ASSIGNMENT OF INTELLECTUAL PROPERTIES
THIS ASSIGNMENT OF INTELLECTUAL PROPERTIES, effective the 29th day
of June, 1998, is between Immtech International, Inc., a Delaware corporation
("Assignor") and Criticare Systems, Inc., a Delaware corporation ("Assignee").
RECITALS
A. Assignor is the owner of all right, title and interest in and to
certain intellectual properties as specified below.
B. The Assignor desires to assign all its right, title and interest
in these properties to the Assignee and the Assignee desires to accept such
assignment.
AGREEMENTS
In consideration of the recitals and mutual agreements which follow
and other good and valuable consideration, the receipt and sufficiency of which
is hereby acknowledged, the Assignee and Assignor agree as follows:
1. Assignment of Patents and Inventions. The Assignor assigns,
transfers and contributes to the Assignee all right, title and interest in the
patents and patent applications listed on Schedule A (the "Assigned Patent
Rights"), including any continuations, continuations-in-part, divisionals,
reissues, reexaminations, extensions thereof, any U.S. patents or applications
(including divisionals and continuation applications) owned or licensed to or by
Immtech which claim priority to or are otherwise based on the Assigned Patent
Rights or which otherwise establish rights which cover, encompass or are
ancillary to the "Materials," "Progeny," "Immtech Biomaterials," "Immtech
Technology" or "Immtech Improvements" thereto (as such terms are defined in the
Material Transfer and Option Agreement between Sigma Diagnostics, Inc. and
Immtech dated March 23, 1998 (a copy of which is attached hereto as Exhibit A)
(the "Sigma Agreement") and any corresponding or related foreign applications
owned or licensed by Immtech which claim priority to or are otherwise based on
the Assigned Patent Rights or which otherwise establish rights which cover or
encompass or are ancillary to the Materials Progeny, Immtech Biomaterials,
Immtech Technology or Immtech Improvements thereto.
2. Assignment of Trade Secrets. The Assignor assigns, transfers and
contributes to the Assignee all right, title and interest worldwide in and to
all
trade secrets, unfiled patent or invention disclosures, confidential information
and know-how related to the Assigned Patent Rights.
3. Assignment of Copyrights. The Assignor assigns, transfers and
contributes to the Assignee all right, title and interest worldwide in and to
any copyrightable works, copyright registrations and applications for copyright
registration related to the Assigned Patent Rights, including without limitation
all of the exclusive rights listed in 17 U.S.C. ss. 106 and any copyright
renewal and extension terms available for any such registrations in the United
States and all foreign countries, and in and to any copyright registrations that
may result from such applications.
4. Assignment of Accrued Enforcement Rights. The Assignor assigns
and contributes to the Assignee any causes of action for infringement or
unauthorized use of any of the intellectual properties specified in Paragraphs 1
through 3 above that may have accrued prior to the execution date of this
Agreement.
5. Further Assurances. The Assignor shall provide Assignee, its
successors, assigns or other legal representatives, cooperation and assistance
at Assignee's request and expense (including the execution and delivery of any
and all affidavits, declarations, oaths, exhibits, assignments, powers of
attorney or other documentation as may be reasonably required): (1) in the
preparation and prosecution of any applications for patents or registration of
the intellectual property assigned pursuant to this Assignment; (2) in the
prosecution or defense of any interference, opposition, infringement or other
proceedings that may arise in connection with any of the intellectual property
assigned pursuant to this Assignment; and (3) in the implementation or
perfection of this Assignment.
[Signatures and notarizations on following page.]
2
IN WITNESS WHEREOF, we have hereunto set our hands and seal.
For ASSIGNOR, Immtech International, Inc.:
BY: /s/ T. Xxxxxxx Xxxxxxxx
------------------------------------
Printed name: T. Xxxxxxx Xxxxxxxx
Title: President & CEO
State of Wisconsin )
: SS
Milwaukee County )
On this 26th day of June, 1998, before me appeared T. Xxxxxxx
Xxxxxxxx to me personally known, who being by me duly sworn, did say that he is
Pres/CEO of Immtech International, Inc. and that said instrument was signed on
behalf of said corporation by authority of the Board of Directors.
Xxxxxxxx X. Xxxxxxx
----------------------------------------
[Seal] Notary Public, State of Wisconsin
My commission 9/30/2001
For ASSIGNEE, Criticare Systems, Inc.:
BY: /s/ Xxxxxxx vondeer Ruhr
------------------------------------
Printed name: Xxxxxxx von der Ruhr
Title: President
State of Wisconsin )
: SS
Milwaukee County )
On this 29th day of June, 1998, before me appeared Xxxxxxx von der
Ruhr to me personally known, who being by me duly sworn, did say that he is
President of Criticare Systems, Inc, and that said instrument was signed on
behalf of said corporation by authority of the Board of Directors.
[ILLEGIBLE]
----------------------------------------
[Seal] Notary Public, State of Wisconsin
My commission is permanent
3
SCHEDULE A
PATENTS AND PATENT APPLICATIONS
United States Patent No. 5,484,735 Issued 1/16/96
United States Patent No. 5,702,904 Issued 12/30/97
United States Application Ser. No. 07/397,781-CIP Filed 8/23/89
United States Application Ser. No. 07/765,169 Filed 9/25/91
Application Ser. No. PCT/US90/04666 Filed 8/17/90
Application Ser. No. 90913261.5 (EPO) Filed 8/17/90
Application Ser. No. 2-512516 (Japan) Filed 8/17/90
Application Ser. No. PCT/US92/08136 Filed 9/25/92
United States Application Ser. No. 08/008,126 Filed 1/22/93
United States Application Ser. No. 08/068,525-CIP Filed 5/27/93
United States Application Ser. No. 08/151,073-CIP Filed 11/12/93
Application Ser. No. 27577/92 (Australia) Filed 9/25/92
Application Ser. No. 2119651 (Canada) Filed 9/25/92
Application Ser. No. 92921176.1 (EPO) Filed 9/25/92
Application Ser. No. 5-506376 (Japan) Filed 9/25/92
United States Application Ser. No. 08/272,852 Filed 7/6/94
