
registration or renewals of any of the foregoing, and all copies
and tangible embodiments of the foregoing in whatever form or
medium. Confidential information shall also mean any information
not generally made available or known to the public and shall
include, without limitation, all ideas, inventions, software,
documentation, flowcharts, diagrams, improvements, discoveries,
research and development, know how, formulas, compositions,
manufacturing and production processes and techniques, technical
data, designs, drawings, plans, specifications, and all other
information or material within the definition of a “trade
secret” as set forth in the Uniform Trade Secret Act, or
which either party otherwise reasonably considers
proprietary.
Copies;
Return of Confidential Information. The parties may copy or
otherwise reproduce any written Confidential Information; provided,
however, that all such Confidential Information and copies thereof
shall be promptly returned to the Disclosing Party or, at the
option of the Disclosing Party, destroyed, upon the Disclosing
Party’s request, such destruction to be certified in
writing.
8.
VENUE. This Agreement and the rights of the Parties hereunder shall
be governed by and construed in accordance with the laws of the
Commonwealth of Pennsylvania including all matters of construction,
validity, performance, and enforcement and without giving effect to
the principles of conflict of laws. Venue for any action brought
under this Agreement shall be in the appropriate court in Xxxxxx
County, Pennsylvania.
9. MATERIALITY. The Parties agree
and stipulate that each and every term and condition contained in
this Agreement is material, and that each and every term and
condition may be reasonably accomplished within the time
limitations, and in the manner set forth in this Agreement. The
Parties agree and stipulate that time is of the essence with
respect to compliance with each and every item set forth in this
Agreement.
10. AMENDMENTS/BINDING. This
Agreement may not be amended or modified except by written
agreement subscribed by all of the Parties to be charged with such
modification. This Agreement shall be binding upon and shall inure
to the benefit of the Parties hereto and their respective partners,
employees, agents, servants, heirs, administrators, executors,
successors, representatives and assigns.
11. ENTIRE AGREEMENT. This Agreement, along
with the exhibits hereto, sets forth the entire agreement and
understanding of the Parties hereto and supersedes any and all
prior arrangements and understandings related to the subject matter
hereof except for as specifically stated in this Agreement
with regards to the 2010 Agreement and the 2020 Agreement
and licensing
rights. No understanding, promise,
inducement, statement of intention, representation, warranty,
covenant or condition, written or oral, express or implied, whether
by statute or otherwise, has been made by any Party hereto which is
not embodied in this Agreement or the written statements,
certificates, or other documents delivered pursuant hereto or in
connection with the transactions contemplated hereby, and no Party
hereto shall be bound by or liable for any alleged understanding,
promise, inducement, statement, representation, warranty, covenant
or condition not so set forth.
12. COUNTERPARTS. This Agreement may
be executed in one or more counterparts, each of which when
executed and delivered shall be an original, and all of which when
executed shall constitute one and the same instrument.
13. EXPENSES ASSOCIATED WITH THIS AGREEMENT.
Xxxx shall be reimbursed in full for the cost(s) of all legal
expenses associated with this agreement by THI.
[remainder of page intentionally left blank; signature page to
follow]
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IN WITNESS WHEREOF, the Parties hereto, agreeing to be bound
hereby, execute this Agreement upon the date first set forth
above.
Premier
Biomedical, Inc.:
/s/
Xxxxxxx
Xxxxxxx
Date__________
By: Xxxxxxx Xxxxxxx, CEO
Technology Health,
Inc.:
/s/
Xxxxx Xxxxxxxxxxx XxXxxx
Date___________
By: CEO
Xxxx
Enterprises, LLC:
/s/
Xxxxxxxx
Xxxxxx
Date__________
By: Xxxxxxxx Xxxxxx
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