INTELLECTUAL PROPERTY LICENSE AGREEMENT
Exhibit 10.4
This
Intellectual Property License Agreement (“Agreement”) is entered
into as of December 14, 2017 (the “Effective Date”), by and
between QuantRX Biomedical Corporation, a Nevada Corporation
(“Licensee”), and Preprogen
LLC, a Delaware corporation (“Licensor”).
RECITALS:
WHEREAS, Licensor and Licensee are parties
to that certain Asset Purchase Agreement dated December 14,
2017 (the “APA”), pursuant to which
Licensor purchased certain assets of Licensee including the
intellectual property identified on Exhibit A hereto
(“Licensed
IP”);
WHEREAS, Licensee
desires to receive a license-back of the Licensed IP, to develop,
manufacture, use and sell products covered by the Licensed IP to
its customers within the Field (as defined herein).
NOW,
THEREFORE, in consideration of the terms and provisions of this
Agreement and the APA, and for other good and valuable
consideration, the receipt of which is acknowledged by the
execution and delivery hereof, Licensor and Licensee hereby agree
as follows:
A.
Definitions.
1. “Field”
means the feminine hygiene markets and hemorrhoid treatment
markets.
2. “Licensed
IP” shall have the
meaning set forth in the Recitals.
3. “Products”
means over-the-counter miniform products for sale in the
Field.
B.
License
Grant. Subject to the terms and
conditions set forth in this Agreement, Licensor hereby grants to
Licensee, an exclusive, worldwide right and license to the Licensed
IP to develop, manufacture, market, make, have made, use, sell,
offer for sale, export and import Products for the Field. Except
for the license granted herein, no other rights or licenses to the
Licensed IP are granted hereunder, and all such rights and licenses
are expressly reserved to the Licensor.
C.
Improvements.
Licensee acknowledges and agrees that any modification, change,
development, enhancement, derivative or improvement (collectively,
“Improvements”)
made by, or on behalf of, Licensee to the Licensed IP shall be
owned by Licensee only to the extent such Improvements are useful
solely for Products within the Field. To the extent that Licensee
obtains any rights to Improvements to the Licensed IP that may have
(i) application outside of the Field or (ii) application both
within and outside the Field (collectively clauses (i) and (ii)
above, “Multi-application
Improvements”), Licensee
shall so notify Licensor in writing, and Licensee hereby assigns
all right, title and interest in and to such Multi-application
Improvements to Licensor. All such Multi-application Improvements
that are useful to Products in the Field also are and shall be
deemed Licensed IP hereunder, and are licensed to Licensee subject
to the terms of this Agreement. Licensee agrees to provide prompt
notification to Licensor of any Multi-application
Improvements.
D.
Enforcement.
Licensee shall cooperate fully and
promptly with Licensor in the protection of Licensor’s rights
in the Licensed IP, in such manner and to such extent as Licensor
may reasonably request, and at Licensor’s expense, subject to
any rights Licensor or its affiliates have under the
APA.
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1. Each
party shall promptly notify the other party in writing of any
actual or potential infringement, misappropriation or any other
unauthorized use of or violation of the Licensed IP of which it
becomes aware (each an “Infringement”).
Licensor may take such action as it, in its sole discretion, deems
necessary or advisable to stop any
Infringement.
2. In
the event the Infringement solely pertains to Licensee’s
Products covered by the Licensed IP, Licensee may request in
writing that Licensor institute an action to stop an Infringement
affecting such Products. If Licensor receives such a written
request and does not institute such action within ninety (90) days,
Licensee may institute such action as it deems necessary or
advisable to stop such Infringement, in which Licensor shall be
entitled to join; provided
that Licensee shall not compromise or
settle any such claim or action regarding the Licensed IP in any
manner without the written consent of Licensor.
3. The
party not taking the lead in any action shall cooperate fully with
the other party at the other party’s reasonable request and
expense, including Licensor joining a suit instituted by Licensee
in accordance with this Section to the extent necessary for
Licensee to have standing. Any monetary recovery or sums obtained
in settlement of any action to stop an Infringement shall be
allocated between Licensor and Licensee as shall be fair and
equitable, taking into account their actual out-of-pocket costs and
expenses, including reasonable attorneys’ fees, and the
damages sustained by each of them; provided that in the event of a
dispute regarding such an allocation, Licensor shall be entitled to
determine the actual allocation.
E.
Warranties of the
Parties. Licensor warrants that
it has the right and power to enter into this Agreement. Licensee
warrants that it has the right and power to enter into this
Agreement, and that there are no outstanding assignments, grants,
licenses, encumbrances, obligations or agreements, either written
or oral or implied, that prevent it from doing
so.
F.
WARRANTY
DISCLAIMER. EXCEPT AS EXPRESSLY
SET FORTH IN THIS AGREEMENT, NEITHER PARTY MAKES ANY OTHER
REPRESENTATION, GUARANTEE OR WARRANTY OF ANY KIND, EXPRESS, IMPLIED
OR OTHERWISE, UNDER THIS AGREEMENT INCLUDING REPRESENTATIONS,
GUARANTEES OR WARRANTIES AS TO THE RESULTS TO BE EXPECTED FROM USE
OF ANY OF THE LICENSED IP, OR FROM MANUFACTURE OR SALE OF ANY
PRODUCT HEREUNDER. EXCEPT AS EXPRESSLY SET FORTH IN THIS AGREEMENT,
LICENSOR SHALL HAVE NO RESPONSIBILITY OR LIABILITY UNDER THIS
AGREEMENT FOR THE LICENSED IP; FOR THE ABILITY OR INABILITY OF
LICENSEE TO USE THE LICENSED IP; FOR THE CLAIMS OF THIRD PARTIES
RELATING TO ANY PRODUCTS MANUFACTURED OR SOLD BY LICENSEE; OR FOR
ANY FAILURE IN PRODUCTION, DESIGN OR OPERATION OF ANY PRODUCT
MANUFACTURED OR SOLD BY LICENSEE. THE LIMITATIONS OF LIABILITY
CONTAINED IN THIS AGREEMENT ARE A FUNDAMENTAL PART OF THE BASIS OF
EACH PARTY’S BARGAIN HEREUNDER, AND NEITHER PARTY WOULD ENTER
INTO THIS AGREEMENT ABSENT SUCH LIMITATIONS. NOTWITHSTANDING ANYTHING IN THIS AGREEMENT TO THE
CONTRARY, LICENSOR SHALL HAVE NO LIABILITY UNDER THIS AGREEMENT
ARISING OUT OF OR RELATING TO ANY FACTS OR CIRCUMSTANCES WHICH
CONSTITUTE A BREACH OF ANY REPRESENTATION OR WARRANTY OF LICENSEE
UNDER THE APA, OR FOR WHICH LICENSEE WOULD OTHERWISE HAVE LIABILITY
TO LICENSOR OR ANY AFFILIATE UNDER THE APA (WITHOUT GIVING EFFECT
TO ANY SURVIVAL PERIODS OR LIMITATIONS ON LIABILITY SET FORTH
THEREIN), AND NOTHING IN THIS AGREEMENT SHALL DEROGATE FROM
LICENSOR’S RIGHTS UNDER THE APA.
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G.
Term /
Termination.
1. Term.
This Agreement shall commence on the Effective Date, and continue
until terminated as set forth in Section G(2).
2. Termination
by Licensor. This Agreement may
be terminated by Licensor by written notice of termination if
Licensee breaches this Agreement, and such a breach is not cured to
Licensor’s satisfaction within thirty (30) days following
receipt by Licensee of notice thereof from
Licensor.
3. Upon
the termination of this Agreement, all rights of Licensee granted
hereunder shall terminate, and Licensee shall return or destroy
(and certify such destruction in writing to Licensor if requested),
at Licensor’s election, all embodiments of the Licensed IP.
Notwithstanding the foregoing, Licensee shall have the right to
continue to dispose of its inventory of Products under the Licensed
IP existing as of any termination for a period of up to six (6)
months from the date of termination of this Agreement.
4. All
rights and remedies of the parties in respect of any breach of this
Agreement occurring prior to the effective date of its termination
shall survive the termination of this Agreement. In addition, the
following provisions of this Agreement shall explicitly survive its
termination: Section F
(“WARRANTY
DISCLAIMER”); Section G
(“Term / Termination”);
and Section H
(“Miscellaneous”).
H.
Miscellaneous.
1. Notices.
All notices, demands and other communications required to be given
to a party hereunder shall be in writing and shall be deemed to
have been duly given if and when personally delivered; one business
day after being sent by a nationally recognized overnight courier;
when transmitted by facsimile and actually received; or five (5)
days after being mailed by registered or certified mail (postage
prepaid, return receipt requested) to such party at the relevant
street address or facsimile number set forth below (or at such
other street address or facsimile number as such party may
designate from time to time by written notice in accordance with
this provision):
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If to
Licensee:
Preprogen
LLC
0
Xxxxxxx Xxxxx
Xxxxx
000
Xxxxxx
XX 00000
Attn:
X. Xxxxxxxxxx
Email:xxx@xxxxxxx.xxx
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With a
copy to (which shall not constitute notice):
Xxxxxx
Xxxxx Xxxxxxxx & Xxxxxxx LLP
0000
Xxxxxx xx xxx Xxxxxxxx
Xxx
Xxxx, Xxx Xxxx 00000
Attn:
Xxxxxx Xxxxxxxx, Esq.
Facsimile:
(000) 000-0000
Confirm:
(000) 000-0000
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If to
Licensor:
QuantRx
Biomedical Corporation
000
Xxxxxxxx Xxxx
Xxxxxxx,
XX 00000
Attention:
Xxxxxxx Xxxxxx
Tel
No.: (000) 000-0000
Email
Address: xxxxxxx@xxxxxxxxxxx.xxx
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2. Further
Assurances. In addition to the
actions specifically provided for elsewhere in this Agreement,
Licensor and Licensee agree to execute or cause to be executed and
to record or cause to be recorded such other agreements,
instruments and other documents, and to take such other action, as
reasonably necessary or desirable to fully effectuate the intents
and purposes of this Agreement.
3. Relationship
of the Parties. This Agreement
shall not be construed to place the parties in the relationship of
legal representatives, partners, joint venturers or agents of or
with each other. No party shall have any power to obligate or bind
the other party in any manner whatsoever, except as specifically
provided herein.
4. Third
Party Beneficiaries. Except as
set forth herein with respect to affiliates of Licensor, the
provisions of this Agreement are solely for the benefit of the
parties hereto and their respective successors and permitted
assigns, and are not intended to confer upon any person, except the
parties hereto and their respective successors and permitted
assigns, any rights or remedies hereunder.
5. Assignability.
This Agreement may not be assigned by Licensee without the prior
written consent of the Licensor. Subject to Section
H.4, this Agreement shall be
binding upon and inure to the benefit of the parties and their
respective successors and permitted assigns.
6. Press
Releases; Public Announcements.
Neither party shall issue any release or make any other public
announcement concerning this Agreement or the transactions
contemplated hereby without the prior written approval of the other
party, which approval shall not be unreasonably withheld or
delayed; provided,
however,
that either party shall be permitted to make any release or public
announcement that in the opinion of its counsel it is required to
make by law or the rules of any national securities exchange of
which its securities are listed; provided further
that it has made efforts that are
reasonable in the circumstances to obtain the prior approval of the
other party.
7. Waiver
of Defaults. Waiver by any
party hereto of any default by the other party hereto of any
provision of this Agreement shall not be construed to be a waiver
by the waiving party of any subsequent or other default, nor shall
it in any way affect the validity of this Agreement or prejudice
the rights of the other party thereafter to enforce each and every
such provision. No failure or delay by any party hereto in
exercising any right, power or privilege hereunder shall operate as
a waiver thereof nor shall any single or partial exercise thereof
preclude any other or further exercise thereof or the exercise of
any other right, power or privilege.
8. Severability.
If any provision of this Agreement is determined by a court of
competent jurisdiction to be invalid, void or unenforceable, the
remaining provisions hereof shall remain in full force and effect
and shall in no way be affected, impaired or invalidated thereby,
so long as the economic or legal substance of the transactions
contemplated hereby, as the case may be, is not affected in any
manner adverse to any party hereto or thereto. Upon such
determination, the parties hereto shall negotiate in good faith in
an effort to agree upon a suitable and equitable provision to
effect the original intent of the parties
hereto.
9. LIMITATION
OF LIABILITY. IN NO EVENT SHALL
LICENSOR OR LICENSEE BE LIABLE TO THE OTHER FOR ANY SPECIAL,
CONSEQUENTIAL, INDIRECT, COLLATERAL, INCIDENTAL OR PUNITIVE DAMAGES
OR LOST PROFITS OR FAILURE TO REALIZE EXPECTED SAVINGS OR OTHER
COMMERCIAL OR ECONOMIC LOSS OF ANY KIND, ARISING OUT OF THIS
AGREEMENT; PROVIDED, HOWEVER, THAT THE FOREGOING LIMITATIONS SHALL
NOT LIMIT EITHER PARTY’S INDEMNIFICATION OBLIGATIONS WITH
RESPECT TO THIRD PARTY CLAIMS.
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10. Attorneys’
Fees. In any action hereunder
to enforce the provisions of this Agreement, the prevailing party
shall be entitled to recover its reasonable attorneys’ fees
in addition to any other recovery hereunder.
11. Governing
Law. All disputes arising out
of this Agreement or the transactions contemplated hereby shall be
governed by and construed in accordance with the laws of the State
of Delaware without regard to its rules of conflict of
laws.
12. Consent
to Jurisdiction. The Parties
hereby irrevocably and unconditionally consent to submit to the
sole and exclusive jurisdiction and venue of the federal and state
courts of the State of Delaware for any litigation between the
Parties arising out of or relating to this Agreement;
provided,
that any judgment or order obtained from such court(s) may be
enforced in any other applicable jurisdiction. Each of the parties
irrevocably waives any objection to venue in the federal and state
courts located in the State of Delaware of any action, suit or
proceeding arising out of this Agreement or the transactions
contemplated hereby.
13. Specific
Performance. The Parties agree
that irreparable damage would occur in the event that any of the
provisions of this Agreement were not performed in accordance with
their specific terms or were otherwise breached. Accordingly, each
of the Parties shall be entitled to specific performance of the
terms hereof, including an injunction or injunctions to prevent
breaches of this Agreement and to enforce specifically the terms
and provisions of this Agreement, this being in addition to any
other remedy to which such party is entitled at law or in equity.
Each of the parties hereby further waives (i) any defense in any
action for specific performance that a remedy at law would be
adequate and (ii) any requirement under any Law to post security as
a prerequisite to obtaining equitable relief.
14. Entire
Agreement. This Agreement and
the APA (together with the Warrant (as defined in the APA), the IP
Assignments (as defined in the APA), the Preprogen Operating
Agreement (as defined in the APA) and any other agreements and
documents delivered under the APA) constitute the entire agreement
between the parties with respect to the subject matter hereof and
supersede all previous agreements, negotiations, discussions,
understandings, writings, commitments and conversations between the
parties with respect to such subject matter.
15. Waiver
of Jury Trial. TO THE EXTENT
NOT PROHIBITED BY APPLICABLE LAW THAT CANNOT BE WAIVED, EACH PARTY
HEREBY WAIVES, AND COVENANTS THAT IT WILL NOT ASSERT (WHETHER AS
PLAINTIFF, DEFENDANT OR OTHERWISE), ANY RIGHT TO TRIAL BY JURY IN
ANY FORUM IN RESPECT OF ANY DISPUTES OR LITIGATION ARISING OUT OF
OR RELATING TO THIS AGREEMENT, WHETHER NOW EXISTING OR HEREAFTER
ARISING AND WHETHER SOUNDING IN TORT OR CONTRACT OR
OTHERWISE.
16. Amendments.
No provisions of this Agreement shall be deemed amended, modified
or supplemented by any party hereto, unless such amendment,
supplement or modification is in writing and signed by the
authorized representative of the party against whom it is sought to
enforce such amendment, supplement or
modification.
17. Counterparts.
This Agreement may be executed in any number of counterparts,
including by facsimile or electronic signature, and each such
counterpart shall be deemed an original instrument, and all of such
counterparts together shall constitute but one agreement. A
facsimile or electronic signature is deemed an original signature
for all purposes under this Agreement.
[SIGNATURE
PAGES FOLLOW]
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IN
WITNESS WHEREOF, the parties have caused their duly authorized
representatives to execute this Agreement as of the Effective
Date.
QUANTRX
BIOMEDICAL CORPORATION
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QUANTRX BIOMEDICAL
CORPORATION
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By: /s/ Xxxxxx X.
Xxxxxxxxx
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Name:
Xxxxxx
X. Xxxxxxxxx
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Title:
Chief
Executive Officer
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PREPROGEN
LLC
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By: /s/ Xxxxx
Xxxxxxxxxx
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Name:
Xxxxx
Xxxxxxxxxx
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Title:
Founder
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EXHIBIT
A
LICENSED
IP
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INTERLABIAL PAD
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|||||||||
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KS REF. NO.
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Country
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Title
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Status
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Xxx. No.
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Issue date
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App. No.
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Expiration Date
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Assignee of Record
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Action/Comments
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0000-00000-00
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US
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Administration
of Therapeutic Or Diagnostic Agents Using Interlabial
Pad
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Issued
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6,811,549
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11/2/2004
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09/788,264
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10/15/2021
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QuantRx
BioMedical Corporation
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None
– Maintenance fees fully paid
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0000-00000-00
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CA
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Folded
Perineal Pad
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Issued
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2,679,725
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7/7/2015
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2,679,725
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2/28/2028
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Foreign
patent, N/A
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Annual
Maintenance fees due Feb. 28
(paid
for 2017)
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0000-00000-00
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US
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Folded
Perineal Pad
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Issued
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8,398,606
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3/19/2013
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12/529,053
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3/11/2030
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QuantRx
BioMedical Corporation
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2nd
Maintenance fees due 9/19/20
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FETAL STEM CELL ISOLATION
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|||||||||
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KS REF. NO.
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Country
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Title
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Status
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Xxx. No.
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Issue date
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App. No.
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Expiration Date
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Assignee of Record
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Action/Comments
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0000-00000-00
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CA
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Method
for Obtaining Fetal Cells and Fetal Cellular
Components
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Pending
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N/A
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N/A
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2,876,692
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QuantRx
BioMedical Corporation
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Waiting
for Canadian Patent Office Action.
Annual
Maintenance fees due June 24 (paid for 2017).
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0000-00000-00
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EPC
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Method
for Obtaining Fetal Cells and Fetal Cellular
Components
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Pending
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N/A
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N/A
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13806393.8
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QuantRx
BioMedical Corporation
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Response
to EPO Office action filed Dec 2016, awaiting next action from
EPO.
Annual
Maintenance fees due June 24 (paid for 2017).
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0000-00000-00
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US
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Method
for Obtaining Fetal Cells and Fetal Cellular
Components
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Pending
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N/A
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N/A
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14/410,508
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QuantRx
BioMedical Corporation
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Office
action response filed 2/6/17, awaiting next action from US
PTO
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TRADEMARKS
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||||||||
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KS REF. NO.
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Country
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Xxxx
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Class
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Registration No.
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Registration date
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App. No.
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Owner
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Action needed
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0000-00000-00
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U.S.
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PADKIT
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10
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2,380,818
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8/29/2000
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75/654,164
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QUANTRX
BIOMEDICAL CORPORATION
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Next
renewal - 8/29/2020
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0000-00000-00
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U.S.
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PADKIT
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10
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2,251,770
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6/8/1999
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75/260,875
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QUANTRX
BIOMEDICAL CORPORATION
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Next
renewal - 6/8/2019
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