Exhibit 10.3
ASSIGNMENT AGREEMENT
THIS AGREEMENT is made and entered into as of this 18th day of December
2002 ("Effective Date") by and between ATLANTIC TECHNOLOGY VENTURES, INC., a
Delaware corporation having offices at 000 Xxxxx Xxxxxx, Xxxxxx Xxxxx Building,
Suite 5507, New York, New York 10118 ("ATLANTIC"), and PATHOGENICS, LLC., a
Delaware limited liability corporation having offices at 000 Xxxxx Xxxxxx, Xxxxx
0, Xxx Xxxx, XX 00000 ("PATHOGENICS"), and jointly owned by ATLANTIC employees
Xxxxxxxx X. Xxxxx, A. Xxxxxx Xxxxxx, and Xxxxxxx X. Xxxxxxx.
WHEREAS, ATLANTIC is party to a certain License Agreement for
N-Chlorotaurine (NCT) patent applications entered on October 18, 2001 between
ATLANTIC (as exclusive, worldwide Licensee) and Drs. Xxxxxxxx Xxxxxxxx, Xxxxxx
Xxxx, and Xxxxxxx Xxxxx (collectively, the Licensor), a copy of which is
attached hereto as Exhibit A.
WHEREAS, Atlantic owns all right, title, and interest in and to U.S. Patent
Application Serial No. 60/377,923, entitled "Method for Treating
Conjunctivitis", and filed on May 3, 2002 in the name of A. Xxxxxx Xxxxxxx and
Xxxxxxx X. Xxxxxxx.
WHEREAS, on September 23, 2002 the ATLANTIC board of directors held a
meeting and resolved to transfer to an entity owned by ATLANTIC employees
Xxxxxxxx X. Xxxxx, A. Xxxxxx Xxxxxx, and Xxxxxxx X. Xxxxxxx all ATLANTIC's
rights to the NCT technology in exchange for a 10% share of any milestone,
royalty or other revenue generated by the NCT technology, a copy of the minutes
of which is attached hereto as Exhibit B.
WHEREAS, PATHOGENICS is an entity jointly owned by ATLANTIC employees
Xxxxxxxx X. Xxxxx, A. Xxxxxx Xxxxxx, and Xxxxxxx X. Xxxxxxx and desires to
acquire, and ATLANTIC is willing to assign to PATHOGENICS all of ATLANTIC's
rights and obligations under the aforementioned License Agreement, and all of
ATLANTIC's right, title, and interest in and to the aforementioned Patent
Application and any inventions described therein.
ACCORDINGLY, for good and valuable consideration described below
1. ATLANTIC hereby assigns, transfers, conveys and relinquishes
exclusively to PATHOGENICS, its lawful successors and assigns, all of ATLANTIC's
rights and obligations under the October 18, 2001 License Agreement, and all of
ATLANTIC's right, title, and interest in and to U.S. Patent Application Serial
No. 60/377,923 and any inventions described therein, as well as any other patent
applications (U.S. or foreign) directed to the subject matter thereof, all
patents (U.S. or foreign) that may be granted thereon and all reissues,
reexaminations, and extensions thereof, and all rights to claim priority on the
basis of such Application (collectively the "Patent Rights"), as fully and
entirely as the same would have been held and enjoyed by ATLANTIC if this
assignment had not been made.
2. PATHOGENICS assumes, and agrees to pay and perform, all unperformed
obligations of ATLANTIC under the License Agreement. PATHOGENICS agrees that by
executing and delivering this Agreement PATHOGENICS shall become a party to the
License Agreement and agrees to be bound by all of the terms and provisions of
the License Agreement.
3. In consideration for the foregoing assignment, PATHOGENICS agrees to
pay ATLANTIC (or its lawful successors and assigns) ten percent (10%) of any
milestone, royalty or other revenue received by PATHOGENICS (or its lawful
successors and assigns) from the sale or sublicensing of the License Agreement
or from the sale or licensing of the Patent Rights.
4. ATLANTIC shall execute and deliver to PATHOGENICS the recordable
Assignment attached as Exhibit C hereto, and, from time to time after the
Effective Date hereof upon the request of PATHOGENICS, such further conveyance
instruments as may be necessary or desirable to evidence more fully the transfer
of ATLANTIC's rights and obligations under the License Agreement and to the
Patent Rights. ATLANTIC further agrees to provide testimony in connection with
any proceeding affecting the foregoing rights and obligations, and to perform
any other acts deemed necessary to carry out the intent of this Agreement.
PATHOGENICS shall reimburse ATLANTIC for any and all costs reasonably incurred
by ATLANTIC in performance under this paragraph.
5. In furtherance of this Agreement, ATLANTIC hereby acknowledges that,
from the Effective Date forward, PATHOGENICS has succeeded to all of ATLANTIC's
rights, obligations, title, and standing in relation to the Patent Rights, to
institute and prosecute all suits and proceedings, to take all actions that
PATHOGENICS, in its sole discretion, may deem necessary or proper to collect,
assert, or enforce any claim, right, or title of any kind under the Patent
Rights, whether arising before or after the Effective Date, to defend and
compromise any and all such actions, suits, or proceedings relating to such
transferred and assigned rights, title, interest, and benefits, and to do all
other such acts and things in relation thereto as PATHOGENICS in its sole
discretion deems advisable.
6. ATLANTIC represents and warrants that it has obtained from the
Licensor the required consent to assignment of the License Agreement, which is
embodied in the letter attached hereto as Exhibit D.
7. ATLANTIC represents and warrants that, to the best of ATLANTIC's
knowledge, upon consummation of this Agreement, PATHOGENICS shall have good and
marketable title to the Patent Rights, free and clear of any and all liens,
mortgages, encumbrances, pledges, security interests, licenses, or charges of
any nature whatsoever.
8. This Agreement shall inure to the benefit of, and be binding upon,
the parties hereto together with their respective legal representatives,
successors and assigns.
9. This Agreement shall be governed by and construed in accordance with
the laws of the State of New York (excluding conflicts of law rules) and of the
United States of America.
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10. This Agreement merges and supersedes all prior and contemporaneous
agreements, assurances, representations, and communications between or among the
parties hereto concerning the matters set forth herein.
11. If a dispute arises out of or relates to this Agreement, or a
breach thereof, and if the dispute cannot be settled through negotiation, the
parties agree to first try in good faith to settle the dispute by mediation
administered by the American Arbitration Association under its Commercial
Mediation Rules before resorting to arbitration, litigation, or some other
dispute resolution procedure.
12. Any claim or controversy arising out of or relating to this
Agreement, or the breach thereof, that cannot be settled through mediation shall
be settled by arbitration administered by the American Arbitration Association
under its Commercial Arbitration Rules, and judgment o the award rendered by the
arbitrator may be entered in any court having jurisdiction thereof.
IN WITNESS WHEREOF, the parties hereto have executed this Agreement the day
and year first written above.
ATLANTIC TECHNOLOGY VENTURES, INC. PATHOGENICS LLC.
By: /s/ Xxxxxxxx X. Xxxxx By: /s/ Xxxxxxxx X. Xxxxx
--------------------------- --------------------------
Name: Xxxxxxxx X. Xxxxx, Esq. Name: Xxxxxxxx X.Xxxxx, Esq.
Title: President & CEO Title: Managing Member
Date: 12/18/02 Date: 12/18/02
WITNESS
By: /s/ Xxxxx X. Xxxx
----------------------------
Witness: Xxxxx X. Xxxx
Date: 12/18/02
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