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EXHIBIT 2.1
TECHNOLOGY TRANSFER AGREEMENT
This TECHNOLOGY TRANSFER AGREEMENT ("Agreement") is entered into
effective July 30, 2001, by and between AMDL, INC., a Delaware corporation
("AMDL"), and LUNG-XX XXXXX, Ph.D., an individual resident of Florida ("Xxxxx").
Xxxxx has independently designed and developed and owns certain
intellectual property rights related to two-gene combination cancer vaccines,
all as described more fully in this Agreement. The parties desire that Xxxxx
transfer to AMDL all of Xxxxx'x present and future right, title and interest in
and to such intellectual property rights for the consideration and on the terms
and conditions set forth in this Agreement, all as described more fully in this
Agreement.
Accordingly, the parties hereby agree as follows:
Section 1. Definitions. As used in this Agreement, the following capitalized
terms shall have the following respective definitions (unless the context
requires otherwise):
1.1 AMDL Technology Rights. The term "AMDL Technology Rights" shall mean
all present and future right, title and interest in and to all Intellectual
Property Rights in and relating to all developments, improvements, enhancements
and other modifications made to the Technology by or on behalf of AMDL from time
to time (including without limitation the technology and developments developed
pursuant to Section 3 below).
1.2 Closing Date; Closing. The terms "Closing Date" and "Closing" shall
have the meanings ascribed in Section 4.3 below.
1.3 Combination Immunogene Therapy Documentation. The term "Combination
Immunogene Therapy Documentation" shall mean all specifications, technical
documents and other documentation relating to the Technology now existing or
produced from time to time by Xxxxx.
1.4 Combination Immunogene Therapy Patents. The term "Combination
Immunogene Therapy Patents" shall mean, collectively, each U.S. patent and each
foreign patent which: (a) was issued to AMDL by the appropriate patent authority
or was assigned to AMDL pursuant to this Agreement; and (b) has claims covering
any invention included in the Technology.
1.5 Combination Immunogene Therapy Products. The term "Combination
Immunogene Therapy Products" shall mean any device or composition of matter
covered by valid and enforceable claims issuing from the Technology including
methods of making and/or using products.
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1.6 Combination Immunogene Therapy Technology Rights. The term
"Combination Immunogene Therapy Technology Rights" shall mean all present and
future right, title and interest in and to all Intellectual Property Rights in
and relating to the Technology; provided however that the term "Combination
Immunogene Therapy Technology Rights" shall not include any of the AMDL
Technology Rights.
1.7 Intellectual Property Rights. The term "Intellectual Property
Rights" shall mean any and all intellectual property rights throughout the
world, including without limitation any and all patents, patent applications,
copyrights, copyright applications, trademarks, trade secret rights, rights to
know-how, inventions and algorithms, and any and all similar or equivalent
rights throughout the world.
1.8 Net Sales. The term "Net Sales" shall mean the actual purchase price
paid to AMDL by licensees or other affiliated persons for sales of Combination
Immunogene Therapy Products covered by claims in valid patents exclusive of
taxes, tariffs, shipping and refunds.
1.9 Royalty. The term "Royalty" shall mean an amount equal to 5% of Net
Sales, which Royalty shall be paid to Xxxxx by AMDL on sales of any Combination
Immunogene Therapy Products in the Territory.
1.10 Technology. The term "Technology" shall mean (a) any United States
or foreign patents that claim two-gene combination cancer vaccines and related
technology that issue from, or claim priority to, United States patent
application serial number 08/838,702 entitled "Combination Immunogene Therapy"
or United States patent application serial number 09/826,025 entitled
"Combination Immunogene Therapy" (or similar name) and related applications
including continuations, continuations-in-part, divisional applications and
requests for continuing examination (collectively, the "Combination Immunogene
Therapy Patent Applications"); (b) all knowledge, information, know-how,
discoveries, procedures, devices, techniques, programs, inventions, creations,
methods, protocols, formulas, software, designs, drawings, works of authorship
and other technical information related to such technology which has been
developed by or on behalf of Xxxxx as of the Closing Date; and (c) all
developments, improvements, enhancements, and other modifications made to the
Technology by or on behalf of AMDL from time to time.
1.11 Territory. The term "Territory" shall mean any country in the world
where valid and enforceable patents emanating from the Technology exist that
claim the Products.
Section 2. Technology Transfer.
2.1 Technology Purchase and Sale. Subject to the terms and conditions
hereof, AMDL hereby purchases from Xxxxx and Xxxxx hereby sells to AMDL the
Combination
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Immunogene Therapy Technology Rights in exchange for the consideration specified
in Section 4 of this Agreement and effective as of the Closing Date.
2.2 Transfer and Assignment. Subject to the terms and conditions hereof,
Xxxxx hereby sells, transfers, assigns, conveys, and delivers to AMDL, its
successors and assigns forever, all right, title and interest in and to the
Combination Immunogene Therapy Technology Rights, effective as of the Closing
Date.
2.3 Further Assurances. Xxxxx hereby agrees to execute such further
instruments and to take such further actions as may be necessary or desirable to
further effect the transfer and assignment specified in Section 2.2 of this
Agreement and to carry out the intent of this Agreement, promptly after any
request therefor by AMDL.
Section 3. Delivery; Development and Other Related Matters.
3.1 Delivery of the Technology. Concurrently with the execution of this
Agreement, Xxxxx will grant and deliver to AMDL an exclusive license to the
Technology effective upon delivery of the Initial Payment pursuant to Section
4.2(a) and terminating upon the Closing or termination of this Agreement. On the
Closing Date, Xxxxx shall deliver to AMDL: (a) an assignment of the Combination
Immunogene Therapy Patent Applications in the form attached hereto as Exhibit A;
and (b) all information and documentation related thereto or reasonably
requested by AMDL (including without limitation all of the current Combination
Immunogene Therapy Documentation). From and after the Closing Date, Xxxxx shall
deliver promptly to AMDL, subject to AMDL entering into a suitable
confidentiality agreement with the University of Florida as required by the
terms of Xxxxx'x employment with the University of Florida, the following: (x)
all developments, improvements, enhancements and other modifications made to the
Technology from time to time by Xxxxx; and (y) all information and documentation
related thereto or reasonably requested by AMDL (including without limitation
all of the Combination Immunogene Therapy Documentation with respect thereto).
3.2 Patent Prosecution. Following the Closing, AMDL shall file with the
U.S. Patent and Trademark Office such patent application(s) containing such
patent claims relating to the Technology as AMDL may determine. AMDL shall be
responsible for and control the prosecution of all U.S. patent claims relating
to the Technology, including without limitation the Combination Immunogene
Therapy Patent Applications assigned to AMDL pursuant to this Agreement. AMDL
shall also prosecute such related foreign patent claims as AMDL may determine in
the exercise of its sole business judgment.
3.3 Independent Contractors. The relationship between AMDL and Xxxxx has
been and shall continue to be that of independent contractors. Neither party is
the legal representative, agent, joint venturer, partner, employee, or employer
of the other party under this Agreement for
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any purpose whatsoever. Neither party has any right, power, or authority under
this Agreement to assume or create any obligation of any kind or to make any
representation or warranty on behalf of the other party, whether express or
implied, or to bind the other party in any respect.
3.4 Regulatory Approvals. AMDL shall be responsible, at its sole cost
and expense, for seeking all necessary regulatory approvals with respect to the
Combination Immunogene Therapy Products, including any approvals and/or
clearances from the U.S. Food and Drug Administration. Xxxxx hereby agrees to
provide reasonable assistance to AMDL in obtaining such approvals and/or
clearances with respect to the Combination Immunogene Therapy Products.
3.5 Developments, Modifications, etc. The parties hereby agree that
following the Closing, AMDL shall own all present and future right, title and
interest in and all Intellectual Property Rights in and relating to all
developments, improvements, enhancements and other modifications made to the
Technology by or on behalf of AMDL from time to time.
Section 4. Consideration and Closing.
4.1 Consideration. The consideration for the transfer to AMDL of the
Combination Immunogene Therapy Technology Rights shall be:
(a) Two Million Dollars ($2,000,000); and
(b) the Royalty.
4.2 Timing and Payment of Consideration.
(a) On the next business day following the date of execution of
this Agreement, the sum of Two Hundred Thousand Dollars ($200,000) (the
"Initial Payment") shall be wired to Xxxxx'x bank account. The Initial
Payment shall be non-refundable, except as otherwise provided in Section
4.3 below.
(b) On the Closing Date, AMDL will cause to be wired to Xxxxx'x
bank account the sum of One Million Eight Hundred Thousand Dollars
($1,800,000).
(c) The Royalty shall be payable on a quarterly basis within
thirty (30) days following the end of each calendar quarter following
the Closing Date.
4.3 Closing. A closing on the transactions contemplated by this
Agreement (the "Closing") shall take place on August 31, 2001 or such later date
mutually agreed to by AMDL and Xxxxx in writing (the "Closing Date"). If the
Closing has not occurred by August 31, 2001 (or such later date mutually agreed
to by AMDL and Xxxxx in writing), and Xxxxx has delivered
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the Legal Opinion at least three (3) business days prior thereto, Xxxxx may
terminate this Agreement and retain the Initial Payment. In the event of such a
termination by Xxxxx, AMDL shall also be obligated to pay, within five (5)
business days of such termination, accrued fees to Xxxxx'x counsel, Saliwanchik
& Saliwanchik, in an amount not to exceed Sixty-Four Thousand Dollars ($64,000).
If the Closing has not occurred by August 31, 2001 (or such later date mutually
agreed to by AMDL and Xxxxx in writing), and Xxxxx has not delivered the Legal
Opinion at least three (3) business days prior thereto, AMDL may terminate this
Agreement. In the event termination occurs because the Legal Opinion has not
been timely delivered, Xxxxx shall refund the Initial Payment. The Closing shall
take place at 10:00 a.m. on the Closing Date at the offices of Xxxxxxxxxxx Xxxxx
& Xxxxxxxx LLP, 000 Xxxxxxx Xxxxxx Xxxxx, Xxxxx 000, Xxxxxxx Xxxxx, Xxxxxxxxxx
00000 at such other place and time as the parties may agree.
4.4 Consulting Agreement. Prior to or concurrently with the Closing,
Xxxxx shall enter into a Consulting Agreement with AMDL in the form attached
hereto as Exhibit B (the "Consulting Agreement"), which Consulting Agreement
provides for a covenant not to compete by Xxxxx. If, for any reason, Xxxxx does
not enter into the Consulting Agreement and the technology transfer contemplated
by this Agreement still closes, then Xxxxx agrees that he will be bound by the
covenant not to compete set forth in Section 6 of the Consulting Agreement as if
fully stated herein effective as of the date of execution of this Agreement.
Section 5. Representations, Warranties and Covenants of Xxxxx.
Xxxxx hereby represents and warrants to AMDL and covenants with AMDL as
follows:
5.1 Residence. Xxxxx is an individual resident of the State of Florida.
5.2 Valid and Binding. This Agreement is the legal, valid and binding
obligation of Xxxxx, enforceable against Xxxxx in accordance with its terms.
5.3 Ownership. Immediately prior to the entering into of this Agreement,
Xxxxx owned all of the Combination Immunogene Therapy Technology Rights, free
and clear of all claims, liens and encumbrances. Xxxxx has all rights necessary
to enter into this Agreement, to transfer and assign to AMDL the Combination
Immunogene Therapy Technology Rights, and to perform his obligations under this
Agreement. Xxxxx has not at any time in the past transferred or assigned to any
third party any of the Combination Immunogene Therapy Technology Rights. Xxxxx
has not granted to any third party and shall not grant to any third party any
right or license with respect to the Technology or any of the Combination
Immunogene Therapy Technology Rights. Xxxxx has not granted and shall not grant
to any third party any rights in conflict with the rights transferred and
assigned hereunder or in conflict with the provisions of this Agreement.
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5.4 No Infringement. To the best of Xxxxx'x knowledge, the use of the
Technology does not and will not infringe any Intellectual Property Rights of
any third party.
5.5 Development. The development to be performed by Xxxxx under this
Agreement shall be performed in a professional manner by highly qualified and
experienced individuals. Xxxxx shall perform such development and perform all of
its responsibilities and obligations hereunder with at least the care, skill,
prudence and diligence that a prudent developer acting in a like capacity and
experienced in the industry would use.
5.6 Compliance with Laws. The performance of the development and all
other obligations of Xxxxx under this Agreement shall be performed in compliance
with all applicable federal, state and local laws, rules and regulations.
5.7 Indemnification. Xxxxx hereby agrees to indemnify, defend and hold
harmless AMDL and AMDL's officers, directors, shareholders, agents, attorneys,
successors and assigns (collectively, the "Indemnified Parties"), against and
from all losses, claims, demands, causes of action, obligations, damages,
judgments, expenses and liabilities of any kind (including reasonable attorneys'
fees), that may be imposed on, incurred by, or asserted against any Indemnified
Party resulting from, arising out of, or relating to any of the following: (a)
any breach by Xxxxx of any representations, warranties, covenants, or agreements
contained in this Agreement; or (b) any claim that the use of any part of the
Technology infringes or would infringe any Intellectual Property Rights of any
third party. Notwithstanding the above, in the event that any claim is made that
the use of any part of the Technology infringes or would infringe any
Intellectual Property Rights of any third party, then AMDL shall control the
defense thereof.
5.8 Legal Opinion. As a condition to the obligations of AMDL under this
Agreement, Xxxxx shall cause to be delivered to AMDL, at least three (3)
business days prior to the Closing Date, an opinion of counsel with respect to
Xxxxx'x ownership of the Combination Immunogene Therapy Rights covering each of
the issues described on Exhibit C hereto (the "Legal Opinion").
Section 6. Representations and Warranties of AMDL.
AMDL hereby represents and warrants to Xxxxx and covenants with Xxxxx as
follows:
6.1 Duly Organized. AMDL is duly organized, validly existing and in good
standing under the laws of the State of Delaware, and this Agreement has been
duly authorized by all necessary corporate or other entity action.
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6.2 Valid and Binding. This Agreement is the legal, valid and binding
obligation of AMDL, enforceable against AMDL in accordance with its terms.
Section 7. Confidential Information.
7.1 Certain Definitions. As used in this Agreement, the term
"Confidential Information" shall mean all information relating to the Technology
and any developments, improvements, enhancements and other modifications made by
Xxxxx from time to time pursuant to Section 3 above, including without
limitation the Combination Immunogene Therapy Documentation and including any
information disclosed in writing, orally, electronically, in all types of disks,
diskettes, computer memory or storage, or other media, or by drawings or
inspection of physical items, and whether or not modified or merged into other
materials. The term "Confidential Information" also includes the terms and
conditions of this Agreement. The term "Representatives" shall mean the
respective directors, officers, employees, agents, attorneys, accountants,
financial advisors and other representatives of Xxxxx or AMDL, as the case may
be. The term "Confidential Information" shall also include all analyses,
compilations, studies, or other documents prepared by Xxxxx or AMDL or their
respective Representatives which contain or otherwise reflect any Confidential
Information. The term "person" as used herein shall be interpreted broadly to
include without limitation any individual, corporation, partnership, company, or
governmental agency or body.
7.2 Disclosure. Except to the extent necessary in order to perform
Xxxxx'x obligations under this Agreement or the Consulting Agreement, Xxxxx
agrees not to disclose any Confidential Information to any person unless legally
required and agrees to use Xxxxx'x best efforts to prevent inadvertent
disclosure of any Confidential Information to any person. Without limiting the
generality of the preceding sentence, Xxxxx agrees to treat the Confidential
Information with at least the degree of care that Xxxxx treats similar
information of his own.
7.3 Use. Xxxxx agrees not to use any Confidential Information for any
purpose whatsoever except to the extent necessary in order to perform Xxxxx'x
obligations under this Agreement or the Consulting Agreement. Xxxxx agrees not
to disclose the Confidential Information to any of his Representatives except
Representatives who are required to have the Confidential Information in
connection with such purpose, and then only if in compliance with Section 7.5
hereof.
7.4 Termination of Confidentiality Obligations. The obligations of
Section 7.2 hereof shall terminate with respect to any particular portion of the
Confidential Information when Xxxxx can prove by appropriate documentation
either of the following: (1) such particular portion was: (a) previously known
to Xxxxx as shown by Xxxxx'x files at the time of AMDL's disclosure thereof to
Xxxxx; or (b) already in the public domain at the time of AMDL's
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disclosure thereof to Xxxxx; or (2) such particular portion entered the public
domain through no action of Xxxxx subsequent to the time of AMDL's disclosure
thereof to Xxxxx.
7.5 Disclosure to Xxxxx'x Representatives. Prior to disclosing any
Confidential Information to any of Xxxxx'x Representatives, Xxxxx shall notify
AMDL, in writing, of the names of any such person or persons and the
relationship of such person or persons to Xxxxx; and Xxxxx shall not disclose
any Confidential Information to such person or persons until such time as AMDL
shall have received from each such person or persons an executed confidentiality
agreement containing substantially the same obligations to AMDL as provided in
this Agreement.
Section 8. General Provisions.
8.1 Governing Law; Jurisdiction and Venue. The rights and obligations of
the parties shall be governed by, and this Agreement shall be construed and
enforced in accordance with, the laws of the State of California, excluding its
conflict of laws rules to the extent such rules would apply the law of another
jurisdiction. The parties hereto consent to the jurisdiction of all federal and
state courts in California, and agree that venue shall lie exclusively in Orange
County, California.
8.2 Entire Agreement; Amendment. This Agreement (including the Exhibits
hereto which are incorporated herein by this reference) represents the entire
agreement between the parties with respect to the subject matter hereof. This
Agreement supersedes any prior agreements or understandings between the parties
as to such subject matter. Neither this Agreement nor any term hereof may be
amended, waived, discharged, or terminated orally, but only by a written
instrument signed by the party against whom enforcement of any such amendment,
waiver, discharge, or termination is sought.
8.3 Notices. Any notice, request, demand, or other communication
required or permitted hereunder shall be made in writing and shall be deemed to
have been duly given and effective: (a) on the date of delivery, if delivered
personally or sent by a recognized overnight courier; (b) on the earlier of the
third day after mailing or the date of the return receipt acknowledgment, if
mailed postage prepaid by certified or registered mail, return receipt
requested; or (c) on the date of transmission, if sent by facsimile, telecopy,
telegraph, telex or other similar telegraphic communications equipment (provided
such facsimile, telecopy, telegraph, telex or other similar telegraphic
transmissions is received during normal business hours); and addressed to the
party at the address of such party as set forth below or such other address as
such party may request by notifying the other party in writing.
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Until further notice, the address for Xxxxx shall be as follows:
To: Lung-Xx Xxxxx, Ph.D.
0000 XX 00xx Xxxxxxx
Xxxxxxxxxxx, Xxxxxxx 00000
Fax:
Until further notice, the address for AMDL shall be as follows:
To: AMDL, Inc.
0000 Xxxxxx Xxx., Xxxxx 000
Xxxxxx, Xxxxxxxxxx 00000
Attn: Xxxx X. Xxxxxx, President
Fax: (000) 000-0000
8.4 Waiver. No waiver of any provision of this Agreement will be
effective unless in writing and signed by the party against whom such waiver is
sought to be enforced. No failure or delay by either party in exercising any
right, power, or remedy under this Agreement shall operate as a waiver of any
such right, power, or remedy. The express waiver of any right or default
hereunder shall be effective only in the instance given and shall not operate as
or imply a waiver of any similar right or default on any subsequent occasion.
8.5 Severability. In the event that any provision of this Agreement (or
portion thereof) is determined by any court of competent jurisdiction to be
invalid or otherwise unenforceable for any reason, then the remainder of this
Agreement shall remain in full force and effect according to its terms.
8.6 Attorney's Fees. If any party brings any suit, action, counterclaim,
or arbitration to enforce or interpret the provisions of this Agreement, then
the prevailing party therein shall be entitled to recover a reasonable allowance
for attorneys' fees and litigation expenses in addition to court costs. The
"prevailing party" within the meaning of this Section includes without
limitation a party: (a) who agrees to dismiss an action or proceeding upon the
other's payment of the sums allegedly due or performance of the covenants
allegedly breached; or (b) who obtains substantially the relief it seeks.
8.7 Assignability. The rights and benefits of AMDL under this Agreement
shall be transferable and assignable to any one or more persons or entities, and
all covenants and agreements hereunder shall inure to the benefit of, and be
enforceable by AMDL's successors and assigns. Any action taken by any person to
whom AMDL transfers or assigns this Agreement shall be deemed to be an action of
AMDL for all purposes of this Agreement. The
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rights and obligations of Xxxxx under this Agreement may only be assigned with
the prior written consent of AMDL.
8.8 Further Documents and Actions. Each party agrees, upon request by
the other party, to execute such further documents or instruments and to take
such further actions as may be necessary or desirable in order to carry out the
purposes or intent of this Agreement.
8.9 References. Unless the context otherwise requires, any reference to
a "Section" refers to a section of this Agreement. Any reference to "this
Section" refers to the whole number section in which such reference is
contained.
8.10 Counterparts. This Agreement may be executed in any number of
counterparts, each of which shall be deemed an original, and all of which
together shall constitute one instrument.
IN WITNESS WHEREOF, the undersigned have caused this Agreement to be
executed as of the date first above written.
"AMDL"
AMDL, INC.,
a Delaware corporation
By:
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Xxxx X. Xxxxxx, President
"Xxxxx"
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LUNG-XX XXXXX, Ph.D.
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EXHIBIT A
Assignment
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PATENT APPLICATIONS
Serial No. 08/838,702
Serial No. 09/826,025
A S S I G N M E N T
WHEREAS, the undersigned, Lung-Xx Xxxxx, Ph.D., residing at 0000 XX 00xx
Xxxxxxx, Xxxxxxxxxx, Xxxxxxx 00000, a citizen of the United States of America,
has invented certain new and useful improvements disclosed in applications for
United States Letters Patent titled COMBINATION IMMUNOGENE THERAPY, serial
number 08/838,702, filed April 9, 1997 and serial number 09/826,025, filed April
4, 2001.
WHEREAS, AMDL, INC., a Delaware corporation, located at 0000 Xxxxxx
Xxxxxx, Xxxxx 000, Xxxxxx, Xxxxxxxxxx 00000 (hereinafter, together with any
successors, legal representatives or assigns thereof, called "Assignee"), wants
to acquire the entire right, title and interest in and to said improvements and
applications:
NOW, THEREFORE, in consideration of the sum of One Dollar ($1.00) to me
in hand paid, and other good and valuable consideration, the receipt of which is
hereby acknowledged, I have sold, assigned, transferred and set over, and do
hereby sell, assign, transfer and set over to Assignee the entire right, title
and interest in and to said improvements, and said application and all
divisions, substitutes and continuations thereof, and all United States Letters
Patents which may be granted thereon and all reissues and extensions thereof,
and all priority rights under the International Convention for the Protection of
Industrial Property for every member country, and all applications for patents
(including related rights such as utility-model registrations, inventor's
certificates, and the like) heretofore or hereafter filed for said improvements
in any foreign countries, and all patents (including all extensions, renewals
and reissues thereof) granted for said improvements in any foreign countries;
and I hereby authorize and request the United States Commissioner of Patents and
Trademarks, and any officials of foreign countries whose duty is to issue
patents on applications as aforesaid, to issue all patents for said improvements
to Assignee in accordance with the terms of this assignment;
AND I HEREBY covenant that I have full right to convey the entire
interest herein assigned, and that I have not executed, and will not execute,
any agreement in conflict herewith;
AND I HEREBY further covenant and agree that I will communicate to
Assignee any facts known to me respecting said improvements, and testify in any
legal proceedings, sign all lawful papers, execute all divisional continuation,
substitute and reissue applications, make all rightful oaths and generally do
everything possible to aid Assignee to obtain and enforce proper patent
protection for said improvements in all countries.
THIS ENTIRE ASSIGNMENT inures to the benefit of Assignee, its successors
and assigns, and is binding upon me, my heirs, successors and legal
representatives.
IN TESTIMONY WHEREOF, I hereunto set my hand this _____ day of August,
2001.
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LUNG-XX XXXXX, PH.D.
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ASSIGNMENT from LUNG-XX XXXXX, PH.D. to AMDL, INC.
WITNESSES:
Name: ______________________________ Signature: _______________________________
Address: ___________________________ City/State/Country: ______________________
Citizen of: ________________________ Date: ____________________________________
Citizen of: ______________________________
Name: ______________________________ Signature: _______________________________
Address: ___________________________ City/State/Country: ______________________
Citizen of: ________________________ Date: ____________________________________
Citizen of: ______________________________
NOTARY:
State of ______________ )
) ss.
County of ____________ )
On _________, 2001, before ______________ personally appeared _________________,
personally known to me (or proved to me on the basis of satisfactory evidence)
to be the person(s) whose name(s) is/are subscribed to the within instrument and
acknowledged to me that he/she/they executed the same in his/her/their
authorized capacity(ies), and that by his/her/their signature(s) on the
instrument, the person(s), or the entity upon behalf of which the person(s)
acted, executed the instrument.
WITNESS my hand and official seal.
______________________________ (SEAL)
Notary Public
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EXHIBIT B
Consulting Agreement
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EXHIBIT B
CONSULTING AGREEMENT
This CONSULTING AGREEMENT ("Agreement") is entered into effective August
___, 2001 by and between AMDL, INC., a Delaware corporation (the "Company"), and
LUNG-XX XXXXX, PH.D., an individual resident of the State of Florida
("Consultant").
In consideration of the mutual covenants and agreements set forth below,
and for other good and valuable consideration, the receipt and sufficiency of
which are hereby acknowledged, it is hereby agreed as follows:
1. Engagement. The Company hereby retains Consultant as a consultant,
and Consultant hereby accepts such position upon the terms and conditions
hereinafter set forth.
2. Duties; Consultant Representation. During the term of this Agreement,
Consultant shall provide certain services on behalf of the Company in connection
with the development of intellectual property related to two-gene combination
cancer vaccines transferred by Consultant to the Company pursuant to a
Technology Transfer Agreement dated July 30, 2001 (the "Technology Transfer
Agreement"). Consultant shall provide the Company with scientific consultations
and will travel from time-to-time to assist the Company in the further
development of the Technology (as defined in the Technology Transfer Agreement)
and/or the promotion of Combined Immunogene Therapy Products (as defined in the
Technology Transfer Agreement). The Company may not require the Consultant to
devote more than ten percent (10%) of his time normally given to his present
employer, or request that Consultant travel overnight away from his principal
residence more than twice per year. In performance of these duties, Consultant
shall provide the Company with the benefits of Consultant's best judgment and
efforts. Nothing herein contained shall be construed to limit or restrict
Consultant in rendering services of a similar nature to others, provided,
however, that during the term of this Agreement, Consultant covenants not to
provide consulting services to, or to engage in, directly or indirectly, any
business competitive with that of the Company without the consent of the
Company. The duties to be performed by Consultant pursuant to this Agreement may
be performed at a location determined by Consultant and at such times as may be
agreed to by Consultant and the Company.
3. Term and Termination.
(a) Term. This Agreement shall commence on the date set forth
above and shall remain in effect for two (2) years unless and until the
Agreement is earlier terminated by the Company.
(b) Obligations Upon Expiration or Termination. Upon expiration
or termination of this Agreement, Consultant shall promptly return to the
Company all material owned by the Company. Expiration or termination of this
Agreement shall not relieve either party of its obligations regarding
Confidential Information under Section 5 below.
4. Consideration. As consideration Consultant's services hereunder, the
Company shall pay Consultant a fee of Two Thousand Five Hundred Dollars ($2,500)
per month during the term of this Agreement. Such consulting fees shall be
payable in advance on the first day of each month.
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5. Disclosure or Use of Confidential Information.
(a) As used herein, the term "Confidential Information" shall
have the meaning ascribed thereto in the Technology Transfer Agreement.
(b) In performing services pursuant to this Agreement,
Consultant shall be subject to the same obligations with respect to Confidential
Information set forth in the Technology Transfer Agreement.
(c) All documents, memoranda, reports, notebooks,
correspondence, files, lists and other records, and the like, specifications,
computer software and computer equipment, computer printouts, computer disks,
and all photocopies or other reproductions thereof, affecting or relating to the
business of the Company, which Consultant shall prepare, use, construct,
observe, possess or control (the "Company Materials"), shall be and remain the
sole property of the Company. Upon termination of this Agreement, Consultant
shall deliver promptly to the Company all such Company Materials.
6. Covenant Not to Compete. Consultant shall not, during the stated term
of this Agreement and for a period of three (3) years thereafter, engage, as an
officer, director, shareholder, owner, partner, joint venturer, or in a
managerial or advisory capacity, whether as an employee, independent contractor,
consultant or advisor, in the immunogene therapy business or in businesses in
which the Company is then engaging involving delivery or distribution of
Combination Immunogene Therapy Products (as defined in the Technology Transfer
Agreement). Notwithstanding the above, the foregoing covenant shall not be
deemed to prohibit the Consultant from acquiring, as a passive investor with no
involvement in the operations of the business, not more than one percent (1%) of
the capital stock of a business whose stock is publicly traded on a national
securities exchange or in the over-the-counter market. In addition, because of
the difficulty of measuring economic losses to the Company as a result of the
breach of the foregoing covenant, and because of the immediate and irreparable
damage that could be caused to the Company for which it would have no other
adequate remedy, the Consultant agrees that the foregoing covenant may be
enforced by the Company by injunctions, restraining orders and other equitable
remedies.
7. Independent Contractor. The relationship between Consultant and the
Company is that of an independent contractor. The Company shall have no right or
authority to control or direct the manner in which Consultant renders his
services hereunder. In furtherance of this independent contractor relationship,
the only compensation owed by the Company hereunder is that contemplated by
Section 4, and the Company shall have no liability or obligation with respect to
any federal, state or local taxation or withholdings with respect to Consultant,
all of which liability and obligation shall be borne solely by Consultant and
Consultant shall indemnify the Company and hold it harmless against any such
liability.
8. Entire Agreement and Waiver. This Agreement contains the entire
agreement between the parties hereto with respect to the consulting services to
be rendered to the Company by Consultant, and supersedes all prior and
contemporaneous agreements, arrangements, negotiations and understandings
between the parties relating to the subject matter hereof. No waiver of any
term, provision, or condition of this Agreement, whether by conduct or
otherwise, in any one or more instances, shall be deemed to be, or shall
constitute, a waiver of any other provision hereof, whether or not similar, nor
shall such waiver constitute a continuing waiver, and no waiver shall be binding
unless executed in writing by the party making the waiver.
9. Enforcement; Severability. If in any proceeding, a court shall refuse
to enforce any provisions of this Agreement, whether because the restrictions
contained herein are more extensive than is necessary to protect the business of
the Company or for any other reason, it is expressly understood and agreed
between the parties hereto that this Agreement is deemed modified to the extent
necessary to permit this Agreement to be enforced in any such proceedings. The
validity and enforceability of the
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remaining provisions or portions of this Agreement shall not be affected thereby
and shall remain valid and enforceable to the fullest extent permitted under
applicable laws.
10. Amendments. No supplement, modification or amendment of any term,
provision or condition of this Agreement shall be binding or enforceable unless
executed in writing by the parties hereto.
11. Applicable Law. This Agreement and the performance hereunder and all
suits and special proceedings hereunder shall be construed in accordance the
laws of the State of Florida.
12. Agreement Subject to UF Approval. This Agreement shall not be
effective until and only to the extent approved by the University of Florida.
IN WITNESS WHEREOF, the undersigned have caused this Agreement to be
executed as of the date first above written.
"Company"
AMDL, INC.,
a Delaware corporation
By:
-------------------------------------
Xxxx X. Xxxxxx, President
"Consultant"
-----------------------------------------
LUNG-XX XXXXX, PH.D.
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EXHIBIT C
Xxxxx shall have caused to be delivered to AMDL, Inc., as provided in
Section 5.8 of this Technology Transfer Agreement, an opinion of an attorney or
attorneys acceptable to AMDL with respect to patents and proprietary rights,
dated the time of execution, and in form reasonably satisfactory to Xxxxxxxxxxx,
Xxxxx and Xxxxxxxx, LLP, counsel to AMDL, Inc., stating that: (A) Xxxxx is
either the sole and exclusive owner of (i) the valid and enforceable exclusive
license rights, or (ii) all right, title and interest in and to the Combination
Immunogene Therapy Patents; (B) there are no Intellectual Property Rights held
by any third parties with respect to the Combination Immunogene Therapy Patents;
(C) there is no pending or threatened action, suit, proceeding or claim that the
Technology or Xxxxx infringes or otherwise violates any third party intellectual
property rights, and such counsel is unaware of any facts which would form a
reasonable basis for any such claim; and (D) there is no pending or threatened
action, suit, proceeding or claim challenging the rights of Xxxxx in or to, or
challenging the scope of, any of Xxxxx'x Combination Immunogene Therapy Patents,
and such counsel is unaware of any facts which would form a reasonable basis for
any such claim.
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