EXCLUSIVE AGREEMENT FOR LICENSE AND TRANSFER OF IP
Exhibit 10.2
THIS
AGREEMENT is made and entered into as of the date last entered below and upon
the payment of $250,000 to Guided Therapeutics, Inc. ("GT") (as set forth
below), which payment must be made to GT no later than January 30, 2011 and
$20,000 to GT for previous services provided, which payment must be made to GT
by no later than August 15, 2010 ("the Effective Date"), by and between Xxxx X.
Xxxxxx, Ph.D., an individual having an address of 000 Xxxxxxxxx Xxx,
Xxxxxxxxxx, Xxxxxxx 00000 ("XX. XXXXXX") and Biofield Corp., a Delaware
corporation, having an office at 000 Xxxxxxxxx Xxxxxx, Xxxxx, XX 00000
("BZEC").
WHEREAS
BZEC includes its successors and assigns.
WHEREAS,
XX. XXXXXX owns the exclusive rights in and to technology relating to electrical
methods, apparatuses, and devices for the in vivo and in vitro screening and
diagnosis of disease states, including the technology described in more detail
below,
AND
WHEREAS, BZEC desires to obtain the exclusive rights to utilize the technology
described herein and eventual ownership of same,
NOW
THEREFORE, for and in consideration of the foregoing and the mutual covenants
and agreements contained herein, the parties hereto agree as
follows:
1. Definitions
As used herein:
1.1 "Licensed Technology" means any
technology pertaining to the utilization of electrical, electropotential,
electrical or impedance measurements for the noninvasive screening, detection,
or diagnosis of disease states in an organism, including but not limited
to:
(a) The patent application which
describes the invention of utilizing extremely low frequency electromagnetic
fields for the screening and diagnosis of disease states in an organism,
and
(b) All divisionals, continuations,
reissues, extensions, and foreign counterparts of the Licensed Intellectual
Property.
1.2 "Licensed Territory" means the
entire world.
1.3 "Licensed Method" means any method
which is claimed in a patent application.
1.4 "Licensed Product(s)" means any
product, including devices and disposable components of the device system, which
are claimed in a patent application.
1.5 "Agreement" means this Agreement
including all Exhibits
attached
to this Agreement together with any written amendments of
any of
the foregoing.
2. Grant of
License
2.1 License. Subject to
the exceptions of paragraph 9.2, XX. XXXXXX hereby grants to BZEC the exclusive
right and license to use and exploit the Licensed Technology to make, have made,
use, market, lease, and sell Licensed Products and to practice Licensed Methods
in the Licensed Territory during the term of this Agreement unless sooner
terminated as provided in this Agreement.
2.2 Developmental
Information. Upon execution of this Agreement, XX. XXXXXX shall
provide BZEC with the Licensed Technology and all information relating to the
development of the Licensed Technology, including but not limited to blueprints,
working drawings, and data and information relating to manufacture of Licensed
Products.
3. BZEC ownership of the
Technology
3.1 Upon the complete
payment by BZEC of monies agreed to be paid to XX. XXXXXX under this Agreement,
XX. XXXXXX shall forthwith take all steps necessary to transfer and assign title
of the Licensed Technology and all information relating to the development of
the Licensed Technology, including but not limited to blueprints, working
drawings, and data and information relating to
manufacture of Licensed Products to BZEC.
4. Payment
4.1 Timing of
Payments. Within one (1) year of the Effective Date of this
Agreement, viz., July 30, 2011, BZEC shall pay to XX. XXXXXX the sum of
$180,000. On or before July 30, 2012, BZEC shall pay to XX. XXXXXX
the sum of $180,000. On or before July 30, 2013, BZEC shall pay to
XX. XXXXXX the sum of $240,000. On or before July 30, 2014, BZEC
shall pay to XX. XXXXXX the sum of 2,000,000. On or before July 30,
2015, BZEC shall pay to XX. XXXXXX the sum of $2,400,000. The
foregoing totals $5,000,000 and is the full amount to be paid to XX. XXXXXX
under this Agreement. These monies may be paid in advance of the
aforesaid schedule. All sums are in U.S. Dollars. At the
conclusion of these payments, XX. XXXXXX shall immediately comply with paragraph
3.1, above.
4.2 Manufacture of Devices
by Guided Therapeutics, Inc. The parties hereto agree that
Guided Therapeutics, Inc. shall re-engineer and manufacture 100 BDS
devices (a product which may be used for the non-invasive detection
of breast cancer). That Agreement will be separate from this
Agreement, and will be incorporated
herein as Exhibit "A."
4.3 Violations of
Agreement. For the purpose of clarification, the following
contingencies represent a material breach in payment by BZEC to XX. XXXXXX or
GT, in the event of which, all rights to the Licensed Technology, as defined
above in Section 1, both exclusive and nonexclusive, remain the exclusive
property of XX. XXXXXX.
a) Failure by BZEC to pay GT
$20,000 by July 30, 2010 for GT's past services to BZEC;
b) Failure by BZEC to pay GT
$250,000 by January 30, 2011 for GT's planned work in developing the Licensed
Technology as described in the Agreement betweeen BZEC and GT, of even date
herewith and attached hereto as Exhibit "A;"
c) Failure by BZEC to pay GT
monies due for completion of GT's planned work in developing the Licensed
Technology as described
in the Agreement betweeen BZEC and GT, of even date herewith and attached hereto
as Exhibit "A;" and
d) Failure by BZEC to pay
XX. XXXXXX according to the schedule
set forth in Section 4.1 of this Agreement.
5. Improvements in Licensed
Technology
5.1 Notification of
Improvements. XX. XXXXXX shall promptly inform BZEC of any
improvements to the Licensed Technology developed or acquired by XX. XXXXXX
during the term of this Agreement.
6. Patent
Maintenance
6.1 Responsibility. BZEC
shall be responsible for the payment of all fees, costs and expenses paid or
incurred connected with filing patent applications, research of prior art, legal
opinions, maintenance fees or annuities to maintain the Licensed Intellectual
Property licensed to BZEC during the term of this Agreement. XX.
XXXXXX shall cooperate as reasonably requested by BZEC in any such filings and
prosecutions; such cooperation to include executing or supplying without
additional compensation all papers and other instruments, information, or
testimony deemed appropriate by BZEC for such filings and
prosecutions.
6.2 Notification. BZEC
shall, within fourteen (14) days of the event, advise XX. XXXXXX of the filing
of any patent application under paragraph 6.1 and, as appropriate, advise XX.
XXXXXX of
the prosecution of such application and maintenance of any patent issuing
thereon.
6.3 Inventions Made by
BZEC. Inventions made by BZEC relating to the subject matter of the
Licensed Technology, and any patents based thereon, shall belong to
BZEC.
7. Patent
Infringement
7.1 Notice of
Infringement. BZEC and XX. XXXXXX shall take all reasonable steps to
protect the Licensed Patents in all parts of the
Licensed Territory, and each of them shall give prompt notice to
the other of any infringement or threatened or suspected infringement thereof
that shall at any time come to his or its knowledge together with such detailed
information as shall from time to time be available to him or it relating to
such infringement or threatened or suspected infringement.
7.2 Defense. In
the event that a declaratory judgment action, cancellation, opposition or
similar proceeding alleging invalidity, unenforceability, or infringement of any
of the Licensed Patents shall be brought by a third party against XX. XXXXXX
involving the Licensed Patents, BZEC shall assume the responsibility of
defending or settling such action or proceeding.
7.3 Infringement
Suits. BZEC shall be responsible for Patents,
if it is of the opinion that such infringement will instituting
legal action against infringers of the Licensed seriously
affect its business. The decision to institute or settle legal action
will be solely that of BZEC. If XX. XXXXXX disagrees with BZEC's
decision not to institute legal action against infringers, XX. XXXXXX shall have
the option to institute legal action for patent infringement at his own expense
and the right to retain
all damages (including attorneys' fees) obtained as a result of such legal
action. If BZEC chooses to institute legal action against infringers,
it shall be entitled to deduct its costs relating to each such legal action from
any damages (including attorneys' fees) obtained as a result of the
action. Should any moneys then remain of the damages, BZEC shall
retain seventy-five (75) percent of such remaining monies and shall pay to XX.
XXXXXX the other twenty-five (25) percent of such remaining moneys.
7.4 Cooperation. In any
suit either party may commence or defend against a third party pursuant to its
rights under this Agreement in order to enforce or defend the validity or
enforceability
of the Licensed Patents, the other party shall, at the request and expense of
the party initiating or defending such suit, cooperate in all respects and, to
the extent possible, have its or his employees testify when requested and make
available relevant records, papers, information, samples, specimens ,and
the
like.
8. Confidentiality
8.1 Agreement
Terms.
(a) During the term of this Agreement
and for five (5) years thereafter, BZEC shall not divulge to any third party
(excluding its
employees, counsel, affiliates, and sublicensees) any written information
provided by XX. XXXXXX pursuant to paragraph 2.2 and prominently
marked "CONFIDENTIAL" when so provided; provided, however,
that BZEC shall not be obligated to maintain as confidential any information now
or hereafter in the public domain through no fault of BZEC, any information
ordered to be divulged by a court of competent jurisdiction. However,
in the event that BZEC completes its monetary obligations under this Agreement
to XX. XXXXXX, then this paragraph shall be of no effect.
(b) During the term or this Agreement
and for five (5) years thereafter, XX. XXXXXX shall not divulge to any third
party any written information provided by BZEC and prominently marked
"CONFIDENTIAL" when so provided; provided, however, that XX. XXXXXX shall not be
obligated to maintain as confidential any information now or hereafter in the
public domain through no fault of XX. XXXXXX or any information ordered to be
divulged by a court of competent jurisdiction, except that if BZEC shall default
on this Agreement, then this paragraph shall be of no effect.
9. Term and
Termination
9.1 Duration. This
Agreement shall commence upon the Effective Date. The term of this
Agreement is five (5) years, unless BZEC accelerates all payments to be paid to
XX. XXXXXX as provided in paragraph 4, at which time XX. XXXXXX shall
transfer
and assign title of the Licensed Technology and all information relating to the
development of the Licensed Technology, including but not limited to blueprints,
working drawings, and data and information relating to manufacture of Licensed
Products to BZEC as per paragraph 3.1. However, this Agreement may be
terminated sooner by XX. XXXXXX as otherwise provided immediately
below.
9.2 Termination of
Exclusivity or Agreement. If BZEC defaults in any payment to
XX.XXXXXX required by this Agreement and remains in default for ten (10)
business days after notice of default from XX. XXXXXX, XX. XXXXXX may void this
Agreement by sending written Notice in accordance with paragraph
11.4.
9.3 Termination by
BZEC. BZEC may terminate this Agreement at any time by giving XX.
XXXXXX thirty (30) days prior written notice of BZEC's election to
terminate.
9.4 Events Following
Termination. If this Agreement is terminated
by XX. XXXXXX under paragraph 9.2 or by BZEC under paragraph 9.3,
then,
(a) All rights and
obligations in relation to the Licensed Technology and improvements thereto
shall remain with XX. XXXXXX and may be exploited by him as his unencumbered
beneficially owned property and BZEC shall have no rights whatsoever to the
Licensed Technology.
(b) If BZEC terminates this
Agreement, then BZEC shall have no rights whatsoever to the Licensed
Technology. BZEC will be under no further obligation to make any
payments to XX. XXXXXX
in
accordance with Section 4, but XX. XXXXXX may retain any monies paid to him
under that Section.
(c) The termination of this
Agreement shall not affect any right of action which may have accrued to either
party in respect of any breach prior to the date of such
termination.
10.0 Warranties
10.1 XX. XXXXXX'x
Warranties. XX. XXXXXX hereby makes the following
representations and warranties to BZEC, which representations and warranties are
true and correct on the Effective Date:
(a) Except as expressly set
forth to the contrary in paragraph 10.2 of this Agreement, XX. XXXXXX is the
sole inventor of the Intellectual Property covered by this
Agreement;
(b) XX. XXXXXX has the right
to grant and license and to sell the Intellectual Property covered by this
Agreement and he has executed no agreement in conflict herewith;
(c) XX. XXXXXX has not
filed, caused to be filed, or participated in filing any applications for
patent, nor has he obtained in his name, or caused to be obtained in the name of
another, any patent based on or covering the Licensed Technology;
(d) There are no claims
(relating to patent infringement or any other matters), actions, suits,
agreements, proceedings, arbitrations, or investigations existing or pending or,
to the best of XX. XXXXXX'x knowledge, threatened against XX. XXXXXX or others
which if adversely determined would adversely affect the Licensed Technology (or
the patentability thereof) or XX. XXXXXX'x ability
to enter into or carry out this Agreement or license the Licensed
Technology.
10.2 Licensed Patents
Subject to Other Agreement. Inventions which are subject to XX.
XXXXXX'x previous employment agreement with BZEC are not the property of XX.
XXXXXX and are not included in the Licensed Technology. BZEC
represents that the "new" Licensed Technology to be developed under this
Agreement by XX. Xxxxxx is not subject in any way to XX. Xxxxxx'x previous
employment Agreement with BZEC.
10.3 Cooperation.
XX. XXXXXX agrees to extend reasonable
efforts to answer inquiries from any funder of BZEC or its representatives,
counsel or consultant regarding the provisional and final patent applications
which XX. XXXXXX shall prepare for BZEC in accordance with this
Agreement.
XX. XXXXXX agrees to extend reasonable
efforts to answer inquiries from any major customer of BZEC or its
representatives, counsel or consultant regarding the operation of the BDS
device.
11. Miscellaneous and
General
11.1 Patent
Marking, BZEC agrees to xxxx the Licensed Products sold in the United
States with all applicable United States patent numbers. All Licensed
Products shipped to or sold in other countries shall be to the extent practical
marked in such manner as to conform with the patent laws and practice of the
country of sale.
11.2 Interpretation. The
parties are equally responsible for the preparation of this Agreement, and in
any legal proceeding the terms hereof shall not be more strictly construed
against one party than the other.
11.3 Resolution of
Disputes. In the event the parties have a dispute or claim of any
kind arising under this Agreement that they are unable to resolve through direct
communications, such dispute
shall be resolved through arbitration pursuant to the rules of the American
Arbitration Association; provided, however, that (1) the Federal Rules of
Evidence shall apply during any such arbitration, (2) any discovery permitted
during such arbitration shall be completed within ninety (90) days of
commencement of such arbitration, and (3) such arbitration shall be held in
Atlanta, GA if either party asserts a claim against the other.
11.4 Notices. All
notices, statements and reports required or contemplated herein by one party to
the other shall be in writing and shall be deemed to have been given upon
delivery in person or upon the expiration of seven (7) days after deposit in a
lawful mail depository, registered or certified mail postage prepaid, and
addressed as follows:
If to BZEC:
Biofield Corp.
Suite One
000 Xxxxxxxxx Xxxxxx
Xxxxx, XX 00000
ATTN: Xxxx X. Xxxxxxxxxx,
Esquire
Facsimile: 000-000-0000
E-mail: xxxxxxxx@xxx.xxx
If to XX. XXXXXX:
Xxxx X. Xxxxxx, Ph.D.
000 Xxxxxxxxxx Xxx
Xxxxxxxxxx, XX 00000
Facsimile: 770-141-1917
Email: xxxxxxx@xxxxxxx.xxx
Either
party hereto may change the address to which notices to such party are to be
sent by giving notice to the other party at the address and in the manner
provided above. Any notice herein required or permitted to be given
may be given, in addition to the manner set forth above, by telex, facsimile or
cable, provided that the party giving such notice obtains acknowledgement by
telex, facsimile
or cable that such notice has been received by the party to he
notified. Notice made in this manner shall be deemed to have been
given when such acknowledgement has been transmitted.
11.6 Assignments and
Inurement. Except to the extent otherwise herein provided, neither
party shall grant, transfer, convey, sublicense or otherwise assign any of its
rights or delegate any of its obligations under this Agreement without the prior
written consent of the other, which consent shall not be unreasonably
withheld, except in connection with the reorganization or sale of substantially
all of the assets of the party's business or as otherwise explicitly permitted
in this Agreement, and any attempt to do so shall be of no
effect. This Agreement shall be binding upon and inure to the benefit
of the successors and
permitted
assigns of the parties hereto.
11.7 Filing of Contract
Rights. BZEC may file any and all appropriate documents, with the
United States Patent and Trademark Office, and any other country's patent
office, as relevant, at its sole expense, to give notice of its exclusive right
to purchase the IP under this Agreement. Copies of all such filings
shall be timely provided to XX. XXXXXX. However, no such filing may
be made until after GT has received the $250,000 and $20,000 payments and XX.
XXXXXX has received his initial $180,000 payment. Further, in the
event that this Agreement or the GT Agreement are breached by BZEC, XX. XXXXXX
has the right, without more, to withdraw/nullify the aforesaid
filings.
11.8 Entire
agreement. This Agreement constitutes the entire Agreement between
XX. XXXXXX and BZEC with respect to the subject matter hereof and shall not be
modified, amended or terminated except as herein provided or except by another
agreement in writing executed by the parties hereto.
11.9 Headings. The
section and paragraph headings are for convenience and are not a part of this
Agreement.
11.10 Severability. All
rights and restrictions contained herein
may be exercised and shall be applicable and binding only to the
extent that they do not violate any applicable laws and are intended to be
limited to the extent necessary so that they will not
render this Agreement illegal, invalid or unenforceable. If any provision or
portion of any provision of this Agreement not
essential to the commercial purpose of this Agreement shall be held to be
illegal, invalid or unenforceable by a court of competent jurisdiction, it is
the intention of the parties that the remaining provisions or portions thereof
shall constitute their agreement with respect to the subject matter hereof, and
all such remaining
provisions or portions thereof shall remain in full force and
effect. To the extent legally permissible, any illegal, invalid or
unenforceable provision of this Agreement shall be replaced by a valid provision
which will implement the commercial purpose
of this illegal, invalid or unenforceable provision. In the event
that any provision essential to the commercial purpose
of this
Agreement is held to be illegal, invalid or unenforceable and cannot be replaced
by a valid provision which will implement the commercial purpose of this
Agreement, this Agreement and rights granted herein shall
terminate.
11.11 Choice of
Law. This Agreement is acknowledged to have been made in and shall be
construed in accordance with the laws of the State of Georgia, United States of
America; provided that all questions concerning the construction or effect of
Licensed Patents shall be decided in accordance with the laws of the country
in which the particular patent application concerned has been
filed or
granted, as the case may be.
11.12 Indemnification. BZEC
shall indemnify, hold harmless and defend (including paying reasonable
attorneys' fees) XX. XXXXXX from and against any and all losses, including but
not limited to, injury to persons, property, and the environment, caused by the
Licensed Products or arising out of the manufacture, use, sale, promotion, or
possession of the Licensed Products or any intermediate
activity thereof or by the performance of any activities by BZEC as a result of
this Agreement, except where caused by the fraudulent actions or omissions of
XX. XXXXXX.
11.13 Use of
Names. BZEC shall not use XX. XXXXXX'x name, or the name of any
entity affiliated with XX. XXXXXX, in any advertisement or sales material unless
it obtains the prior written
consent of such person or entity proposed to be named.
IN WITNESS WHEREOF, XX. XXXXXX has
executed this Agreement and BZEC has caused this Agreement to be executed by its
duly authorized representative as of the day and year written
below.
|
Date:
July 27,
2010
|
By:
|
/s/ Xxxx X. Xxxxxx | |
| XXXX X. XXXXXX, PH.D | |||
| BIOFIELD CORP. | |||
|
Date:
July 16,
2010
|
By:
|
/s/ Xxxxx Xxxxx Xxxx | |
| Xxxxx Xxxxx Xxxx | |||
| President | |||
EXHIBIT "A"
AGREEMENT FOR RE-ENGINEERING
AND MANUFACTURE OF NEW BDS DEVICE
THIS
AGREEMENT is made and entered into as of the date last entered below and upon
the payment of $20,000 to GT for previous services provided, which payments must
be made to GT by no later than August 15, 2010 ("the Effective Date"), by and
between Guided Therapeutics, Inc. ("GT"), a corporation having an address of
0000 Xxxxxxxxx Xxxxxxx Xxxx, Xxxxx X, Xxxxxxxx, XX 00000 and Biofield Corp.
("BZEC"), a Delaware corporation, having an office at 000 Xxxxxxxxx Xxxxxx,
Xxxxx, XX 00000. In addition, prior to commencing work on the subject
project, GT shall receive a further payment from BZEC of $250,000 towards the
re-engineering and development of that certain BDS technology, which payment
must be made to GT no later than January 30, 2011.
WHEREAS,
XXXX XXXXXX, PhD ("XX. XXXXXX") owns the exclusive rights in and to technology
relating to electrical and ionic methods, apparatus, and devices for the in vivo
and in vitro screening and diagnosis of disease states, including the technology
described in more detail below,
AND
WHEREAS, BZEC has entered into an agreement with XX. XXXXXX of even date
herewith, to obtain the exclusive rights to utilize the technology described
herein and eventual ownership of same,
NOW
THEREFORE, for and in consideration of the foregoing and the mutual covenants
and agreements contained herein, the parties hereto agree as
follows:
1. Definitions
As used herein:
1.1 "Licensed Technology" means any
technology pertaining to the utilization of electrical, electropotential, or
electrical impedance, for the noninvasive screening, detection, or diagnosis of
disease states in an organism, including but not limited to:
(a) The patent application which
describes the invention of utilizing extremely low frequency electromagnetic
fields for the screening and diagnosis of disease states in an organism,
and
1.2 "Licensed Method" means any method
which is claimed in a patent application.
1.3 "Licensed Product(s)" means any
product, including devices and disposable components of the device system, which
are claimed in a patent application.
1.4 "Agreement" means this Agreement
including all Exhibits attached to this Agreement together with any written
amendments of any of the foregoing.
2. License
2.1 License. Pursuant
to that certain Agreement between BZEC and
XX. XXXXXX, XX. XXXXXX has granted to BZEC the exclusive right and license to
use and exploit the Licensed Technology to make, have made, use, market, lease,
and sell Licensed Products and, if that agreement is fulfilled BZEC will own the
IP rights to the Licensed Technology.
2.2 Developmental
Information. Upon execution of this Agreement and the
Agreement with XX. XXXXXX, XX. XXXXXX shall provide GT with the Licensed
Technology and all information relating to the development of the Licensed
Technology, including but not limited to blueprints, working drawings, and data
and information relating to manufacture of Licensed Products.
2.3 Ownership of
Technology. Upon the payment by BZEC of all monies agreed to
be paid to XX. XXXXXX under the Agreement between XX. XXXXXX and BZEC, the
latter will then own the Licensed Technology and all information relating to the
development of the Licensed Technology, including but not limited to blueprints,
working drawings, and data and information relating to manufacture of Licensed
Products. If the Agreement between XX. XXXXXX and BZEC fails, then
exclusive title to the Licensed Technology and all information relating to the
development of the Licensed Technology, including but not limited to blueprints,
working drawings, and data and information relating to manufacture of Licensed
Products shall remain with XX. XXXXXX.
3. Development and
Re-engineering
3.1 GT agrees to use all
reasonable efforts to develop the new Biofield BDS Device ("Work"), as
follows:
(a) Plan. The method
and approximate timing of the development and re-engineering of the new Biofield
Device is set forth in Exhibit "A," hereto;
(b) Cost. Approximately
$400,000 to $500,0000 (see Exhibit "A");
(c) Timing. Payment of
the initial $250,000 must be made to GT no later than January 30,
2011. Completion of the re-engineering and development phase is
expected to occur within six (6) months of payment of the $250,000 to GT and
agreement by both BZEC and GT on product specifications, not including CE
inspection.
(d) Interim
Payments. Within sixty (60) of the initial payment and GT's
commencement of Work, BZEC will pay $125,000 to GT. Should GT not
receive this payment, GT reserves the right, at its sole discretion, to cease
further work until it receives the said payment or the Agreement terminates in
accordance with paragraph 7.1, below.
(e) Final
Payment. Within thirty (30) days before the scheduled CE
inspection, BZEC will pay to GT the balance due. Should GT not
receive this payment, GT reserves the right, at its sole discretion, to cease
further work until it receives the said payment or the Agreement terminates in
accordance with paragraph 7.1, below.
4. Manufacture of
Units
4.1 Number of Units. GT
shall manufacture a minimum of 100 Biofield Prototypes at cost (including parts,
labor, warranty and overhead) plus a profit margin of thirty-five (35%)
percent.
4.2 Additional
work. Any other work requested of GT by BZEC beyond the scope
of the development, re-engineering and manufacturing described in sections 3 and
4.1 above, will be quoted
in advance and then accepted (by Purchase Order) or rejected by
BZEC.
5. Additional
Services.
5.1 Any other services
requested by BZEC of GT shall be governed by a written request for a quote and
purchase order.
6. Confidentiality
6.1 Agreement Terms.
(a) During the term or this
Agreement and for five (5) years thereafter, GT shall not divulge to any third
party any written information provided by BZEC and prominently marked
"CONFIDENTIAL" when so provided; provided, however, that GT shall not be
obligated to maintain as confidential any information now or hereafter in the
public domain through no fault of GT or any information ordered to be divulged
by a Court of competent jurisdiction, except that if BZEC shall default on this
Agreement, then this paragraph shall be of no effect.
7. Term and
Termination
7.1 Duration. This
Agreement shall commence upon the Effective Date. This Agreement
shall terminate upon the completion by GT of the above-stated
tasks. Should BZEC desire that GT manufacture additional Biofield
Devices, either a new contract may be entered by the parties hereto or the
parties hereto may amend this agreement. If BZEC defaults in any
payment to GT required by this Agreement and remains in default for ten (10)
business days after notice of default from GT, GT may void this Agreement by
sending written Notice in accordance with paragraph 9.3. If this
Agreement shall be terminated as immediately aforesaid, GT shall have no
obligation to perform any further work for BZEC or to return any monies paid to
it by BZEC under this Agreement. GT will provide BZEC with copies of
blueprints, working drawings, and data and information relating to manufacture
of Licensed Products which it has created from the Effective Date to the default
date.
8. Cooperation.
8.1 GT agrees to extend
reasonable efforts to answer inquiries from any funder of BZEC or its
representatives, counsel or consultants regarding the development,
re-engineering and/or manufacture of the Biofield Devices in accordance with
this Agreement.
8.2 GT agrees to extend
reasonable efforts to answer inquiries from any major customer of BZEC or its
representatives, counsel or consultant regarding the development, re-engineering
and/or manufacture of the Biofield Devices in accordance with this
Agreement.
9. Miscellaneous and
General
9.1 Interpretation. The
parties are equally responsible for the preparation of this Agreement, and in
any legal proceeding the terms hereof shall not be more strictly construed
against one party than the other.
9.2 Resolution of
Disputes. In the event the parties have a dispute or claim of
any kind arising under this Agreement that they are unable to resolve through
direct communications, such dispute
shall be resolved through arbitration pursuant to the rules of the American
Arbitration Association; provided, however, that (1) the Federal Rules of
Evidence shall apply during any such arbitration, (2) any discovery permitted
during such arbitration shall be completed within ninety (90) days of
commencement of such arbitration, and (3) such arbitration shall be held in
Atlanta, GA if either party asserts a claim against the other.
9.3 Notices. All
notices, statements and reports required or contemplated herein by one party to
the other shall be in writing and shall be deemed to have been given upon
delivery in person or upon the expiration of seven (7) days after deposit in a
lawful mail depository, registered or certified mail postage prepaid, and
addressed as follows:
If to BZEC:
Biofield Corp.
Suite One
000 Xxxxxxxxx Xxxxxx
Xxxxx, XX 00000
ATTN: Xxxx X. Xxxxxxxxxx,
Esquire
Facsimile: 000-000-0000
E-mail: xxxxxxxx@xxx.xxx
If to Guided Therapeutics,
Inc.:
Guided Therapeutics, Inc.
0000 Xxxxxxxxx Xxxxxxx Xxxx Xxxxx
X
Xxxxxxxx, XX 00000
ATTN: Xxxx X. Xxxxxx,
Ph.D.
Facsimile: 000-000-0000
Email:
xxxxxxx@xxxxxxxxx.xxx
Either
party hereto may change the address to which notices to such party are to be
sent by giving notice to the other party at the address and in the manner
provided above. Any notice herein required or permitted to be given
may be given, in addition to the manner set forth above, by telex, facsimile or
cable, provided
that the party giving such notice obtains acknowledge-ment by telex, facsimile
or cable that such notice has been received by the party to he
notified. Notice made in this manner shall be deemed to have been
given when such acknowledgement has been transmitted.
9.4 Assignments and
Inurement. Except to the extent otherwise herein provided,
neither party shall grant, transfer, convey, sublicense or otherwise assign any
of its rights or delegate any of its obligations under this Agreement without
the prior written consent of the other, which consent shall not be unreasonably
withheld, except in connection with the reorganization or sale of substantially
all of the assets of the party's business or as otherwise explicitly permitted
in this Agreement, and any attempt to do so shall be of no
effect. This Agreement shall be binding upon and inure to the benefit
of the successors and permitted assigns of the parties hereto.
9.5 Prior
Inventory. BZEC shall pay to GT the sum of $20,000, on or
before July 30, 2010, as full payment for any and all GT charges for storage of
existing BZEC materials stored at GT. GT herein agrees that upon
receipt of this payment, for itself and for its affiliates, subsidiaries,
directors, officers, employees and any representative of any kind, it does
release and
forever discharge BZEC and its affiliates, subsidiaries, directors, officers,
employees and any representative of any kind from any
and all claims, demands, damages, costs, expenses, loss of services, actions and
causes of action, arising from the storage of the aforesaid BZEC materials at
GT.
9.5 (a) Prior Inventory --
Removal.
BZEC shall be responsible to retrieve,
within sixty (60) days of the Effective Date of this Agreement, at its sole cost
and expense, all BZEC materials currently at GT, including but not limited to
old devices, schematics, brochures, etc. If BZEC should fail to
retrieve the aforesaid materials within the specified time, ownership of these
materials shall, without more, revert to GT.
9.6 Entire
agreement. This Agreement constitutes the entire Agreement
between GT and BZEC with respect to the subject matter hereof and shall not be
modified, amended or terminated except as herein provided or except by another
agreement in writing executed by the parties hereto.
9.7 Headings. The
section and paragraph headings are for convenience and are not a part of this
Agreement.
9.8 Severability. All
rights and restrictions contained herein
may be exercised and shall be applicable and binding only to the
extent that they do not violate any applicable laws and are intended to be
limited to the extent necessary so that they will not
render this Agreement illegal, invalid or unenforceable. If any provision or
portion of any provision of this Agreement not
essential to the commercial purpose of this Agreement shall be held to be
illegal, invalid or unenforceable by a court of competent jurisdiction, it is
the intention of the parties that the remaining provisions or portions thereof
shall constitute their agreement with respect to the subject matter hereof, and
all such remaining provisions or portions thereof shall remain in full force and
effect. To the extent legally permissible, any illegal, invalid or unenforceable
provision of this Agreement shall be replaced by a valid provision which will
implement the commercial purpose of this illegal, invalid or unenforceable
provision. In the event that any provision essential to the
commercial purpose of this Agreement is held to be illegal, invalid
or unenforceable and cannot be replaced by a valid provision which will
implement the commercial purpose of this
Agreement, this Agreement and rights granted herein shall
terminate.
9.9 Choice of Law. This
Agreement is acknowledged to have been made in and shall be construed in
accordance with the laws of the State of Georgia, United States of America;
provided that all questions concerning the construction or effect of Licensed
Patents shall be decided in accordance with the laws of the country
in which the particular patent application concerned has been filed
or granted, as the case may be.
9.10 Use of Names. BZEC
shall not use GT's name, or the name of any entity affiliated with GT, in any
advertisement or sales material unless it obtains the prior written consent of
GT or the entity proposed to be named, which consent will not be unreasonably
withheld or delayed. The only exception to the foregoing is that BZEC
may use the name of GT and any entity affiliated with GT (if required) for SEC
filings.
IN WITNESS WHEREOF, GT has executed
this Agreement and BZEC has caused this Agreement to be executed by its duly
authorized representative as of the day and year written below.
| GUIDED THERAPEUTICS, INC. | |||
|
Date: July
27, 2010
|
By:
|
/s/ Xxxx X. Xxxxxx | |
| XXXX X. XXXXXX, PH.D., | |||
| CEO and PRESIDENT | |||
| GUIDED THERAPEUTICS, INC | |||
|
Date:
July 16, 2010
|
By:
|
/s/ Xxxxx Xxxxx Xxxx | |
| Xxxxx Xxxxx Xxxx | |||
| PRESIDENT | |||
