FIRST AMENDMENT TO THE INTELLECTUAL PROPERTY ASSIGNMENT AND LICENSE AGREEMENT
FIRST AMENDMENT TO THE INTELLECTUAL PROPERTY ASSIGNMENT AND LICENSE AGREEMENT
This First Amendment to the Intellectual Property Assignment and License Agreement ("Amendment 1"), entered into as of May 22, 2006 (the "Amendment 1 Date") is entered into by and between TivaMed, Inc., a Delaware corporation, with its principal place of business at 000 Xxxxx Xxxx, Xxxx Xxxx, XX 00000 ("TivaMed"), and Xxxxxx X. Xxxxxxxx, an individual residing at 000 Xxxxxxx Xxxxx, Xxxxxxxxx, Xxxxxx 00000 ("Xxxxxxxx").
RECITALS
WHEREAS, TivaMed and Xxxxxxxx entered into that certain Intellectual Property Assignment and License Agreement (the "Agreement") effective as of February 10, 2006; and
WHEREAS, the parties now wish to amend Original IPAL Agreement with this Agreement as set forth herein below.
NOW THEREFORE, in consideration of the covenants and conditions contained herein and other good and valuable consideration the sufficiency and receipt of which is hereby acknowledged, the parties hereby agree to the following:
Amendment
1. AMENDMENT. The definition of "Field" (Section 1.1) of the Ageement is hereby deleted in its entirety and replaced by the following:
1.1 "Field" means, with respect to the Transferred Property, transmucosal rejuvenation of the vagina or vulva, or any transmucosal vaginal or vulvar application, where "transmucosal" means through a mucosal surface. Field shall exclude one or more of transcutaneous and percutaneous modification of tissue of the female vulva. Field shall exclude one or more of transmucosal, permucosal, transcutaneous, and percutaneous modification of biological tissue other than tissue of the vagina or vulva. Field shall specifically exclude without limitation one or more of the following: transcutaneous contraction, remolding, and ablation of human tissue by applying energy through a skin surface; transmucosal thermal tightening of tissue in the gastrointestinal tract and head and neck. Field shall also exclude without limitation any invasive electrosurgical devices deployed through a surgical incision including guided electrosurgical devices.
2. EFFECT. Except as specifically amended by this Amendment 1, the Agreement shall remain in full force and effect and, as amended , is hereby ratified, confirmed and approved. No provision of this Amendment 1 may be modified or amended except expressly in a writing signed by both parties nor shall any terms be waived except expressly in writing signed by the party charged therewith.
IN WITNESS WHEREOF, the parties have executed this Amendment 1 as of the Amendment 1 Date.
| TivaMed, Inc. | Xxxxxx X. Xxxxxxxx MD | ||
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/s/ Xxxxxxxx Xxxxxx |
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/s/ Xxxxxx X. Xxxxxxxx MD |
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| Signature | Signature | ||
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| Xxxxxxxx Xxxxxx | Xxxxxx X. Xxxxxxxx MD | ||
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Printed Name |
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| President & CEO | |||
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SECOND AMENDMENT TO THE INTELLECTUAL PROPERTY ASSIGNMENT AND LICENSE AGREEMENT
This Second Amendment to the Intellectual Property Assignment and License Agreement ("Amendment 2") is entered into as of July 20, 2007 (the "Amendment 2 Date") by and between TivaMed Inc., a Delaware corporation ("TivaMed") and Xxxxxx X. Xxxxxxxx, an individual ("Xxxxxxxx").
RECITALS
WHEREAS, TivaMed and Xxxxxxxx entered into that certain Intellectual Property Assignment and License Agreement effective as of February 10, 2006, and which was subsequently amended by the parties by Amendment 1, dated May 22, 2006, (the foregoing agreement, as amended shall be referred to herein as the "Agreement"); and,
WHEREAS, the parties now wish to amend the Agreement in accordance with the terms set forth herein below.
NOW, THEREFORE, in consideration of the covenants and conditions contained herein and other good and valuable consideration, the sufficiency and receipt of which is hereby acknowledged, the parties hereby agree to the following:
AMENDMENT
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1. |
Capitalized terms not specifically defined herein shall have the meaning set forth in the Agreement. |
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The License Grant in Section 3 of the Agreement shall be exclusive to TivaMed, even as to Xxxxxxxx. Xxxxxxxx'x ownership of the Xxxxxxxx Intellectual Property Rights and Xxxxxxxx Technology shall be subject to the licenses granted by Xxxxxxxx under the Agreement. |
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The phrase, "In consideration of the sale, assignment, transfer, release, and conveyance and other obligations of Xxxxxxxx under this Agreement," at the beginning of Section 4 of the Agreement is hereby deleted in its entirety. |
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The provisions of Section 4.2 are hereby deleted in their entirety and the following shall be inserted under Section 4.2: "[Intentionally omitted] ". |
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The phrase, "In consideration of the sale, assignment, transfer, release, and conveyance and other obligations of Xxxxxxxx under this Agreement," at the beginning of Section 5 of the Agreement is hereby deleted in its entirety. |
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The following shall be added after the second sentence of Section 11.2 (No Restrictions on Xxxxxxxx Medical Practice): "Notwithstanding any provision of this Agreement to the contrary, Xxxxxxxx may not assign within the Field any of the rights granted to him pursuant to this Section 11.2." |
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Except as specifically amended by this Amendment 2, the Agreement shall remain in full force and effect and, as amended hereunder, the Agreement is hereby ratified, confirmed, and approved by the parties. No provision of this Amendment 2 may be modified or amended except in a writing signed by both parties, nor shall any terms be waived except as expressly set forth in a writing signed by the party charged therewith. |
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If there is any inconsistency or conflict between this Amendment 2 and the terms of the Agreement, then the terms of this Amendment 2 shall control with respect to such inconsistency or conflict. Any dispute arising in connection with this Amendment 2 shall be resolved in accordance with the dispute resolution procedures set forth in the Agreement. |
IN WITNESS WHEREOF, the parties, through their authorized representatives, have executed this Amendment 2 as of the Amendment 2 Date.
| TivaMed Inc. | Xxxxxx X. Xxxxxxxx, M.D. | |||
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/s/ Xxxxxxxx Xxxxxx |
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/s/ Xxxxxx X. Xxxxxxxx, M.D. |
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| Signature | Signature | |||
| Xxxxxxxx Xxxxxx | ||||
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| President and CEO | ||||
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