Exhibit 10.21
LICENSE AGREEMENT
THIS LICENSE AGREEMENT ("Agreement") is entered into as of January 15,
2004 ("Effective Date") between Biophan Technologies, Inc. ("Licensee"), a
Nevada Corporation having its principal place of business at 000 Xxxxxx Xxxxxx
Xxxxx, Xxxxx 000, Xxxx Xxxxxxxxx, Xxx Xxxx 00000, and Nanoset, LLC ("Licensor"),
a New York limited liability company having a place of business at 000 Xxxx
Xxxxxxxxxx Xxxxxx, Xxxxx 0000, Xxxx Xxxxxxxxx, Xxx Xxxx 00000.
Licensee desires to acquire rights to certain technology as described
in and pursuant to the terms of this Agreement and Licensor is willing to grant
such rights. Therefore, the parties agree as follows:
1. DEFINITIONS
The following terms in this Agreement shall have the
definitions set forth below.
1.01 "Affiliate" means any Entity which directly or indirectly
controls, is controlled by, or is under common control with, a party. For the
purposes of this Section, "control" means the beneficial ownership of at least
fifty percent (50%) of the voting stock of the Entity, the direct or indirect
power to appoint at least one-half of the directors or managers of the Entity,
or the power by contract or otherwise to direct the affairs of such Entity.
1.02 "Allocated Net Sales Revenue" means the gross amount
invoiced by Licensee or any Affiliate for a Combination Product, less the
applicable allowable deductions described in Sections 1.14(i)-(iv) ("Unallocated
Net Sales"), multiplied by the fraction A/C, where A is the invoice price of the
Licensed Product incorporated into such Combination Product when sold separately
in finished form, and C is the invoice price of the Combination Product. If the
Licensed Product and the Combination Product are not sold separately in finished
form, Allocated Net Sales shall, for the purposes of determining royalties due
on the Combination Product, be calculated by multiplying the Unallocated Net
Sales by the fraction D/(D+E), where D equals the total direct manufacturing
cost of the Licensed Product and E is the total direct manufacturing cost of the
Combination Product.
1.03 "Combination Product" means any product that is comprised
of a Licensed Product and another product(s) that is not a Licensed Product.
1.04 "Entity" means any corporation, limited liability
company, partnership, or other person or entity.
1.05 "Invention" means any idea, discovery, creation, or
invention of Licensor, any of its members, employees, consultants, or
contractors, whether made solely, or jointly with another Entity, whether or not
patentable, that is conceived, created, or reduced to practice on or after
November 17, 2001 and/or before the termination of this Agreement which relates
to or would be useful in the Licensed Field.
1.06 "Know-how" means unpatented information, whether or not
patentable, including without limitation, technical information, processes,
formulae, trade secrets, materials, designs, and data.
1.07 "Licensed Field" means any and all development,
manufacture, use, sale, repair, and maintenance of Medical Devices.
1.08 "Licensed Patents" means all those Patent Rights
described on the attached Exhibit 1.08 and any additional Patent Rights now or
hereafter owned or controlled by Licensor which relate to or would be useful in
the Licensed Field.
1.09 "Licensed Product" means any Medical Device, the
manufacture, use, sale, offering for sale, or importing of which would, absent
the license granted hereunder, infringe any Valid Claim included in a Licensed
Patent.
1.10 "Licensed Territory" means the world.
1.11 "Medical Device" means any implantable, invasive, or
external equipment, apparatus, component, product, compound, service, or process
of manufacture or use, including without limitation any formulation, solution,
pharmaceutical, composite, or prosthetic, that: (i) uses or requires
Nanomagnetics for medical research and/or the diagnosis, prevention, treatment
or cure of any disease, disorder, and/or condition in humans and other animals;
(ii) affects magnetic imaging resonance imaging (MRI) safety; (iii) affects
medical image compatibility; or (iv) involves power systems in humans or other
animals.
1.12 "Nanomagnetics" means magnetic materials which have an
average particle size less than 100 nanometers and includes materials,
compositions, and/or articles of manufacture for nano-sized magnetic material,
processes for the manufacture of such nano-sized magnetic material, articles of
manufacture incorporating or using such nano-sized magnetic material, and
processes for the uses of such materials, compositions, and/or articles of
manufacture.
1.13 "Net Sales Revenue" means, in any case where a Licensed
Product is sold or commercially disposed of for value by Licensee, any
Affiliate, or any Sublicensee in an arm's length transaction with a third party
(other than an Affiliate of, respectively, Licensee or Sublicensee), the gross
invoice price for such Licensed Product, less the following: (i) discounts,
chargebacks, Medicare or other government rebates, and rebates to purchasers
actually taken or allowed; (ii) credits or allowances given or made for
rejections or return of any previously sold Licensed Products actually taken or
allowed; (iii) to the extent included in such gross invoice price any tax or
government charge imposed on the production, import, export, sale, delivery or
use of such Products, including, without limitation, any value added or similar
tax or government charge, but not including any tax levied with respect to
income; and (iv) to the extent included in such gross invoice price any
reasonable and documented packaging and distribution charges. Net Sales shall
also include and be deemed to have been made with respect to (a) any Licensed
Product not sold or otherwise transferred to any third party but rather used by
Licensee or any Sublicensee to provide a commercial service and (b) any other
transfer of a Licensed Product for less than arm's length value other than
intercompany transfers where the transferee is not the end user. The amount of
any Net Sale as defined in the preceding sentence shall be imputed using the
price or prices at which the Licensed Product at issue is then being sold in
transactions covered by the first sentence of this Section or, if no such
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transactions have occurred, on a reasonable basis to be determined at the time
by the parties. Notwithstanding any other provision of this Section, Net Sales
shall not include the transfer without consideration of any Licensed Product by
Licensee or any Sublicensee (x) for use in any clinical trial or in any
preclinical or other research, (y) as detailing samples or other use to promote
additional Net Sales in amounts consistent with the normal business practices of
Licensee or any Sublicensee, or (z) for compassionate use.
1.14 "Patent Rights" means any and all forms of patents issued
or granted anywhere in the world, including, without limitation, utility, model
and design patents, patents of addition, patents of importation or innovation,
improvement patents, reissued and reexamined patents, all renewals and
extensions thereof, and all applications for such patents (including original,
divisional, continuation and continuation-in-part applications) pending before
any national Patent Office and which have not been abandoned or expired.
1.15 "Sublicense" means any sublicense of, or other agreement
permitting the commercial exploitation of, some or all of the rights granted to
Licensee under this Agreement.
1.16 "Sublicensee" means any Entity to whom Licensee grants a
Sublicense.
1.17 "Sublicense Revenue" means gross revenue received by
Licensee from Sublicensees for a grant of license rights with respect to the
Licensed Patents and/or Know-how.
1.18 "Term of this Agreement" or "Term" means the period
beginning on the Effective Date and continuing only for so long as (a) Licensee
has any right to exercise any of its rights with respect to any Licensed Patent
in the Licensed Territory, or (b) royalty payments are due under this Agreement,
unless earlier terminated by Licensor or Licensee as provided herein.
1.19 "Valid Claim" means (i) a claim (an "Issued Patent
Claim") of an issued and unexpired patent which has not been held permanently
revoked, unenforceable or invalid by a decision of a court or other governmental
agency of competent jurisdiction, unappealed or unappealable within the time
allowed for appeal, and which has not been admitted to be invalid or
unenforceable through reissue or disclaimer or otherwise, and/or (ii) a pending
claim of any pending patent application which has been filed and continues to be
prosecuted in good faith and is not abandoned or finally disallowed without the
possibility of appeal or refiling; provided, however, that, with respect to any
Licensed Product, no pending claim which has not become an Issued Patent Claim
shall continue to constitute a Valid Claim for more than three (3) years
following the first approved commercial sale of the first Licensed Product which
qualifies as a Licensed Product under Section 1.10 solely as a result of such
pending claim.
2. LICENSE GRANT
2.01 Subject to the terms of this Agreement, Licensor grants
to Licensee and its Affiliates, and Licensee accepts for itself and such
Affiliates, the exclusive right and license including the right to grant
Sublicenses, under the Licensed Patents and the Know-how in the Licensed Field
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to make, have made, use, offer to sell, lease, and import Licensed Products in
the Licensed Territory.
2.02 Licensee acknowledges and agrees that no license is
granted or implied under, and agrees not to practice under, the Licensed Patents
and Know-how for products and processes that are outside of the Licensed Field.
Where a patent claim describes technology applicable to more than one field of
use, the Licensee obtains rights to such claimed invention only within the
Licensed Field.
3. LICENSOR INVENTIONS
3.01 Members, employees, consultants, and contractors of
Licensor, including, but not limited to Xx. Xxxxxx Xxxx and Xxxxxx Xxxxxxxxx,
may make an Invention(s) useful in the Licensed Field during the Term.
3.02 Within thirty (30) days of the conception of an
Invention, Licensor shall disclose the same to Licensee in a writing. The
description of an Invention, etc., may. by way of illustration, be a draft
and/or a filed provisional and/or utility patent application, and will be
accompanied by an estimate of the cost of preparing and filing one or more
patent application(s) on such Invention(s), etc. Within sixty (60) days of
disclosure, Licensee shall inform Licensor in writing if Licensee wishes to
exclude the applicable Invention(s) from the license granted by this Agreement.
If Licensee does not so notify Licensor of its intention to exclude any
Invention, Licensee shall pay to Licensor the amount of the aforementioned
estimate, and thereafter, one or more patent applications on such Invention(s)
shall be prepared, executed, and filed on behalf of Licensor. Such patent
application(s) shall be Licensed Patents hereunder.
3.03 If Licensee informs Licensor in writing of its desire to
have any Invention excluded from this Agreement within such sixty (60)-day
period, and/or if Licensee does not pay such expenses or provide an advance
against the estimated costs to patent any Invention or Improvement within such
sixty (60) day period, then Licensee shall waive any rights to have the
particular Invention included within the scope of this Agreement.
3.04 Licensor shall not compete with Licensee or any
Sublicensee or assignee within the Licensed Field, even if Licensee waives any
rights to have any particular Invention included within the scope of this
Agreement.
4. LICENSEE'S OBLIGATIONS
4.01 Licensor shall diligently prosecute and maintain the
Licensed Patents, but only to the extent, if any, that the Licensee pays for the
costs of such prosecution and maintenance. Licensor will advise Licensee within
thirty (30) days of the date Licensor becomes aware of the advisability of
taking of filing, prosecution, or maintenance actions with regard to any
Licensed Patent. Licensor will provide an estimate of the cost of taking such
action in accordance with reasonable billing rates and expenses. Within thirty
(30) days of such disclosure, Licensee shall inform Licensor in writing if
Licensee wishes to exclude the patent or patent application from Licensed
Patents. If a patent is to be included as a Licensed Patent within this
Agreement, Licensee shall pay the estimated sum to Licensor, and Licensor shall
promptly take the action in question. Licensor shall keep track of the actual
costs incurred and promptly refund any excess of the estimate paid by Licensee
to Licensor for such work.
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4.02 The undertaking by Licensee to pay certain patent fees
and minimum royalties as set forth herein shall be in lieu of any express or
implied best efforts obligation of Licensee, which are hereby waived by
Licensor. Licensee will pay the following amounts as minimum royalties in the
years indicated:
Year 1: five thousand dollars ($5,000);
Year 2: five thousand dollars ($5,000);
and Years 3 and beyond: thirty thousand dollars ($30,000).
All amounts paid as minimum royalties shall be paid quarterly pursuant to
Section 6 and shall be credited annually against royalties, but only for that
year, as set forth in Section 5 below. In the event of termination of this
Agreement by Licensee, the minimum royalties due shall be pro-rated through the
effective date of termination. If Licensee is acquired by a third party,
Licensor will consent to the assignment of Licensee's rights under this
Agreement in exchange for a payment of fifty thousand dollars ($50,000) if the
acquiring party is a Sublicensee, or thirty thousand dollars ($30,000)
otherwise.
4.03 With regard to any particular patent application, or an
issued patent, Licensee will be advised by Licensor of certain actions that
might be taken with regard to such patent application or patent. By way of
illustration and not limitation, such actions might include:
(a) the filing of an information disclosure statement, and/or
(b) the filing of a response, amendment, appeal, and/or a petition
in response to a communication from a United States and/or a
foreign Patent Office, and/or
(c) the payment of Patent Office fees, such as fees for petitions
for extension, final fees, and the like,
(d) the filing of divisional, continuation, continuation-in-part,
and/or reissue patent applications, and/or
(e) the filing of one or more International Patent and/or foreign
patent applications based upon a United States patent
application, and/or
(f) other actions routinely undertaken by Patent Attorneys on
behalf of clients during the prosecution of patent
applications.
4.04 Licensor shall provide Licensee with monthly bills for
approved services and expenses, and shall be paid any amounts due, within thirty
(30) days of Licensee's receipt of the appropriate xxxx to the extent such
amount has not been prepaid in any estimate.
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4.05 As further consideration under this Agreement, Licensee
will fund, through Licensor, research at Xxxxxx University. Such research shall
be carried out by Xx. Xxxxxx Xxxx in accordance with an annual plan developed by
Licensor and Xx. Xxxx, and acceptable to Licensee. The principal investigator
shall be Xx. Xxxxxx Xxxx. The amount of funding for research acceptable to
Licensee shall be at least sixty-thousand dollars ($60,000) for the first year
pursuant to the R&D Agreement. Funding during subsequent years shall be optional
for Licensee and shall be determined based upon an annual plan submitted for
Licensee's review. The funds shall be advanced periodically on a schedule agreed
to by Licensee, Licensor and Xx. Xxxxxx Xxxx.
5. ROYALTIES
5.01 Subject to Section 5.02, Licensee shall pay to Licensor a
royalty of five percent (5%) of the Net Sales Revenue and Unallocated Net Sales
Revenue collected.
5.02 If Licensee sells a Licensed Product that incorporates
one more other patented technologies licensed to or owned by Licensee for which
a royalty is payable to a third person, the royalty payable under Section 5.01
shall be adjusted by dividing five percent (5%) by the total of the royalty
rates payable on the applicable Licensed Product. In no event shall the royalty
rate payable under Section 5.01 be less than 1.666 percent.
5.03 SUBLICENSING
(a) All sublicensing shall be the sole responsibility of Licensee.
Licensee shall supply Licensor with a copy of each sublicense agreement within
thirty (30) days after its execution.
(b) Licensee shall pay to Licensor a sublicense royalty of twenty-five
percent (25%) of the Sublicense Revenue.
(c) If a Sublicensee is also a sublicensee of other patents, controlled
or licensed by Licensee that contribute to Sublicense Revenue, the percentage
payable under this Section 5.03 shall be adjusted by multiplying twenty five
percent (25%) by a fraction, the numerator of which is five percent (5%) and the
denominator of which is the total of the royalty rates payable on the Licensed
Products. However, in no event shall Licensor be paid less than
eight-and-one-third percent (8.333 %).
6. PAYMENTS
6.01 Not later than the last day of each January, April, July
and October, Licensee shall furnish to Licensor a written statement, in such
detail as Licensor may reasonably require, of all amounts due pursuant to
Sections 4.02, 5.01 and 5.03 for the immediately preceding calendar quarter, and
shall pay to Licensor all amounts due to Licensor in U.S. Dollars. If no amount
is accrued during any quarterly period, a written statement to that effect shall
be furnished.
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6.02 Licensee's obligation to pay royalties under this
Agreement shall be imposed only once with respect to any Net Sale of any
Licensed Product regardless of whether the Licensed Product is covered by more
than one claim of a Licensed Patent.
6.03 Licensee and Licensor shall use all commercially
reasonable and legal efforts to reduce tax withholding on any payments to be
made to Licensor hereunder. If Licensee concludes that, notwithstanding such
efforts, tax withholding under the laws of any country is required with respect
to any royalty payment to be made to Licensor under this Agreement, Licensee
shall pay or cause its Sublicensee to pay any applicable withholding taxes
imposed by any such political jurisdiction on such royalty payments, and the
amount of any such payments shall be credited against Licensee's royalty
obligation under this Agreement. Licensee shall promptly provide Licensor with,
or promptly cause Licensor to be provided with, original receipts or other
evidence sufficient to allow Licensor to obtain the benefits of any such tax
withholding.
7. REPRESENTATIONS AND WARRANTIES
7.01 Licensor represents and warrants that: except as
described in Exhibit 7.01, and section 2.02, (i) it owns or controls (or will
own or control within ten days after the execution of this agreement) the entire
right, title and interest in and to Inventions, and Licensed Patents and such
interest is not encumbered in any manner; (ii) Licensor has the right and power
to enter into this Agreement, and to grant the rights and licenses set forth
herein free and clear of any obligations to any third persons; and (iii) it has
not granted any license, assignment or other interest to any third person with
respect to any of the Inventions, Improvements, Licensed Patents or Know-how
other than outside the Licensed Field. Licensor also represents and warrants
that: (iv) Licensor has provided Licensee with copies of all, written or oral,
opinions of counsel, clearances, studies, licenses, and agreements relating to
the Licensed Patents and the Licensed Products; (v) the persons listed on
Exhibit 7.01A are all the officers, employees, and consultants of Licensor on or
prior to the Effective Date, and (vi) Licensor has not received any written or
oral communication from a third party that a Licensed Product may or actually
does infringe or otherwise violate any intellectual property right of such third
party.
7.02 NOTHING IN THIS AGREEMENT SHALL BE DEEMED TO BE A
REPRESENTATION OR WARRANTY BY LICENSOR OF THE VALIDITY OF ANY OF THE LICENSED
PATENTS. UNLESS CAUSED BY A BREACH OF ITS EXPRESS WARRANTIES, LICENSOR SHALL
HAVE NO LIABILITY WHATSOEVER TO LICENSEE OR ANY OTHER PERSON FOR OR ON ACCOUNT
OF ANY INJURY, LOSS, OR DAMAGE, OF ANY KIND OR NATURE SUSTAINED BY, OR ANY
DAMAGE ASSESSED OR ASSERTED AGAINST, OR ANY OTHER LIABILITY INCURRED BY OR
IMPOSED UPON LICENSEE OR ANY OTHER PERSON, ARISING OUT OF OR IN CONNECTION WITH
OR RESULTING FROM (A) THE PRODUCTION, USE, OR SALE OF ANY LICENSED PRODUCT; OR
(B) ANY ADVERTISING OR OTHER PROMOTIONAL ACTIVITIES WITH RESPECT TO ANY OF THE
FOREGOING, AND LICENSEE SHALL HOLD LICENSOR AND ITS OFFICERS; AGENTS, OR
EMPLOYEES, HARMLESS IF LICENSOR, OR ANY OF ITS OFFICERS, AGENTS, OR EMPLOYEES,
IS HELD LIABLE WITH RESPECT TO ANY OF THE FOREGOING.
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8. TERMINATION
8.01 This Agreement shall terminate upon the expiration of the
last-to-expire of the Licensed Patents unless sooner terminated by Licensee.
8.02 Licensee may terminate this Agreement at any time upon
sixty (60) days' written notice to Licensor.
8.03 If either party shall be in default of any material
obligation hereunder, the other party may terminate this Agreement by giving
sixty (60) days' notice by Next Business Day Express Delivery Service to the
other party, specifying the basis for termination. If, within sixty (60) days
after the receipt of such notice, the party receiving notice shall remedy the
condition forming the basis for termination, this Agreement shall continue in
full force.
9. LITIGATION
9.01 Each party shall notify the other party in writing of any
suspected infringement of a Licensed Patent and provide any evidence of such
infringement.
9.02 Licensee shall have the first right to institute suit for
infringement(s) of the Licensed Patents by a third person who is making, using,
and/or selling one or more Licensed Products within the Licensed Field. Licensor
will join as a party plaintiff in any such lawsuit initiated by Licensee, if
requested by Licensee. All costs, attorneys' fees, and expenses shall be paid by
Licensee; and, to the extent that Licensor incurs any liability as a result of
joining as such party Plaintiff, the Licensee shall fully indemnify the Licensor
for such liability. However, if Licensee does not institute suit for
infringement(s) within a reasonable period after receipt of written notice from
Licensor of Licensor's desire to bring suit for infringement in its own name and
on its own behalf, then Licensor may, at its own expense, bring suit or take any
other appropriate action.
9.03 If Licensee initiates legal action for enforcement of the
Licensed Patents, Licensee shall be entitled to any recovery of damages
resulting from a lawsuit brought by it pursuant to Section 9. Licensor shall be
entitled to recovery of damages resulting from any lawsuit brought by Licensor
to enforce any Licensed Patents pursuant to Section 9. If either party collects
damages resulting from a lawsuit pursuant to Section 9, such party shall pay to
the other twenty-five percent (25%) of the collected funds, after deducting
reasonable costs and attorneys fees from the total amount of such damages and
costs recovered.
9.04 Without the prior written consent of Licensor, Licensee
may not settle with an infringer of any Licensed Patents if such settlement
would materially affect the rights of Licensor with respect to the Licensed
Patents outside the Licensed Field. Without the prior written consent of
Licensee, Licensor may not settle with an infringer of any Licensed Patents if
such settlement would materially affect the rights of Licensee with respect to
the Licensed Patents in the Licensed Field.
9.05 If there is ever any litigation or other dispute or
difference with a third party, the parties hereto shall, and shall cause all
applicable inventors under their direction or control to, cooperate with each
other and make themselves available to assist in any such dispute.
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10. RECORDS
Licensee shall keep accurate records of all operations
affecting payments hereunder, and shall permit an independent public accountant
mutually acceptable to the parties to inspect all such records annually, upon
ten (10) days' written notice, and to make confidential copies of or extracts
from such records during regular business hours for five (5) years after each
applicable royalty reporting period. Such records shall be deemed Proprietary
Information of Licensee and may not be disclosed, except to the Licensor,
although such accountant may use such records to determine the amounts due from
Licensee or Licensor hereunder and shall report the same to the parties.
11. MISCELLANEOUS
11.01 Subject to the provisions of section 4.02, this
Agreement may be assigned by Licensee to its successors, assigns and designees,
and any of its present or future subsidiaries, or organizations controlled by,
controlling, or under common control with Licensee. Licensee's rights under this
Agreement and the licenses herein granted may be assigned to any person or
corporation succeeding to its business in Licensed Products as a result of any
sale, consolidation, reorganization, or otherwise, provided such assignee,
receiver, person, or corporation shall accept in writing the provisions of this
Agreement and agree to become bound thereby in the place and stead of Licensee.
11.02 The parties agree that if any part, term, or provision
of this Agreement shall be found illegal or in conflict with any valid
controlling law, the validity of the remaining provisions shall not be affected
thereby.
11.03 The waiver of a breach hereunder may be effected only by
a writing signed by the waiving party and shall not constitute a waiver of any
other breach.
11.04 This Agreement represents the entire understanding
between the parties and supersedes all other agreements, express or implied,
between the parties concerning its subject matter.
11.05 Any provision of this Agreement may be altered only by a
writing signed by both parties, except as provided in Section 11.01.
11.06 This Agreement shall be construed in accordance with the
substantive laws of the State of New York, without regard to its conflict of
laws principles, and each party consents to the exclusive personal jurisdiction
of the state and federal courts located in Monroe County, New York, if there is
a dispute between them hereunder.
11.07 Any notice required or permitted by this Agreement shall
be sent by pre-paid Next Day Express Delivery service, and shall be effective as
of its date of delivery. For the purpose of all written communications and
notices between the parties, their addresses shall be:
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Licensor: Nanoset, LLC, c/o Xxxxxx X. Xxxxxxxxx, 000 Xxxx
Xxxxxxxxxx Xxxxxx, Xxxxx 0000, Xxxxxxxxx, Xxx
Xxxx 00000, and
Licensee: Attn: Xxxxxxx Xxxxxx, CEO, Biophan Technologies, Inc.
000 Xxxxxx Xxxxxx Xxxxx -- Xxxxx 000, Xxxx
Xxxxxxxxx, Xxx Xxxx 00000.
11.08 Arbitration.
(a) Any controversy or dispute arising out of or in connection with
this Agreement, its interpretation, performance, or termination, and validity or
infringement of Licensed Patents, that the parties are unable to resolve within
ninety (90) days after written notice by one party to the other, shall be
submitted to binding arbitration in accordance with the Commercial Arbitration
Rules and (if applicable) the Patent Arbitration Rules of the American
Arbitration Association, as modified in this Article. Such arbitration shall
take place in a venue in Western New York, before a single arbitrator appointed
by the American Arbitration Association. The arbitrator shall render a reasoned
opinion on the matter within three (3) months from the date the hearing is
closed.
(b) The institution of any arbitration hereunder shall not relieve
Licensee of its obligations to make undisputed payments to Licensor required by
the terms of this Agreement during the continuance of the arbitration
proceeding.
(c) The decision of the arbitrator shall be binding and conclusive on
the parties, and they shall comply with such decision in good faith. Each party
hereby submits itself to the jurisdiction of the courts of the State of New
York, but only for the entry or enforcement of judgment with respect to the
decision of the arbitrator hereunder, including injunctive relief if appropriate
to render effective the arbitrator's decision. Notwithstanding the foregoing,
judgment on the award by the arbitrator may be entered in any court of the State
of New York or any court having jurisdiction. If judicial enforcement or review
of the arbitrator's decision is sought, the prevailing party shall be entitled
to its costs and reasonable attorneys' fees, in addition to any amount of
recovery ordered by the court.
11.09 Consistent with its reasonable practices, Licensee shall
include an appropriate patent marking on the Licensed Products, sufficient to
notify purchasers of the existence of the Licensed Patents. The notice shall
read "Licensed under Licensor's U.S. (or other authority) Numbers n,hhh,hhh;
n,hhh,hhh;". As soon as reasonably possible after receipt of a request from
Licensor to modify the notice to add additional newly issued Licensed Patents,
Licensee shall modify the notice.
11.10 For a period of five (5) years from the date of this
Agreement, each party ("receiver") receiving any proprietary and nonpublic
information ("Proprietary Information") of the other party ("discloser") shall
keep secret and confidential the Proprietary Information of the discloser, shall
not use such Proprietary Information for purposes other than those permitted by
this Agreement, and shall not disclose such Proprietary Information to any third
party without discloser's consent, except when, after, and to the extent that
the Proprietary Information: (a) was known to receiver at the time of its
disclosure by discloser, as evidenced by receiver's written records prepared
prior to such disclosure, (b) is now or may hereafter become generally available
to the public, by means other than receiver's failure to fulfill its obligations
hereunder, (c) is disclosed to receiver by a third party having no direct or
indirect secrecy obligation to discloser with respect to such information, or
(d) is required to be disclosed by governmental law or regulation or by court
order.
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11.11 All rights and licenses granted under or pursuant to
this Agreement by Licensor to Licensee are, for all purposes of Section 365(n)
of Title 11 of the United States Code ("Title 11"), licenses of rights to
"intellectual property" as defined in Title 11. During the term of this
Agreement Licensor shall create and maintain current copies to the extent
practicable of all such intellectual property. If a bankruptcy proceeding is
commenced by or against Licensor under Title 11, Licensee shall be entitled to a
copy of any and all such intellectual property and all embodiments of such
intellectual property, and the same, if not in the possession of Licensee, shall
be promptly delivered to it (a) upon Licensee's written request after the
commencement of such bankruptcy proceeding, unless Licensor, or its trustee or
receiver, elects within thirty (30) days to continue to perform all of its
obligations under this Agreement, or (b) if not delivered as provided under
clause (a) above, upon Licensee's request following the rejection of this
Agreement by or on behalf of Licensor. If Licensee has taken possession of all
applicable embodiments of the intellectual property of Licensor pursuant to this
Section 11.03 and the trustee in bankruptcy of Licensor does not reject this
Agreement, Licensee shall return such embodiments upon request. If Licensor
seeks or involuntarily is placed under Title 11 and the trustee rejects this
Agreement as contemplated under 11 U.S.C. 365(n)(1), Licensee hereby elects,
pursuant to Section 365(n) to retain all rights granted to Licensee under this
Agreement to the extent permitted by law. If Licensor seeks or is involuntarily
placed under the protection of the bankruptcy laws, Title XI, U.S. Code, and the
trustee in bankruptcy rejects this Agreement, Licensee hereby elects, pursuant
to Section 365(n), to retain all rights granted to it under this Agreement to
the extent permitted by the law.
12. RELEASE OF ALL PRIOR CLAIMS
Each of the parties to this agreement (including Nanoset, LLC and
Biophan Technologies, Inc.), and each of the Members of Nanoset, LLC (Xxxxxx
Xxxx, Xxxxxx X. Xxxxxxxxx, and Biomed Solutions, LLC) hereby release each of the
other parties to this agreement (Nanoset, LLC and Biophan Technologies, Inc.)
and each of the other Members of Nanoset, LLC (Xxxxxx Xxxx, Xxxxxx X. Xxxxxxxxx,
and Biomed Solutions, LLC) from any and all claims that arose or have arisen
from January 1, 2002 until the execution of this agreement that such party has
against any of such other parties. The provisions of this agreement supersede
the provisions of the February 7, 2002 Contract between Nanoset LLC and Biophan
Technologies, Inc. The provisions of this agreement also supersede the
provisions of any agreement(s) made between Xxxxxx Xxxx and Biophan
Technologies, Inc. between January 1, 2002 and the execution of this agreement.
11
IN WITNESS WHEREOF the parties have caused this Agreement to be
executed by their duly authorized officers on the respective dates hereinafter
set forth.
Licensee - BIOPHAN TECHNOLOGIES, INC.
/s/ Xxxxxxx Xxxxxxx Date: January 15, 2004
-------------------------------------------- ----------------
Xx. Xxxxxxx Xxxxxxx, Chairman
/s/ Xxxxxxx X. Xxxxxx Date: January 15, 2004
-------------------------------------------- ----------------
Xxxxxxx X. Xxxxxx, CEO
Licensor - NANOSET, LLC
/s/ Xxxxxx X. Xxxxxxxxx Date: January 15, 2004
-------------------------------------------- ----------------
Xxxxxx X. Xxxxxxxxx,
Member
/s/ Xxxxxx Xxxx Date: January 15, 2004
-------------------------------------------- ----------------
Xx. Xxxxxx Xxxx, Member
/s/ Xxxxxxx X. Xxxxxx Date: January 15, 2004
-------------------------------------------- ----------------
Xxxxxxx Xxxxxx, on behalf of
Biomed Solutions, Member
12
EXHIBIT 1.08
LICENSED PATENTS
NANOMAGNETIC TECHNOLOGY
(1) JLH-649, "Coated Stent Assembly" Filed 12/30/2003 (No application
number yet)
This application was filed in the names of Helfer, Wang, Xxxx and Xxxxxxxxx and
will be assigned after the closing of the deal on January 15, 2004.
(2) JLH-636, "MRI Contrast Agent Assembly" Filed 12/01/2003 (Application
number 60/525,916)
This application was filed in the names of Heifer, Wang, Xxxx and Xxxxxxxxx and
will be assigned after the closing of the deal on January 15, 2004.
(3) XW-263, "Magnetic Resonance Imaging Coated Assembly" Filed 03/07/2003
(Application number 10/384,288)
This application was filed in the names of Wang, Greenwald, Heifer, Xxxx and
Weiner and will be assigned after the closing of the deal on January 15, 2004.
(4) XW-222, "Protective Assembly" Filed 02/24/2003 (Application number
10/373,377)
This application was filed in the names of Wang, Greenwald, Heifer and Xxxx and
will be assigned after the closing of the deal on January 15, 2004.
(5) XW-397, "Magnetically Shielded Assembly" Filed 02/12/2003 (Application
number 10/366,082)
This application was filed in the names of Wang and Xxxxxxxxx and will be
assigned after the closing of the deal on January 15, 2004.
(6) XW-390, "Nanomagnetically Shielded Substrate" Filed 0 1/21/2003
(Application number - PCT/USO3/0 1671)
Partially assigned, partially not assigned based on status of corresponding US
cases.
(7) XW-490, "Nanomagnetically Shielded Substrate" Filed 12/18/2002
(Application number 10/324,773)
This application was filed in the names of Wang and Xxxxxxxxx and will be
assigned after the closing of the deal on January 15, 2004.
(8) XW-253, "Implantable Medical Shielding Device" Filed 12/07/2002
(Application number 10/313,847)
This application was filed in the names of Wang, Heifer and Xxxxxxxxx and will
be assigned after the closing of the deal on January 15, 2004.
13
(9) XW-226, "Magnetically Shielded Assembly" Filed 11/25/2002 (Application
number 10/303,264)
This application was filed in the names of Wang, Helfer and MacDonald and has
issued and been assigned to Nanoset.
(10) XW-39l, "Nanomagnetic Shielding Assembly" Filed 10/18/2002 (Application
number 10/273,73 8)
This application was filed in the name of Wang and has been assigned to Nanoset.
(11) XW-387, "Magnetically Shielded Assembly" Filed 09/30/2002 (Application
number 10/260,247)
This application was filed in the names of Wang, Heifer and MacDonald and has
issued (patent number 6,673,999) and been assigned to Nanoset.
(12) XW-348, "Magnetically Shielded Conductor" Filed 09/13/2002 (Application
number 10/242,969)
This application was filed in the names of Wang and Helfer and has been assigned
to Nanoset.
(13) XW-395 "Magnetically Shielded Conductor" Filed 08/26/2002 (Application
number 10/229,183)
This application was filed in the name of Wang and has been assigned to Nanoset.
(14) JLH-3 89 "Magnetically Shielded Conductor" Filed 03/04/2002 (Application
number 10/090,553)
This application was filed in the names of Heifer and Wang and has been assigned
to Nanoset.
(15) 15 XW-550 "Magnetically Shielded Conductor" Filed 01/22/2002
(Application number 10/054,407)
This application was filed in the name of Wang and has issued (patent number
6,506,972) and been assigned to Nanoset.
14
EXHIBIT 7.01
EXCEPTIONS TO OWNERSHIP
Substantially contemporaneously with the execution of this LICENSE
AGREEMENT, a "Research and Development Agreement" has been executed between
Nanoset, LLC, Xx. Xxxxxx Xxxx, and Xxxxxx X. Xxxxxxxxx. Notwithstanding any
other provision of this LICENSE AGREEMENT, (1) the Inventions made by Xxxxxx
Xxxx, and/or Xxxxxx X. Xxxxxxxxx, and/or other employees, members, and/or
consultants of Nanoset are subject to the terms of the Research and Development
Agreement, (2) no warranty is made by Nanoset, LLC with regard to rights in such
Inventions to the extent, if any, that such rights exceed the rights granted (or
expected to be granted, e.g., under Section 2.02(a)) to Nanoset, LLC under the
terms of such Research and Development Agreement, and (3)no grant, conveyance,
and/or license is made by Nanoset, LLC with regard to rights in such inventions
to the extent, if any, that such rights exceed the rights granted (or expected
to be granted, e.g., under Section 2.02(a)) to Nanoset, LLC under the terms of
such Research and Development Agreement.
Thus, by way of illustration and to avoid any doubt, Licensee
acknowledges that Section 2.03 of the Research and Development Agreement excepts
certain Inventions from this LICENSE AGREEMENT. Furthermore, Licensee
acknowledges that, with regard to Inventions made by Xxxxxx Xxxx and/or Xxxxxx
X. Xxxxxxxxx and/or other employees, members, and/or consultants of Nanoset
(except as the parties subsequently agree in writing), if the Research and
Development Agreement expires, Licensee will continue to have the rights under
this LICENSE AGREEMENT to Inventions for which Licensee paid the amounts due
under the Research and Development Agreement, but will have no right to new
inventions made after such expiration. Furthermore, License acknowledges that if
it terminates this LICENSE AGREEMENT, it will have no further rights under the
Research and Development Agreement.
15
EXHIBIT 7.01A
OFFICERS, ETC. OF LICENSOR
The following are the Members of Nanoset, LLC: (1) Xxxxxx Xxxx, (2) Xxxxxx
X. Xxxxxxxxx, and Biomed Solutions, LLC. Nanoset, as of January 15, 2004, has no
employees. Nanoset, as of January 15, 2004, has retained no consultants.
16
EXHIBIT 12
FEBRUARY 7, 2002 AGREEMENT
CONTRACT BETWEEN BIOPHAN TECHNOLOGIES, INC. (BTI),
XXXXXX XXXX, AND NANOSET LLC
CONCERNING NANOMAGNETIC MATERIALS PATENT APPLICATIONS
The patent application(s) will be assigned to Nanoset, LLC, with the
following understandings.
a) Biophan Technologies, Inc. will pay Xxxxxx Xxxxxxxxx for his time
involving this patent application(s) and will pay Xx. Xxxx, directly, a one-time
licensing fee of $10 000 now and $5,000 more when the patent application(s)
issues in exchange for a paid-up royalty fee, exclusive license for medical
application(s) for the life of any patent or patents (US and/or foreign) issuing
on such patent application(s). Medical uses shall include uses in shielding
pacemakers and other medical devices formulations, pharmaceuticals, composites,
prosthetics , etc. used for treating humans or animals in any fashion,
implantable or invasive or external. BTI rights shall include rights of
enforcement and sub-licensing in the medical field. BTI shall consult with
Xxxxxx Xxxxxxxxx on enforcement strategies and potential downstream prosecution.
b) BTI will negotiate an R&D contract for consulting services to
demonstrate the effectiveness of the technology in an MRI field. Xx. Xxxx will
determine who shall assist him in the project including use of facilities and
students at Xxxxxx etc. Xx. Xxxx will xxxx BTI for his time on this project.
c) In the event that the shielding shall prove effective for shielding
a metal pacemaker lead from MRI energies adequately to enable pacemaker
shielding that can be commercially applied, BTI will grant Xx. Xxxx an option to
acquire 25,000 shares of BTI stock at $1 per share.
17
d) Rights for use in other non-medical devices (or applications) shall
remain with Nanoset (see b).
------------------------------ ------------------------------------
Xxxx Xxxxxx Date
CEO
Biophan Technologies, Inc.
------------------------------ ------------------------------------
Xxxxxx Xxxx Date
Individual
------------------------------ ------------------------------------
Xxxxxx X. Xxxxxxxxx, Esq. Date
Managing Partner
Nanoset, LLC
18
