PATENT ASSIGNMENT
Exhibit 10.3
This Patent Assignment (“Assignment”), effective as of January 24, 2024 (“Effective Date”), is by and between Xxxxxx X. Xxx Xxxxx, as assignee for the benefit of creditors of (a) Brain Scientific Inc., a Nevada corporation (“Brain”); (b) Brainscientific Inc., a Nevada corporation (f/k/a Memory MD Inc.) (“Brainscientific”); (c) Piezo Motion Corp., a Delaware corporation (“Piezo”); and (d) Discovery Technology International, Inc. (“Discovery” or “Assignor”), and Aditxt, Inc., a Delaware corporation, located at 000 X. Xxxxx Xxxxxx, Xxxxx 000, Xxxxxxxx, XX 00000 (“Assignee”).
WHEREAS, Assignor is the assignee under Assignments for the Benefit of Creditors pursuant to Chapter 727, Florida Statutes, between Brain, Brainscientific, Piezo and Assignor, each dated June 6, 2023.
WHEREAS, on June 15, 2023 Assignor filed Petitions for Assignment for the Benefit of Creditors for (a) Brain, (b) Brainscientific, (c) Piezo, and (d) Discovery, in the Circuit Court for the Twelfth Judicial Circuit, in and for Sarasota County, Florida, and such cases are being jointly administered under Lead Case No. 2023-CA-005049NC (the “Lead Case”).
WHEREAS, on October 31, 2023 Assignor and Bigger Capital Fund, L.P. in its individual capacity and as agent (“Buyer”) entered into that certain Asset Purchase and Settlement Agreement (defined below) which includes the sale of Assignee’s interests, whatever such interest may be, in the patents and patent applications specified in Schedule 1 attached hereto (collectively the “Patents”).
WHEREAS, on October 31, 2023 Assignor filed a Motion to Approve Sale of Substantially All Assets in the Lead Case, seeking approval of the Asset Purchase and Settlement Agreement.
WHEREAS, pursuant to the Order Granting Assignee’s Motion to Approve Sale of Assets entered on December 12, 2023 (the “Order”) entered in Case No. 2023-CA-005049NC in the Circuit Court of the Twelfth Judicial Circuit in and for Sarasota County, Florida (the “Court”), the Court approved the Assignment in accordance with the terms and conditions of the Asset Purchase and Settlement Agreement;
WHEREAS, Assignor in its capacity as Seller and Assignee in its capacity as Buyer are parties to that certain Asset Purchase and Settlement Agreement dated October 31, 2023 (Assignee having assumed the rights and obligations of the Buyer thereunder pursuant to that certain Assignment and Assumption Agreement dated January 24, 2024 by and between Bigger Capital Fund, LP and Assignee) (the “Asset Purchase and Settlement Agreement”), pursuant to which, the Assignor has agreed to assign to Assignee, all of Assignor’s rights in and to such Patents, to the extent such rights exist, subject to the terms and conditions set forth therein (the “Assignment”);
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NOW, THEREFORE, in consideration of the premises and mutual covenants and agreements set forth hereinafter and in the Asset Purchase and Settlement Agreement, the sufficiency of which is acknowledged, the Assignee and the Assignors, intending to be legally bound, hereby agree as follows:
1. Assignment. Assignor hereby irrevocably grant, sell, convey, transfer, assign, deliver and relinquish exclusively to the Assignee, in perpetuity, all of Assignor’s respective worldwide right, title, and interest in and to all of (a) the Patents and all patents which may be granted thereon, the inventions described therein, and any and all U.S. and foreign patent applications and patents that describe said inventions, and all divisions, renewals, extensions, reexamiations, reissues, continuations and continuations-in-part thereof; and (b) all applications for industrial property protection, including, without limitation, all applications for patents, utility models, and designs which may have been filed or may hereafter be filed for the invention in any country or countries foreign to the United States, together with (i) the right to sue for and obtain remedies against past infringement and rights of priority and protection of interest in patents and patent applications set forth in subitems (a) and (b), (ii) the right to file and obtain any continuations, continuations-in-part, reissues, patent term extensions (and foreign equivalents thereof, including, without limitation, supplementary protection certificates), divisionals, reexaminations and reissues of the patents and patent applications set forth in subitems (a) and (b), as applicable, (iii) the right to apply, prosecute and obtain patent or similar protection for any invention embodied by any of the applications comprised in the patents and patent applications set forth in subitems (a) and (b), including the right to claim priority from such applications and (iv) all forms of industrial property protection, including, without limitation, patents, utility models, inventors’ certificates and designs which may be granted for said invention in any country or countries foreign to the United States and all extensions, renewals, reissues, reexaminations, divisionals, continuations and continuations-in-part thereof.
2. Recordation and registration of assignment. In order to record this Assignment with the United States Patent and Trademark Office (the “PTO”) and to record or register it with all of the other registries at which the Patents are or are intended to be registered (the “Patent Offices”), the parties hereto shall execute this Assignment and any other document that may be required by the Patent Offices (together the “Recordation Forms”) in order to record or register the assignment effected hereby, provided however, that Assignee shall prepare such Recordation Forms, at Assignee’s expense. The executed Assignment and any Recordation Forms shall be filed by Assignee, at Assignee’s expense, with the Patent Offices, together with any schedules and exhibits thereto.
3. Successors and Assigns. This Assignment shall bind the Assignor and its successors and assigns and inure to the benefit of Assignee and its successors and assigns.
This Patent Assignment is executed and delivered effective as of the date set forth above.
XXXXXX X. XXX XXXXX, as Assignee for the Benefit of Creditors of(a) Brain Scientific Inc.; (b) Brainscientific Inc., (f/k/a Memory MD Inc.); (c) Piezo Motion Corp.; and (d) Discovery Technology International, Inc
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| By: | /s/ Xxxxxx X. xxx Xxxxx | |
| Name: | Xxxxxx X. xxx Xxxxx | |
| Title: | Assignee for benefit of Creditors | |
| ADITXT, INC. | ||
| By: | /s/ Xxxx Xxxxxxx | |
| Name: | Xxxx Xxxxxxx | |
| Title: | Chief Executive Officer | |
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Schedule 1
Patents and Patent Applications
| Patent Holder | Title | App. No. | App. Date | Patent No. | Issue Date | Status | ||||||||
| Brain Scientific Inc. | Integrated Brain Machine Interface Platform with Graphene Based Electrodes | 17/410,255 | August 24, 2021 | N/A | N/A | Published | ||||||||
| BrainScientific Inc., f/k/a Memory MD, Inc. | Apparatus and Method for Conducting Electroencephalography | 15/898,611 | February 18, 2018 | 11,213,250 | January 4, 2022 | Issued | ||||||||
| Piezo Motion Corp. | Tubular Linear Piezoelectric Motor | 13/094,478 | April 26, 2011 | 8183743 | May 22, 2012 | Issued | ||||||||
| Piezo Motion Corp. | Piezoelectric Quasi- Resonance Linear Motors based on Acoustic Standing Waves With Combined Resonator | 12/642,329 | December 18, 2009 | 8299684 | October 30, 2012 | Issued | ||||||||
| Piezo Motion Corp. | Piezoelectric Quasi- Resonance Linear Motors based on Acoustic Standing Waves with Combined Resonator | 13/663,917 | October 30, 2012 | 8710719 | April 29, 2014 | Issued | ||||||||
| Piezo Motion Corp. | Piezoelectric Motor | 12/639,172 | December 16, 2009 | 8183744 | May 22, 2012 | Issued | ||||||||
| Piezo Motion Corp. | Rotational and Translational Microposition Apparatus and Method | 11/424,133 | June 14, 2006 | 7395607 | July 8, 2008 | Issued | ||||||||
| Piezo Motion Corp. | Piezoelectric Motor with Torque | 12/639,232 | December 16, 2009 | 8183740 | May 22, 2012 | Issued | ||||||||
| Piezo Motion Corp. | Valves based on Piezoelectric Rotary Motor | 12/701,704 | February 8, 2010 | 8183741 | May 22, 2012 | Issued | ||||||||
| Piezo Motion Corp. | Piezoelectric Generator of Mechanical Vibrations, and Piezoelectric Motors based on the Generator | 12/463,524 | May 11, 2009 | 7876022 | January 25, 2011 | Issued | ||||||||
| Piezo Motion Corp. | Piezoelectric Rotary Motor with High Rotation Speed and Bi-Directional Operation | 12/873,688 | September 1, 2010 | 8183742 | May 22, 2012 | Issued | ||||||||
| Piezo Motion Corp. | Non-Magnetic High-Speed Piezoelectric Rotary Motor | 13/778,330 | February 27, 2013 | 9136778 | September 15, 2015 | Issued | ||||||||
| Piezo Motion Corp. | Piezoelectric Linear Motor | 13/934,373 | July 3, 2013 | 9705425 | July 11, 2017 | Issued | ||||||||
| Piezo Motion Corp. | Piezoelectric Valve based on Linear Actuator | 14/193,122 | February 28, 2014 | 8979065 | March 17, 2015 | Issued | ||||||||
| Piezo Motion Corp. | Piezoelectric Motor with Efficient Transfer of Energy | 13/848,525 | March 21, 2013 | 9197141 | November 24, 2015 | Issued | ||||||||
| Piezo Motion Corp. | Precision Purge Valve System with Presure Assistance | 14/194,104 | February 28, 2014 | 9388774 | July 12, 2016 | Issued | ||||||||
| Piezo Motion Corp. | Linear Piezoelectric Actuator on Rail System | 15/190,764 | March 2, 2018 | 10819251 | October 27, 2020 | Issued | ||||||||
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