PATENT ASSIGNMENT
Exhibit 10.3
WHEREAS, Synecor LLC, a Delaware limited liability company (hereinafter “Assignor”), owns the patent registrations and applications listed and described on Schedule A attached hereto (the “Patents”); and
WHEREAS, Assignor and TransEnterix, Inc., a Delaware corporation (“Assignee”), have entered into a Patent Acquisition and License Termination Agreement dated June 26, 2009 (the “Agreement”), pursuant to which Assignor has agreed, inter alia, to grant to Assignee all of Assignor’s right title and interest in and to the Patents and Assignee desires to acquire the entire right, title and interest in and to the Patents.
NOW, THEREFORE, for and in consideration of the sum of One Dollar ($1.00) and other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged:
1. Assignor hereby irrevocably sells, transfers, conveys and assigns to Assignee, and Assignee shall acquire from Assignor all right, title and interest in and to all Patents including, without limitation, causes of action and rights to damages, payments, royalties and income for past, present or future infringements or misappropriations with respect thereto, in all countries relating to the Patents.
2. Upon Assignee’s request, with reasonable notice given, and without additional consideration, Assignor shall execute any further papers and documents and do such other acts as may be necessary and proper to vest full title in and to the Patents in Assignee. Assignor shall assist Assignee, and any successor, in every proper way to secure Assignee’s rights in the Patents in any and all countries, including the execution of all applications, specifications, oaths, assignments and all other instruments which Assignee shall reasonably deem necessary in order to apply for and obtain such rights and in order to assign and convey to Assignee, its successors, assigns, and nominees the sole and exclusive right, title and interest in and to the Patents.
3. Assignor irrevocably constitutes and appoints Assignee, with full power of substitution, to be its true and lawful attorney, and in its name, place or stead, to execute, acknowledge, swear to and file, all instruments, conveyances, certificates, agreements and other documents, and to take any action which shall be necessary, appropriate or desirable to effectuate the transfer, or prosecution of the Patents in accordance with the terms of this Agreement; provided, however, that such power shall be exercised by Assignee only in the event that Assignor fails to take the necessary actions required hereunder to affect or record such transfer, or prosecution of the Patents following Assignee’s reasonable request, and being given a reasonable opportunity to do so. This power of attorney shall be deemed to be coupled with an interest and shall be irrevocable.
6. Assignor also hereby authorizes the Commissioner of Patents to issue any and all Letters Patent which may be granted upon the Patents herein referenced to Assignee, as the assignee to the entire interest therein.
IN WITNESS WHEREOF, this Patent Assignment is executed at Durham, North Carolina as of this 26 day of June, 2009.
| Synecor LLC | ||||
| By: | /s/ Xxxxxxx X. Xxxxx, MD | |||
| Name: | Xxxxxxx X. Xxxxx, MD | |||
| Title: | President | |||
ACKNOWLEDGMENT
| State of North Carolina | ) | |||||||
| ) ss: | ||||||||
| County of Durham | ) |
On this 27th day of June, before me, the undersigned, personally appeared Xxxxxxx X. Xxxxx, personally known to me or proved to me on the basis of satisfactory evidence to be the person who executed this instrument on behalf of the corporation named herein, and acknowledged that s/he executed it in such representative capacity.
IN WITNESS WHEREOF, I have hereunto set my hand and official seal.
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/s/ Xxxxxxx Xxxxxx | |
| Notary Public | ||
| My Commission Expires on Nov. 3, 2011 |
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| SCHEDULE A | ||||
| Reference No. |
Title |
Serial No./Filing Date | ||
| TRX-100A (formerly SYNC 3000) |
TRANSGASTRIC SURGICAL DEVICES AND PROCEDURES | U.S. Provisional 60/720,943 Sept 27, 0000 | ||
| XXX-000 | XXXXXXXXXXXX SURGICAL DEVICES AND PROCEDURES | U.S. Provisional. 60/760,132 Jan 19, 2006 | ||
| TRX-110 | PROCEDURAL CANNULA FOR TRANSGASTRIC SURGICAL PROCEDURES | U.S. Utility 11/655,445 January 19, 2007 | ||
| TRX-200 | PROCEDURAL CANNULA AND SUPPORT SYSTEM FOR SURGICAL PROCEDURES USING NATUAL ORIFICE ACCESS | U.S. Provisional 60/794,563 Apr. 24, 2006 | ||
| TRX-210 | PROCEDURAL CANNULA AND SUPPORT SYSTEM FOR SURGICAL PROCEDURES USING NATURAL ORIFICE ACCESS | U.S. Utility 11/789,381 April 24, 2007 | ||
| TRX-210PCT | PROCEDURAL CANNULA AND SUPPORT SYSTEM FOR SURGICAL PROCEDURES USING NATURAL ORIFICE ACCESS | PCT/US07/009936 April 24, 2007 | ||
| TRX-210AUS | PROCEDURAL CANNULA AND SUPPORT SYSTEM FOR SURGICAL PROCEDURES USING NATURAL ORIFICE ACCESS | Australian 2007000243484 April 24, 2007 | ||
| TRX-210CAN | PROCEDURAL CANNULA AND SUPPORT SYSTEM FOR SURGICAL PROCEDURES USING NATURAL ORIFICE ACCESS | Canadian 2,650,474 April 24, 2007 | ||
| TRX-210EPC | PROCEDURAL CANNULA AND SUPPORT SYSTEM FOR SURGICAL PROCEDURES USING NATURAL ORIFICE ACCESS | European 07755964.9 April 24, 2007 | ||
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| SCHEDULE A | ||||
| Reference No. |
Title |
Serial No./Filing Date | ||
| TRX-210JPN | PROCEDURAL CANNULA AND SUPPORT SYSTEM FOR SURGICAL PROCEDURES USING NATURAL ORIFICE ACCESS | Japanese 2009-507760 April 24, 2007 | ||
| TRX-300 | PROCEDURAL CANNULA AND SUPPORT SYSTEM FOR SURGICAL PROCEDURES USING NATUAL ORIFICE ACCESS | U.S. Provisional 60/801,113 May 17, 2006 | ||
| TRX-400 | SYSTEM AND METHOD FOR SINGLE PORT SURGICAL ACCESS | U.S. Provisional 60/801,034 May 17, 2006 | ||
| TRX-500 | SYSTEMS AND METHODS FOR RESTORING FUNCTION OF DISEASED BOWEL | U.S. Provisional No. 60/818,765 July 6, 2006 | ||
| TRX-510 | SYSTEMS AND METHODS FOR RESTORING FUNCTION OF DISEASED BOWEL | U.S. Utility 11/825,464 July 6, 2007 | ||
| TRX-510PCT | SYSTEMS AND METHODS FOR RESTORING FUNCTION OF DISEASED BOWEL | PCT/US07/15526 July 6, 2007 | ||
| TRX-600 | CLOSURE DEVICES AND METHODS FOR NATURAL ORIFICE PROCEDURES | U.S. Provisional 60/826,535 September 21, 2006 | ||
| TRX-610 | CLOSURE DEVICES AND METHODS FOR NATURAL ORIFICE PROCEDURES | U.S. Utility 11/903,340 Sept 21, 2007 | ||
| TRX-610PCT | CLOSURE DEVICES AND METHODS FOR NATURAL ORIFICE PROCEDURES | PCT/US07/20440 Sept 21, 2007 | ||
| TRX-610EPC | CLOSURE DEVICES AND METHODS FOR NATURAL ORIFICE PROCEDURES | European 07838610.9 Sept 21, 2007 | ||
| TRX-610JPN | CLOSURE DEVICES AND METHODS FOR NATURAL ORIFICE PROCEDURES | Japanese - Not yet available (based on PCT/US07/20440) Sept 21, 2007 | ||
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| SCHEDULE A | ||||
| Reference No. |
Title |
Serial No./Filing Date | ||
| TRX-900 | SYSTEM AND METHOD FOR MULTI-INSTRUMENT SURGICAL ACCESS USING A SINGLE ACCESS PORT | U.S. Provisional No. 60/819,235 July 7, 2006 | ||
| TRX-910 | SYSTEM AND METHOD FOR MULTI-INSTRUMENT SURGICAL ACCESS USING A SINGLE ACCESS PORT | U.S. Utility 11/804,063 May 17, 2007 | ||
| TRX-910PCT | SYSTEM AND METHOD FOR MULTI-INSTRUMENT SURGICAL ACCESS USING A SINGLE ACCESS PORT | PCT/US07/011795 May 17, 2007 | ||
| TRX-910AUS | SYSTEM AND METHOD FOR MULTI-INSTRUMENT SURGICAL ACCESS USING A SINGLE ACCESS PORT | Australian 2007254247 May 17, 2007 | ||
| TRX-910CAN | SYSTEM AND METHOD FOR MULTI-INSTRUMENT SURGICAL ACCESS USING A SINGLE ACCESS PORT | Canadian 2,652,548 May 17, 2007 | ||
| TRX-910EPC | SYSTEM AND METHOD FOR MULTI-INSTRUMENT SURGICAL ACCESS USING A SINGLE ACCESS PORT | European 07794964.2 May 17, 2007 | ||
| TRX-910JPN | SYSTEM AND METHOD FOR MULTI-INSTRUMENT SURGICAL ACCESS USING A SINGLE ACCESS PORT | Japanese 2009-511061 May 17, 2007 | ||
| TRX-1000 | TRANSGASTRIC SURGICAL DEVICES AND PROCEDURES | U.S. Utility 11/528,009 Sept 27, 2006 | ||
| TRX-1000PCT | TRANSGASTRIC SURGICAL DEVICES AND PROCEDURES | PCT/US06/037978 Sept 27, 2006 | ||
| TRX-1000AUS | TRANSGASTRIC SURGICAL DEVICES AND PROCEDURES | Australian 2006294523 Sept 27, 2006 | ||
| TRX-1000CAN | TRANSGASTRIC SURGICAL DEVICES AND PROCEDURES | Canadian 2623948 Sept 27, 2006 | ||
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| SCHEDULE A | ||||
| Reference No. |
Title |
Serial No./Filing Date | ||
| TRX-1000JPN | TRANSGASTRIC SURGICAL DEVICES AND PROCEDURES | Japanese 2008-533631 Sept 27, 2006 | ||
| TRX-1000EPC | TRANSGASTRIC SURGICAL DEVICES AND PROCEDURES | European 06825230.3 Sept 27, 2006 | ||
| TRX-1100 | ARTICULATING ACCESS CANNULA | U.S. Provisional No. 60/971,900 Sept 12, 2007 | ||
| TRX-1110 | DEVICES AND SYSTEMS FOR MINIMALLY INVASIVE SURGICAL PROCEDURES | U.S. Utility 12/209,586 Sept 12, 2008 | ||
| TRX-1110PCT | DEVICES AND SYSTEMS FOR MINIMALLY INVASIVE SURGICAL PROCEDURES | PCT/US08/10640 Sept 12, 2008 | ||
| TRX-1120 | SURGICAL SNARE WITH ELECTROSURGICAL TIP AND METHOD OF USE | U.S. Utility 12/469,071 May 20, 2009 | ||
| TRX-1200 | SINGLE PORT ACCESS SYSTEM | U.S. Provisional 60/971,903 Sept 12, 2007 | ||
| TRX-1300 | MULTI-LUMEN CANNULA | U.S. Provisional 60/971,905 Sept 12, 2008 | ||
| TRX-1310PCT | MULTI-LUMEN CANNULA | PCT/US08/76260 Sept 12, 2008 | ||
| TRX-1700 | MULTI-INSTRUMENT ACCESS DEVICES AND SYSTEMS | U.S. Utility 12/209,408 Sept 12, 2008 | ||
| TRX-1700PCT | MULTI-INSTRUMENT ACCESS DEVICES AND SYSTEMS | PCT/US08/10663 Sept 12, 2008 | ||
| 9362-8PR | SATIATION DEVICES AND METHODS FOR CONTROLLING OBESITY | U.S. Provisional No. 60/ 958,122 July 3, 2007 | ||
| 9362-8 | SATIATION DEVICES AND METHODS FOR CONTROLLING OBESITY | U.S. Utility 12/144,970 June 24, 2008 | ||
| 9362-8WO | SATIATION DEVICES AND METHODS FOR CONTROLLING OBESITY | PCT/US08/007825 June 24, 2008 | ||
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| SCHEDULE A | ||||
| Reference No. |
Title |
Serial No./Filing Date | ||
| 9362-9PR | DEVICES FOR TREATING GASTROESOPHAGEAL REFLUX DISEASE AND HIATAL HERNIA, AND METHODS OF TREATING GASTROESOPHAGEAL REFLUX DISEASE AND HIATAL HERNIA USING SAME | U.S. Provisional No. 60/958,303 July 3, 2007 | ||
| 9362-9 | DEVICES FOR TREATING GASTROESOPHAGEAL REFLUX DISEASE AND HIATAL HERNIA, AND METHODS OF TREATING GASTROESOPHAGEAL REFLUX DISEASE AND HIATAL HERNIA USING SAME | U.S. Utility 12/144,990 June 24, 2008 | ||
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