RESTATEMENT OF SUBLICENSE AGREEMENT
EXHIBIT 10.1
This Restatement of Sublicense Agreement (the "Agreement") is entered into and made effective July 7, 2014 (the "Effective Date") between BIOCORRX, INC., whose principal place of business is at 000 Xxxxxxxxxx Xxxxx, Xxxxx 000, Xxxxx Xxx, Xxxxxxxxxx 00000 (hereinafter referred to as "LICENSOR") and, Kryptonite Investments, LLC, whose principal place of business is X.X. Xxx 000, Xxxxxxxxx, XX 00000 (hereinafter referred to as "LICENSEE”).
BioCorRx, Inc. is formerly known as Fresh Start Private Management, Inc All parties are aware of and acknowledge the name change and proceed with that understanding.
This Restatement appropriately and fully states the intent and understanding of all parties and shall serve to clarify issues which have become known to the parties since the execution of the License Agreement on April 8, 2013. The execution date of April 8, 2013 shall remain the effective date for establishment and granting of the License and all calculations of performance deadlines and relevant obligations between the parties. In the event that any of the terms contained herein may conflict or contradict terms called for in the License Agreement executed on April 8, 2013, it is acknowledged and agreed by all parties that terms stated herein shall fully supersede any and all prior agreements and/or understandings between the parties whether written or oral.
LICENSOR possesses a master license granted to LICENSOR by Trinity Rx Solutions, whose principal place of business is 000-00 Xxxxxxxx Xxxxx Xxxx, Xxxxxx Xxxxx Xxx Xxxx, 00000 (hereinafter referred to as "TRINITY"). TRINITY is aware of, and acknowledges and grants to LICENSOR all rights necessary to grant the SUBLICENSE described herein to LICENSEE. TRINITY’S acknowledgement of LICENSOR’S right to SUBLICENSE to LICENSEE is expressly confirmed as evidenced by the signature of TRINITY representative and owner XXX XXXXXX.
WITNESSETH
WHEREAS, Trinity has granted to LICENSOR exclusive, worldwide licensing rights except for Australia and New Zealand (the "Licensor Rights") pursuant to that certain License Agreement entered into between LICENSOR and Trinity dated October 28, 2010 (the "Trinity License Agreement") for Naltrexone Implants that have been designed to treat alcoholism and Opioid addiction (the "Implant");
WHEREAS, LICENSOR has developed and owns worldwide rights to the Start Fresh Coaching Program (the "Coaching Program");
WHEREAS, LICENSOR has developed certain Know-How as defined below;
WHEREAS, LICENSEE desires to sub-license from Licensor the Licensor Rights solely for use in the License Territory (as defined below), upon the terms and conditions provided herein;
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WHEREAS, LICENSEE desires to acquire an exclusive license to distribute and sell, solely in the License Territory, the Implant and Coaching Program upon the terms and conditions contained herein; and
WHEREAS, LICENSEE desires to acquire an exclusive license to utilize, solely in the License Territory, the Know-How.
NOW THEREFORE, for these and other valuable considerations defined herein, the parties agree as follows:
l. DEFINITIONS
1.1 "Affiliate" shall mean any corporation or other business entity controlled by, controlling or under common control with LICENSOR or LICENSEE. For purposes of this Agreement, "control" shall mean direct or indirect beneficial ownership of at least a fifty percent (50%) of the voting interest in such entity, or such other relationship as in fact, constitutes actual control.
1.2 "Know-How" shall mean trade secrets, inventions, data, processes, procedures, devices, methods, formulas, protocols, trademarks, logos, marketing materials, copyrights, patents, information and other know-how, whether or not patentable, which is owned or controlled by
LICENSOR during the License Term and is necessary or useful for the commercial exploitation of the Implants and Coaching Program.
1.3 "License Territory" shall mean the entire state of Arizona.
1.4 "Regulatory Authority" shall mean the United States federal government, any state or local agency, or any other medical licensing or regulatory authority in any jurisdiction.
2. GRANT OF LICENSES
2.1 Grant of Sub-License. In consideration of the fees to be paid and other mutual promises further described herein, LICENSOR hereby grants to LICENSEE an exclusive sublicense in the License Territory to obtain, market, use, sell, and offer for sale, the Implants pursuant to the terms contained herein.
2.2 Grant of Other Licenses. In consideration of the fees to be paid and other mutual promises further described herein, LICENSOR also grants to LICENSEE an exclusive, license to, solely within the License Territory: (i) obtain, market, use, sell, and offer for sale the Coaching Program; and (ii) utilize the Know-How, which shall specifically include, but not be limited to, the logo and certain marketing materials currently utilized by Licensor, as well as the characteristics of the compound formula of the Implant solely for the purposes described herein.
2.3 Acknowledgement by Trinity. Trinity acknowledges that Licensor currently has the exclusive rights to sub-license the use of the Implants and to grant the sub-license contained herein; provided, however, that in the event that Licensor no longer has the Licensor Rights granted pursuant to the Trinity License Agreement, or the ability to grant the sub-license granted under Section 2.1, Trinity agrees for the term of this agreement that it shall grant to Licensee the same rights as granted to Licensor pursuant to the Trinity License Agreement with respect to Licensee's rights to utilize the Implants as further described herein.
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2.4 Further Actions. It is agreed that the LICENSOR will grant LICENSEE the right to communicate directly with Trinity, with any and all written communications to include copied communications to LICENSOR; provided, however, that LICENSEE agrees not to circumvent the LICENSOR with any of its business dealings with Trinity. Notwithstanding the foregoing, LICENSEE agrees to follow instructions for program and implant ordering pursuant to Exhibit B.
2.5 Exclusivity. The license and sub-license granted herein shall be exclusive in nature for the License Territory, and LICENSOR agrees only LICENSEE shall have the right to market and sell the Implants and Coaching Program, and utilize the Know-How in the License Territory, and further, that LICENSEE may seek an injunction or other temporary relief preventing any third party, including LICENSOR, from selling the Implants or Coaching Program in the License Territory or taking any action to specifically divert business away from LICENSEE in the License Territory.
3. TERM
3.1 So long as all minimal annual milestones are achieved, all payment installments received, and any alleged breaches by LICENSEE are timely cured this Agreement shall remain in effect in perpetuity. Any failure by LICENSEE, in whole or in part, to achieve all minimum annual milestones, make payment installments on time and/or cure any material breach on the part of LICENSEE shall allow LICENSOR to terminate this SUBLICENSE AGREEMENT with all rights conferred to LICENSEE reverting back to LICENSOR.
4. REPRESENTATIONS AND WARRANTIES
4.1 Mutual Representations and Warranties. Each party represents and warrants that: (i) it possesses the legal capacity and is authorized to execute and deliver this Agreement and to perform its obligations hereunder; (ii) this Agreement is a legal and valid obligation binding upon it and enforceable in accordance with its terms; and (iii)to the best of its knowledge the execution, delivery and performance of this Agreement does not conflict with any agreement, instrument or understanding, oral or written, to which it is a party or by which it may be bound, nor violate any law or regulation of any court, governmental body or administrative or other agency having jurisdiction over it.
4.2 Representations and Warranties of LICENSOR.
(a) LICENSOR represents and warrants that LICENSOR owns the rights to the Coaching Program and Know-How and has sufficient rights and power to grant the licenses to the Coaching Program and Know-How which LICENSOR purports to grant herein.
(b) LICENSOR represents and warrants that: (i) LICENSOR has the LICENSOR Rights and is not in breach of the Trinity License Agreement; (ii) LICENSOR will not willfully breach the Trinity License Agreement at any time after the Effective Date; and (iii) that LICENSOR has the sufficient rights and power to grant the sub-license to LICENSEE described in Section 2.1.
(c) LICENSOR represents that, to the best of its knowledge, except as set forth, there are no outstanding liens, encumbrances, agreements or understandings of any kind, either written, oral or implied, regarding the Coaching Program or Know-How which are inconsistent or in conflict with any provision of this Agreement.
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(d) LICENSOR represents and warrants that it has no knowledge of any outstanding and unresolved claim or accusation that the Implants, Coaching Program, or Know-How infringes or may infringe any third-party patent right(s). Furthermore, Licensor represents that it has no knowledge of any claim or threatened legal action that could impair the Licensor Rights, or any license or sub-license granted to LICENSEE herein.
(e) LICENSOR represents and warrants that it has not received any written notice, or been threatened that any Regulatory Agency plans to take any action that would be materially adverse to the Implants, the Coaching Program, or the Know-How.
(f) LICENSOR represents and warrants that it possesses product liability insurance as of the effective date and will continue to retain such insurance for the term of this agreement unless denied by insurance carriers due to circumstances out of LICENSOR’s control.
4.3 Representations and Warranties of LICENSEE.
(a) LICENSEE represents that it has the financial resources required to open and operate a business location to promote the Implants and Coaching Program (the "Licensee Business"), and is aware of and will comply with all laws and requirements necessary to lawfully operate the Licensee Business.
(b) LICENSEE represents that it will use its best efforts to promote the positive image of the Implants and the Coaching Program.
(c) LICENSEE represents that it has no current legal claims from parties that may inhibit LICENSEE's ability to operate the Licensee Business.
(d) LICENSEE warrants that it will identify and ensure compliance with all medical codes of conduct and applicable laws and statutes in the License Territory as applicable to the Licensee Business.
(e) LICENSEE represents that it will use commercially reasonable efforts to maintain the confidentiality of the Know-How.
(f) LICENSEE represents that they meet the criteria to be an Accredited Investor.
(g) LICENSEE represents that it will not intentionally market the implant or program outside of the License Territory without consent from LICENSOR or 3rd Party that may have license or distribution rights to the specific territory targeted with marketing.
(h) LICENSEE represents and warrants that it possesses product liability insurance as of the effective date and will continue to retain such insurance for the term of this agreement unless denied by insurance carriers due to circumstances out of LICENSEE’s control.
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4.4 Representations and Warranties of Trinity.
(a) Trinity represents and warrants that: (i) Licensor is not in breach of the Trinity License Agreement; and (ii) Licensor has a valid, perpetual, irrevocable license right to distribute the Implant and a right to sublicense such rights. Furthermore, as of the Effective Date, Trinity represents and warrants that it has taken no action, or is contemplating any such action, to terminate the Licensor Rights, or Licensor's ability to grant the sublicense contained in Section 2.1.
(b) Trinity represents and warrants that it will not license the rights to market, sell, or use the Implants to any third party in the License Territory without the express written consent of LICENSEE.
5. *
6. ASSIGNMENT
Neither party shall assign this Agreement without the consent of the other party, such consent to not be unreasonably withheld.
7. BINDING EFFECT
This Agreement shall extend to and be fully binding upon the successors and legal representatives and permitted assigns of LICENSOR and LICENSEE.
8. NOTICE
All correspondence to LICENSEE shall be addressed as follows below, or to any new address as supplied subsequent to the signing of this Agreement:
Kryptonite Investments, LLC
X.X. Xxx 000
Xxxxxxxxx, XX 00000
All correspondence to LICENSOR shall be addressed, as follows:
BioCorRx, Inc.
000 X. Xxxxxxxxxx Xx, Xxxxx 000
Xxxxx Xxx, Xxxxxxxxxx 00000
Attention: Xx. Xxxxx Xxxxxxx
Either party may change the address to which correspondence to it is to be addressed by notification as provided herein.
_____________
* Information omitted pursuant to a Confidential Treatment Request filed with the Securities and Exchange Commission.
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9. TERMINATION
9.1 Termination by LICENSOR. LICENSOR shall have the right to terminate this Agreement if LICENSEE commits a material breach of an obligation under this Agreement and such breach is not cured by LICENSEE within sixty (60) days from the date LICENSOR notifies LICENSEE in writing of the breach.
9.2 Termination by LICENSEE. LICENSEE shall have the right to terminate this Agreement for any reason, or no reason at all upon sixty (60) days notice to LICENSOR. In the event that LICENSEE terminates this Agreement pursuant to this Section 9.2, LICENSEE agrees not to engage in a competitive business with LICENSOR in the License Territory for a period of two (2) years following the effective date of termination. For purposes of this Agreement, the term "competitive business" shall mean the treatment of alcoholism or opioid addiction through the use of an implanted device and/or coaching or counseling.
9.3 Effect of Termination. Upon a termination of this Agreement, the licenses granted herein shall immediately terminate and each party shall immediately return or destroy any Confidential Information of the other party; provided, however, that each party may keep any portion of the Confidential Information required to be maintained by such party by any Regulatory Agency.
10. CONFIDENTIALITY
10.1 Confidential Information means (i) all proprietary or confidential information of either party hereto or its customers which is: (a) designated in writing as such; or (b) that by nature of the circumstances surrounding the disclosures in good faith ought to be treated as proprietary or confidential, including, but not limited to, the Coaching Program, the Know-How, and any information concerning any patient of LICENSEE.
10.2 Each party shall use the Confidential Information only for the purposes as set forth in the Agreement and shall disclose the Confidential Information only as specifically authorized in Section 10.3 below. Neither party shall remove any confidentiality, copyright, or similar notices or legends from the Confidential Information and shall implement such safeguards and controls as may be necessary or appropriate to protect against unauthorized uses or disclosures of the Confidential Information.
10.3 The receiving party shall not disclose Confidential Information except (i) to its employees, consultants or any third party having a legitimate business purpose and having a need to know such Confidential Information and (ii) in accordance with judicial or other governmental order, provided the receiving party gives reasonable notice to the other party prior to such disclosure and shall comply with any protective order or equivalent.
10.4 If any employee, officer, director, consultant, or agent of either party violates the provisions of this Section 10, or if any third party obtains any Confidential Information through one party without the other party’s authorization, then such disclosing party shall take, at its own expense, all actions that may be required to remedy such violation, or recover such Confidential Information and to prevent such employee, officer, director, agent, consultant, or third party from using or disseminating such Confidential Information, including, but not limited to, legal actions for seizure and injunctive relief, if then available under local law. If the disclosing party fails to take such actions in a timely and adequate manner, the other party or its designee may take such actions in its own name or disclosing party’s name and at the disclosing party’s expense.
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11. GOVERNING LAW
This Agreement shall be governed by and interpreted in accordance with the laws of the State of California and both parties agree that any action brought under this Agreement by either party shall exclusively be brought in the courts of Los Angeles County, CA.
12. SEVERABILITY
Should any part or provision of this Agreement be held unenforceable or in conflict with the applicable laws or regulations of any jurisdiction, the invalid or unenforceable part or provision shall be replaced with a provision which accomplishes, to the extent possible, the original business purpose of such part or provision in valid and enforceable manner, and the remainder of the Agreement shall remain binding upon the parties hereto.
13. SURVIVAL
Sections 4, 10 and 11 shall survive the termination of this Agreement.
14. OWNERSHIP
All Confidential Information, including all copies, disclosed by LICENSOR to the LICENSEE under this Agreement, shall be and remain property of LICENSOR notwithstanding the integration of such Confidential Information into a new document by LICENSEE. Upon.: (i) written request by LICENSOR; (ii) termination of this agreement; or(iii) conclusion of the Parties' business relationship, all of LICENSOR's Confidential Information, including all copies thereof and records, notes and other written, printed or tangible material pertaining thereto that is in possession of the LICENSEE, shall be returned to LICENSOR promptly and shall not thereafter be retained in any form by LICENSEE; provided, however, that documents created by LICENSEE that include both LICENSOR's and LICENSEE's Confidential Information do not need to be delivered to LICENSOR and may instead be destroyed by LICENSEE in a manner which preserves its confidentiality. The LICENSEE shall provide written certification that all of LICENSOR's confidential information has been destroyed.
15. AMENDMENT
No amendment or modification of the terms of this Agreement shall be binding on either party unless reduced to writing and signed by an authorized officer of the party to be bound
16. WAIVER
No failure or delay on the part of a party in exercising any right hereunder will operate as a waiver of, or impair, any such right. No single or partial exercise of any such right will preclude any other or further exercise thereof or the exercise of any other right. No waiver of any such right will be deemed a waiver of any other right hereunder.
17. ENTIRE AGREEMENT
This Agreement constitutes the entire agreement between the parties hereto respecting the subject matter hereof, and supersedes and terminates all prior agreements respecting the subject matter hereof, whether written or oral, and may be amended only by an instrument in writing executed by both parties hereto.
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18. ATTORNEYS FEES
The prevailing party in any dispute that arises out of or is related to this agreement shall be entitled to recover their reasonable attorney's fees and litigation costs associated with the dispute.
19. COUNTERPARTS
This Agreement may be executed in counterparts and each such counterpart shall be deemed an original hereof.
20. INDEMNIFICATION
20.1 LICENSOR Indemnification. LICENSOR hereby agrees to indemnify and hold harmless LICENSEE, and its members, successors, employees, and agents ("LICENSEE Indemnified Parties") from and against any loss, damages or costs incurred by the LICENSEE Indemnified Parties as a result of: (i) a breach of any representation or warranty by LICENSOR; or (ii) any breach of this Agreement related to the grossly negligent or intentional actions of LICENSOR.
20.2 LICENSEE Indemnification. LICENSEE hereby agrees to indemnify and hold harmless LICENSOR, and its members, successors, employees, and agents ("LICENSOR Indemnified Parties") from and against any loss, damages or costs incurred by the LICENSOR Indemnified Parties as a result of: (i) a breach of any representation or warranty by LICENSEE; or (ii) any breach of this Agreement related to the grossly negligent or intentional actions of LICENSEE.
21. NO FURTHER ASSURANCES
This Agreement contains all rights and interests conveyed and shall supersede any and all other agreements, proposals, communications and understandings, whether intended or not, which may have occurred prior to the execution of this Agreement. By entering into this Agreement LICENSEE acknowledges and confirms that it has no anticipation or expectation of any additional consideration whether in the form of additional or expanded territories or otherwise. LICENSOR is under no obligation to offer LICENSEE any other territories or the right to match any proposed offers to LICENSOR for other territories, if any, that may be presented to LICENSOR in the future.
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IN WITNESS WHERE OF, the parties here to have caused this Agreement to be executed by their respective officers there unto duly authorized to be effective as of the Effective Date.
| LICENSEE | LICENSOR | ||||
| Kryptonite Investments, LLC | BioCorRx, Inc. | ||||
| By: | /s/ Xxxxx Xxxxxxxxx | By: | /s/ Xxxx Xxxxxx | ||
| Name: | Xxxxx Xxxxxxxxx | Name: | Xxxx Xxxxxx | ||
| Title: | President | Title: | President | ||
| By: | /s/ Xxxxx Xxxxxxx | ||||
| Name: | Xxxxx Xxxxxxx | ||||
| Title: | Chief Operating Officer | ||||
| By: | /s/ Xxxxxxx Xxxxx | ||||
| Name: | Xxxxxxx Xxxxx | ||||
| Title: | Chief Financial Officer | ||||
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With respect to Sections 2.3, and 4.4 only:
Trinity
Trinity Rx Solutions, Inc.
|
|||||
| By: | /s/ Xxx Xxxxxx | ||||
| Name: | Xxx Xxxxxx | ||||
| Title: | President | ||||
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Exhibit A*
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Exhibit B*
________________
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Exhibit C
Note Payable (See Exhibit 10.2)
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Exhibit D*
