EXHIBIT 6.1
ASSIGNMENT OF PATENT,
"METHOD AND DEVICE IN
MICROINJECTION OF MACROMOLECULES
WITH NON-ADHERENT CELLS."
ASSIGNMENT AGREEMENT
---------------------
This AGREEMENT is made this 15th day of 1997, by and between GENCELL,
INC. d/b/a THE XXXXXXX GROUP ("Xxxxxxx Group"), (the "Assignee"), and XX.
XXXXX X. XXXXX and XX. XXXXX X. XXXXX (Xxxxx Xxxxx and Xxxxx Xxxxx
hereinafter together referred to as the "Inventors Group"), (the
"Assignor").
RECITALS:
A. The Inventors Group owns certain rights to technology relating to
"Methods and Apparatus for Incorporating Macromolecules Into
Cells."
B. The Rexfbrd Group wishes to obtain assignment of said technology
and patent rights to said technology.
C. The parties hereto desire to enter into this Agreement in order
to effect assignment of said technology to the Xxxxxxx Group.
NOW, THEREFORE for GOOD AND VALUABLE CONSIDERATION, the receipt,
sufficiency and adequacy of which are acknowledged, the Inventors Group
does hereby SELL, ASSIGN AND TRANSFER to the Xxxxxxx Group (the Assignee),
the entire right, title and interest for the United States and all foreign
countries in United States Patent Application Serial No. _______, which
has been filed on December 20, 1996, and is entitled, "IMPROVED METHODS FOR
INCORPORATING MACROMOLECULES INTO CELLS" according to the following terms
herein:
1. DEFINITIONS
--------------
As used in this Agreement, the following terms shall have the meanings
indicated:
1.1 Assigned Subject Matter shall mean inventions and discoveries
covered by Patent Rights or Technology Rights which is within the
subject Field.
1.2 Technology Rights shall mean the Inventors Group's rights in any
technical information, know-how, process, procedure, composition, device,
method, formula, protocol, technique, software, design, drawing or data
relating to "Methods and Apparatus for Incorporating Macromolecules into
Cells" which is not covered by Patent Rights but which is necessary for
practicing the invention at any time covered by Patent Rights.
1.3 Subject Field shall mean technology related to "Methods and
Apparatus for Incorporating Macromolecules into Cells", and uses thereof in
gene therapy.
1
1.4 Sale or Sold shall mean the transfer or disposition of a Product
of the Subject Technology as used in conjunction thereon to a party other
than the Assignee or a subsidiary.
1.5 Subsidiary shall mean any business entity more than 50% owned by
Assignee, any business entity which owns more than 50% of the assigned
technology, any business entity that is more than 50% owned by a business
entity that owns more than 50% of the Assignee.
1.6 Net Sales shall mean the gross revenues received by the Assignee
from the sale of assigned products or those used therewith less sales
and/or use, tax actually paid, import and/or export duties actually paid,
outbound transportation - prepaid or allowed, and amounts allowed or
credited due to returns (not to exceed the original billing or invoice
amount).
II. TRANSFER OF TECHNOLOGY
---------------------------
The Inventors Group agrees to assign the technology as described in
the document provided hereto as Attachment "A" to the Xxxxxxx Group for the
purpose of marketing and developing of the Technology and products using
the Technology through a public entity to be known as GenCell, Inc. d/b/a
The Xxxxxxx Group ("Xxxxxxx" or "Company").
III. CONSIDERATION FOR TRANSFER
--------------------------------
In consideration of the assigned transfer of the Technology to the
Company, each of the inventors of the Inventors Group shall receive fifty
thousand dollars ($50,000). Twenty thousand dollars ($20,000) shall be
delivered to each inventor of the Inventors Group upon Close of Escrow in
such form and on such dates as each Inventor designates. The remaining
thirty thousand dollars ($30,000) shall be delivered to each of the
inventors of the Inventors Group by January 15, 1998.
IV. DISCLOSURE DOCUMENTS
-------------------------
4.1 The Inventors will be supplied with the following information
concerning the Company:
(a) Audited Financial Statements for the two full years and the
partial year ended June 16,1996 (included as Exhibit "B").
(b) Complete and current as well as periodically updated
Shareholder Listing for the Company, including full name,
address and number of present shares held (included as
Exhibit "C").
2
(c) Other pertinent material regarding the Company including but
not limited to date formed, state of domicile, initial line
of business and industry, names and descriptions of initial
and current key owners, promoters and officers, minutes,
articles of incorporation, by-laws, contracts, accounting
records, tax returns and stock offering documents (these key
items to be included as Exhibit "D").
4.2 The Inventors and their attorneys acknowledge that they have the
right to fully investigate the Company, and to inquire of its present
management concerning its operations, financial condition and prospects.
The Inventors also have the right to ask its own independent auditing firm
to determine whether the Company's financial statements are able to be
audited: past, present and future.
4.3 The Inventors further understand that the shares of Common
Stock to be issued by the Company will be restricted, and that only a
limited market presently exists for such shares.
V. THIRD PARTY BENEFICIARIES
----------------------------
This Agreement may be enforced only by the parties hereto, and their
permitted assigns, and not by any person or legal entity that is not a
signatory hereto.
VI. ARBITRATION
----------------
In the event of any dispute concerning the performance, interpretation
or enforcement of this Agreement, such dispute shall be submitted to
binding arbitration under the rules of JAMS/Endispute, which arbitration
shall be conducted in the State of Texas.
VII. RIGHTS OF THIRD PARTIES
----------------------------
7.1 The University of Texas System ("UTS") reserves for itself a
royalty-free, non- exclusive license to use this invention (whether the
patent is issued or not) in its own educational, research and patient care
activities.
7.2 Royalties and up front monies received from any license agreement
of the Subject Technology entered into by the Company shall be divided
equally between the Xxxxxxx Group and the Inventors Group.
3
VIII. PATENT MARKING
---------------------
The Xxxxxxx Group agrees to xxxx permanently and legibly all products
and documentation manufactured or sold by it under this Agreement with such
patent notice as may be permitted or required under Xxxxx 00, Xxxxxx Xxxxxx
Code.
IX. GENERAL
------------
9.1 No agreements altering or supplementing the terms hereof may be
made except by means of a written document signed by the duly authorized
representatives of the parties.
9.2 Any notice required by this Agreement shall be given by prepaid,
first class, certified mail, return receipt requested, addressed in the
case of the Inventors to:
Attention: Dr. Xxxxx Xxxxx
0000 Xxxxxxxxxx Xxxxx Xxxxx
Xxxxxx Xxxx, XX 00000
or in the case of The Xxxxxxx Group to:
Attention: Xxxxxxx Xxxxx
00000 Xxxxx Xxxxxx
Xxxxxxx Xxxxx, XX
or such other addresses as may be given from time to time under the terms
of this notice provision.
9.3 The Agreement shall comply with all applicable federal, state and
local laws and regulations in connection with its activities pursuant to
this Agreement.
9.4 Failure of the Xxxxxxx Group or the Inventors Group to enforce a
right under this Agreement shall not act as a waiver of that right or the
ability to later assert that right relative to the particular situation
involved.
9.5 Headings included herein are for convenience only and shall not
be used to construe this Agreement.
9.6 If any provision of this Agreement shall be found by a court to
be void, invalid or unenforceable, the same shall be reformed to comply
with applicable law or stricken if not so conformable, so as not to affect
the validity or enforceability of this Agreement.
4
IN WITNESS WHEREOF, parties hereto have caused their duly authorized
representatives to execute this AGREEMENT.
By: /s/ Xx. Xxxxx X. Xxxxx By: /s/ Xx. Xxxxx X. Xxxxx
--------------------------- ----------------------------
Xx. Xxxxx X. Xxxxx Xx. Xxxxx X. Xxxxx
By: /s/ Xxxxxxx X. Xxxxx
--------------------------
Chairman of the board
GenCell, Inc.
5
