PATENT LICENSE
Exhibit
10.04
PATENT
LICENSE
THIS
PATENT LICENSE (this “Agreement”), made and effective as of the 29th day of
December, 2009 (the “Effective Date”), is by and between NUTRITION 21, INC.
(hereinafter referred to as “Nutrition 21”), a New York corporation having a
place of business at 0 Xxxxxxxxxxxxxx Xxxx, Xxxxxxxx, XX 00000, as Licensor, and
NATURE’S PRODUCTS, INC., a Florida corporation, having a place of business at
0000 Xxxxxxxx Xxxxxxxxx Xxxxxxx, Xxxxxxx, XX 00000, as Licensee.
Nature’s
Products, Inc. and its affiliated entities, including, without limitation,
Iceland Health, Inc., a Florida corporation, are hereinafter collectively
referred to as “NPI.” Nutrition 21 and NPI are each individually sometimes
referred to as a “Party” and collectively as the “Parties.”
Preliminary
Statement
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a.
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Nutrition
21 currently sells among other things Chromium Picolinate, Chromium
Histidinate, Chromium Picolinate-Biotin Blend, and
Arginine-Silicate-Inositol Blend (the “Ingredients”). Nutrition 21 also
uses the Ingredients in the manufacture of the end-products whose SKU’s
are listed in Exhibit 1 (the “Listed
SKUs).
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b.
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"Patents"
means the patents and pending patent applications that are listed in
Exhibit 2.
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c.
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The
Patents cover the composition and/or use of the Ingredients and/or
end-products incorporating the
Ingredients.
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d.
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NPI
has by a Supply Agreement of even date herewith agreed to purchase
Ingredients from Nutrition 21 on the terms set forth in the Supply
Agreement. The Supply Agreement among other things provides for Discounted
Prices (as defined) on the terms and conditions therein set
forth;
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e.
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Nutrition
21 wishes to grant to NPI patent licenses to use Ingredients purchased
from Nutrition 21 under the Supply Agreement for the following purposes
(the “Licensed Uses”):
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i.
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the
fabrication, finishing and packaging by NPI of nutritional supplement
end-products that are not to be further fabricated or packaged by others;
and
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ii.
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the
sale, marketing and distribution of such end-products either (i) directly
to end users by direct response or other means or (ii) to retailers or
wholesale sellers for ultimate sale to end
users.
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f.
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Without
limiting the generality of the foregoing, the following are not Licensed
Uses:
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i.
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the
resale or other disposition of the Ingredients to third parties for
further fabrication or packaging;
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ii.
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the
sale or marketing or distribution of products other than (i) directly to
end users by direct response or other means or (ii) to retailers or
wholesale sellers for ultimate sale to end
users.
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In
consideration of the foregoing and the mutual obligations undertaken in this
Agreement, and for other consideration, the value and sufficiency of which are
hereby acknowledged, the Parties agree as follows:
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1.
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Patent
Licenses.
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a.
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Nutrition
21 grants to NPI perpetual, fully paid-up non-exclusive and world-wide
rights and licenses under the Patents to use the Ingredients purchased
from Nutrition 21 at Discounted Prices under the Supply Agreement for
Licensed Uses in the Listed SKUs and only for Licensed Uses in the Listed
SKUs.
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b.
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Nutrition
21 grants to NPI perpetual, fully paid-up non-exclusive and world-wide
rights and licenses under the Patents to use the Ingredients purchased
from Nutrition 21 under the Supply Agreement on most favored nation
pricing for Licensed Uses in non-Listed SKUs as well as in Listed
SKUs.
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c.
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If
at any time Nutrition 21 is not able to supply any of the Ingredients as
provided for in the Supply Agreement (called a “Period of
Unavailability”), Nutrition 21 hereby grants under Patents owned by
Nutrition 21 to NPI a non-exclusive license during the Period of
Unavailability to make or have made any such Ingredients for Licensed
Uses. After any Period of Unavailability ends, NPI shall again
purchase all of its requirements for Ingredients from Nutrition
21.
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d.
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“Other
Patent Licenses” as used herein means the license (the “USDA License”)
dated December 6, 2006 by US Department of Agriculture (USDA) to Nutrition
21, and the license (the “XxXxxx License”) dated April 23, 2005 by XxXxxx
Discoveries LLC to Nutrition 21.
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e.
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Nutrition
21 hereby irrevocably appoints NPI as the agent of Nutrition 21 under the
Other Patent Licenses to have Ingredients made on behalf of Nutrition 21
and at Nutrition 21’s expense during Periods of Unavailability for
delivery to NPI during such Periods for Licensed Uses. At
the request of NPI, Nutrition 21 shall with the approval of USDA appoint
NPI as sublicensee under the USDA License for Licensed Uses for Periods of
Unavailability (USDA may not unreasonably withhold its approval to such
sublicense). At the request of NPI, Nutrition 21 shall sublicense the
XxXxxx License to NPI for Licensed Uses for Periods of
Unavailability.
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f.
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NPI
shall from time to time on reasonable notice give access to Nutrition 21
and its representatives to NPI’s product list of products sold by it that
utilize the Ingredients to confirm that the licenses are used only as
contemplated in this Agreement.
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2.
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All
licenses granted to NPI are, and will otherwise be deemed to be, for
purposes of Section 365(n) of the US Bankruptcy Code (the “Code”) and any
similar laws in any other country, licenses of rights to “intellectual
property” as defined under Section 101 of the Code. NPI will
retain and may fully exercise all of its protections, rights and elections
under the Code and any similar laws in any other
country.
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3.
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The
term of this Agreement and of the licenses hereunder shall be for the
period commencing on the date of this Agreement and ending on August 21,
2022.
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4.
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Miscellaneous
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a.
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Notices. All
notices and other communications which may be required or are desired to
be given hereunder shall be in writing.
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b.
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No
Waivers of Rights, Etc. No failure or delay on the part of any
Party 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.
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c.
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Amendments. Any
provision of this Agreement may be amended or waived if, but only if, such
amendment or waiver is in writing and is signed by Nutrition 21 and
NPI.
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d.
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Assignments
and Successors.
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i.
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Nutrition
21 may assign this Agreement or any of its rights or delegate any of its
obligations hereunder to an affiliate or to any person or entity who is
acquiring all or substantially all of its assets or with whom Nutrition 21
may merge or enter into other business combination. Nutrition 21 shall not
have the right to assign or sublicense any of its rights or to delegate
any of its obligations hereunder to any other person or entity without the
consent of NPI, which consent shall not be unreasonably withheld or
delayed.
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ii.
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The
foregoing in no way shall limit Nutrition 21’s right to subcontract any of
its obligations hereunder.
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iii.
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NPI
shall not have the right to assign or sublicense any of its rights or to
delegate any of its obligations hereunder to any other person or Person
without the consent of Nutrition 21, which consent shall not be
unreasonably withheld.
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e.
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No
Third-Party Beneficiaries. This Agreement does not create, and
shall not be construed as creating, any rights enforceable by any person
not a party to this Agreement.
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f.
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No
Joint Venture. The Parties hereto are independent
contractors. The Parties hereto are not partners, joint
venturers, or agents of one another and nothing in this Agreement or in
the performance thereof shall be construed to place them in the
relationship of partners or joint venturers or to make one an agent of the
other. Neither Party hereto shall have the power to obligate or
to bind the other in any manner or for any
purpose.
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g.
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Entire
Agreement. This Agreement constitutes the entire agreement
among the Parties hereto with respect to the subject matter hereof and
supersedes all prior agreements and undertakings, both written and oral,
relating to the subject matter
hereof.
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h.
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Governing
Law. This Agreement shall be governed by, and construed in
accordance with, the laws of the State of Florida without regard to
conflict of law principles.
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i.
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Consent
to Jurisdiction. Nutrition 21 and NPI hereby irrevocably submit
to the jurisdiction of any court of the State of Florida sitting in
Broward County and any Federal court sitting in Broward County, Florida in
respect of any suit brought by Nutrition 21, and sitting in Westchester
County New York in respect of any suit brought by NPI or its affiliates,
and any appellate court from any thereof in any action or proceeding
arising out of or relating to this Agreement, and Nutrition 21 and NPI
hereby irrevocably agree that all claims in respect of such action or
proceeding may be heard and determined in such
court.
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j.
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Counterparts. This
Agreement may be executed in counterparts, and by the different Parties
hereto in separate counterparts, each of which when executed shall be
deemed to be an original but all of which taken together shall constitute
one and the same agreement.
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IN
WITNESS WHEREOF, the Parties hereto have duly caused the execution of this
Agreement by their duly authorized officers, as of the day and year first above
written.
NUTRITION
21, INC.
By:
Name:
Title:
NATURE’S
PRODUCTS, INC.
By:
Name:
Title:
Exhibit 1
Listed SKU’s
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Item
Num
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Description
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10601769731333
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IH
Appetite Control (12/Case)
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050428858431
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CVS 100ct 200mcg (24/Case)
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050428095829
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CVS 100ct 400mcg (24/Case)
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050428095836
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CVS 250ct 200mcg (24/Case)
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10041520871388
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CareOne
(Ahold) 60ct 500mcg (24/Case)
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10041520871371
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CareOne
(Ahold) 300ct 200mcg (24/Case)
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10601769736253
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Club:
Chromax AMF 90ct (12/Case)
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10601769734266
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Club:
Chromax Ultra 250ct (12/Case)
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10601769995902
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DE
Diachrome 60ct (12/Case)
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10601769737403
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DE
Diachrome 30ct (12/Case)
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10601769737502
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DE
NTG - Tea 10ct sticks (12/Case)
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10601769737205
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DE
NTG Multi Vitamin - Citrus (12/Case)
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10041163438368
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Equaline
Chromium 200mcg 100ct (24/Case)
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10041163438375
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Equaline
Chromium 400mcg 100ct (24/Case)
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10601769736154
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IH
Advanced MF 45ct (12/Case)
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10601769731326
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IH
Chromax 1000mcg 250ct (12/Case)
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20601769731323
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IH
Chromax 1000mcg 250ct Xxxx Display
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10601769734068
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IH
Chromax Extra Strength 75ct (12/Case)
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10601769734167
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IH
Chromax Ultra Strength 60ct (12/Case)
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10601769996015
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International
Diachrome 60ct (12/Case)
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10011822009314
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Pharmassure
1000mcg CP 100ct (24/Case)
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10011822375419
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Rite
Aid 100ct 400mcg (24/Case)
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10011822880531
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Rite
Aid 300ct 200mcg (24/Case)
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10048107049314
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Rite
Aid Pharmass 100ct 200mcg (24/Case)
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10011822375402
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Rite
Aid Pharmass 100ct 400mcg (24/Case)
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10311917099078
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Walgreen
CP FN 200mg 100ct (24/Case)
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10311917099092
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Walgreen
CP FN 200mg 250ct (24/Case)
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10311917099085
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Walgreen
CP FN 400mg 100ct (24/Case)
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10311917101696
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Walgreen
FN Advanced JR 120ct (24/Case)
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10311917107193
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Walgreen
FN CP 1000mcg 100ct (24/Case)
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10311917101689
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Walgreen
FN Chol Relief 120ct (24/Case)
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10311917107209
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Walgreen
FN Dia Health MV 30ct (24/Case)
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10681131928622
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Walmart CP
100ct 800mcg (24/Case)
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10681131312681
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Walmart
100ct 1000mcg (24/Case)
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Exhibit
2
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Description
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Patents
Owned by Nutrition 21
United
States Patents and Patent Expiration Dates
Arginine-Silicate-Inositol
5,707,970 2/12/17
6,156,735 2/12/17
6,344,444 2/12/17
7,576,132 8/22/23
Chromium
Picolinate
6,329,361 12/11/18
Chromium
Picolinate + Biotin
RE
39,480 8/8/17
Chromium
Histidinate Patent Applications:
Chromium
histidinate uses: PCT/US2008/052352 filed 29 Jan 2008
(pending)
Chromium
histidinate + chromium picolinate composition and uses: PCT/US2008/056545
filed 11 Mar 2008 (pending)
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Foreign
equivalents of the above-identified Patents
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Patents
Licensed to Nutrition 00
Xxxxxx
Xxxxxx Patents
6,034,125
licensed by XxXxxx
6,689,383
licensed by
USDA
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